Meyer Intellectual Props. Ltd. v. Bodum, Inc.

• Citation: 690 F.3d 1354,104 U.S.P.Q.2d 1105
• Decision Date: 15 August 2012
• Docket Number: No. 2011–1329.,2011–1329.
• Parties: MEYER INTELLECTUAL PROPERTIES LIMITED and Meyer Corporation, U.S., Plaintiffs–Appellees, v. BODUM, INC., Defendant–Appellant.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

690 F.3d 1354

104 U.S.P.Q.2d 1105

MEYER INTELLECTUAL PROPERTIES LIMITED and Meyer Corporation, U.S., Plaintiffs–Appellees,

v.BODUM, INC., Defendant–Appellant.

No. 2011–1329.

United States Court of Appeals,Federal Circuit.

Aug. 15, 2012.

Joshua C. Krumholz, Holland & Knight, LLP, of Boston, MA, argued for plaintiffs-appellees. Of counsel