Metso Minerals, Inc. v. Powerscreen Int'l Distribution Ltd.

• Decision Date: 08 December 2011
• Docket Number: No. 06–cv–1446 (ADS)(ETB).,06–cv–1446 (ADS)(ETB).
• Parties: METSO MINERALS, INC., Plaintiff, v. POWERSCREEN INTERNATIONAL DISTRIBUTION LIMITED, now known as Terex GB Limited, Terex Corporation, Powerscreen New York, Inc. and Emerald Equipment Systems, Inc., Defendants.
• Court: U.S. District Court — Eastern District of New York

833 F.Supp.2d 282

METSO MINERALS, INC., Plaintiff,

v.POWERSCREEN INTERNATIONAL DISTRIBUTION LIMITED, now known as Terex GB Limited, Terex Corporation, Powerscreen New York, Inc. and Emerald Equipment Systems, Inc., Defendants.

No. 06–cv–1446 (ADS)(ETB).

United States District Court,

E.D. New York.

Dec. 8, 2011.

Cozen O'Connor, by: Michael C. Stuart, Esq., Lisa Ferrari, Esq., of Counsel, New York, NY, for Plaintiff.

Squire Sanders & Dempsey LLP, by: George B. Yankwitt, Esq., Mary Margaret Chang, Esq., Andrew H Fried, Esq., of Counsel, New York, NY, for all Defendants.

Merchant & Gould, P.C., by: Jon Trembath, Esq., of Counsel, Denver, CO, for all Defendants.

Clauss & Sabatini, PC, by: Ava R. Maynard, Esq., of Counsel, New York, NY, for Defendant Terex Corporation.

Forchelli, Curto, Schwartz, Mineo, Carlino & Cohn, LLP, by: Andrew E. Curto, Esq., of Counsel, Mineola, NY, for Defendant Powerscreen New York, Inc.

MEMORANDUM OF DECISION AND ORDER

SPATT, District Judge.

The Defendants in this patent infringement case, Powerscreen International Distribution Limited (“Powerscreen”), Terex Corporation (“Terex”), Powerscreen New York, Inc. (“PSNY”), and Emerald Equipment Systems, Inc. (“Emerald”), have filed several post-trial motions. The Court now addresses four of these motions: (1) a renewed motion for judgment as a matter of law; (2) a motion for a new trial; (3) a motion for a new trial on the basis of newly discovered evidence; and (4) a motion for judgment as a matter of law, or, alternatively, for a new trial, filed only by the Defendant Terex. For the reasons that follow, the Court denies the Defendants' motions in their entirety and therefore will not enter judgment as a matter of law in their favor or grant a new trial.

I. BACKGROUND

The Court described the background of the relevant patent in detail in its previous decision in this case, Metso Minerals, Inc. v. Powerscreen Intern. Distr. Ltd., 681 F.Supp.2d 309 (E.D.N.Y.2010) (“Metso I ”), and familiarity with that decision is assumed. Nevertheless, the Court restates this information as a background for the decision.

United States Patent 5,577,618 (the “'618 patent”) was granted to Malachy J. Rafferty on November 26, 1996 for a “mobile aggregate material processing plant”. The patent covers an invention whose primary function is to sort debris—usually construction debris—into piles of like-sized particles. Figure 2, below, is a cross sectional drawing from the '618 patent showing the invention's preferred embodiment.

Image 1 (5.72" X 3.08") Available for Offline Print

In this preferred embodiment, the plant sits on a structure akin to a flat-bed trailer, and extends the length of the trailer. When in its operating position, the plant takes mixed debris into an input hopper, and separates the debris into one of four size groupings. The largest debris is then dumped out of the input hopper, while the remaining three groupings are placed on one of three conveyors. Two of these conveyors extend out from the sides of the plant (called “lateral conveyors”), while the third extends from the back end of the plant. The debris travels the length of these conveyors, and is dumped at the end of each to form three separate piles, each of like-sized debris. In Figure 2, above, the lateral conveyors [20] are shown in their operative position, extending out from the plant base.

All of these functions, however, are incorporated into the prior art that preceded the '618 patent. The primary innovation claimed in the '618 patent is a way of folding the lateral conveyors so that the plant is more easily transported from worksite to worksite. Previous plants were transportable, but they were arguably less practical. For example, one cited invention required the lateral conveyors to be manually removed from the plant and stored above it for transport. Others allowed the lateral conveyors to fold onto the plant, but required that the plant be of sufficient length to accommodate the full size of the conveyors. By contrast, the '618 patent describes an invention whereby the lateral conveyors are double-jointed and fold into the plant more compactly. This is the essence of the innovation.

Based on this innovation, the United States Patent and Trademark Office issued the '618 patent, in which the patentee claimed, among other things:

A mobile road-hauled aggregate material processing plant comprising:

a wheel mounted chassis extending in a longitudinal direction;

a plant support frame mounted on the chassis;

a raw material input hopper mounted on the plant support frame;

a material processing means mounted on the plant support frame and fed from the input hopper and having an outlet;

a processed material outfeed delivery means mounted on the plant support frame and fed from the material processing means;

at least one lateral delivery conveyor incorporated in the outfeed delivery means, said conveyor comprising:

a conveyor frame tail section;

a conveyor frame head section;

a tail articulation means connecting the tail section to the support frame in such a way that at least part of the tail section is movable relative to the plant support frame from an operative position extending laterally of the chassis with respect to the longitudinal direction for outfeed of processed material, to a transport position extending substantially upright above the chassis and positioned with respect to the input hopper and material processing means so that it does not project laterally beyond the chassis,

a head articulation means connecting the head section to the tail section in such a way that the head section is movable from an operative position to a transport position with the head section extending longitudinally above the chassis and positioned with respect to the input hopper and material processing means so that it does not project laterally beyond the chassis; [and]

an endless conveyor belt ..., said belt defining a conveyor plane.

('618 patent, col. 7.)

Thus, according to this description, the “wheel mounted chassis” that underlies the invention is outfitted with a “plant support frame”. On the plant support frame is attached an “input hopper” that, in the preferred embodiment, accepts rubble of various sizes. This hopper feeds a “material processing means” that sorts the rubble into various sizes, and feeds the sorted material to the “outfeed delivery means.” This outfeed delivery means comprises, in the preferred embodiment, two lateral conveyors extending from the sides of the plant. Each of these lateral conveyors is mounted with a conveyor belt and has two movable joints. The first joint is called the tail articulation means (“TAM”), and it connects the lower portion of the conveyor (the “tail section”) to the plant support frame. The second joint is called the head articulation means (“HAM”), and it attaches the top part of the conveyor (the “head section”) to the conveyor's tail section. By using these two joints together, the conveyor can be folded into a flat L shape using the HAM and raised next to the plant support frame using the TAM. This way, the conveyor sits snugly next to the plant support frame during transport mode. Figure 4, below, shows the preferred embodiment of the invention in transport mode. The lateral conveyors [20] are shown folded into the L shape for transport.

Image 2 (4.03" X 2.86") Available for Offline Print

The Plaintiff Metso Minerals commenced the present law suit in 2006, alleging that the Defendants manufactured and sold products that infringed the '618 patent. Following discovery, claim construction, and summary judgment, the Plaintiff tried its case to a jury in late 2010. At the seven-week trial, the Defendants challenged the validity of the '618 patent, but on December 6, 2010, the jury returned a verdict rejecting this challenge, in part finding that no asserted claim of the '618 patent would have been obvious to a person of ordinary skill in the art at the time of the invention. The jury concluded that the Defendants had willfully infringed, either literally or by equivalents, claims 1, 2, 3 and 7 of the '618 patent with respect to the manufacture and sale of eleven screening machines in the United States over a ten year period. In addition, the jury issued an advisory verdict denying the defenses of laches and inequitable conduct. The jury awarded the Plaintiff $15.8 million in damages. On March 3, 2011, the Court entered Judgment on the jury verdict.

After the conclusion of the trial, both the Plaintiff and the Defendants have filed a large number of post-trial motions. In this Decision and Order, the Court will now address only those particular filings relating to the Defendants' motions for judgment as a matter of law and for a new trial.

II. DISCUSSION

A. Relevant Law

1. The Renewed Motion for Judgment as a Matter of Law

Pursuant to Federal Rule of Civil Procedure 50(b) (“Fed.R.Civ.P. 50(b)” or “Rule 50(b)”), a renewed judgment as a matter of law (“JMOL”) may be made “at the close of all the evidence” and after the verdict. A motion for JMOL may be granted where “there is no legally sufficient evidentiary basis for a reasonable jury to find [in favor of the non-moving] party.” Fed.R.Civ.P. 50(a). In patent cases, a motion for JMOL pursuant to Rule 50(b) is reviewed under the law of the regional circuit. Exergen Corp. v. Wal–Mart Stores, Inc., 575 F.3d 1312,1317 (Fed.Cir.2009).

When ruling on a motion for JMOL, the court must “ ‘consider the evidence in the light most favorable to the [non-moving party] and ... give that party the benefit of all reasonable inferences that the jury might have drawn in [its] favor from the evidence.’ ” Concerned Area Residents for the Env't v. Southview Farm, 34 F.3d 114, 117 (2d Cir.1994), cert. denied, 514 U.S. 1082, 115 S.Ct. 1793, 131 L.Ed.2d 721 (1995) (quoting Smith v. Lightning Bolt Prods., Inc., 861 F.2d 363, 367 (2d Cir.1988)). The court “must disregard all evidence favorable to the moving...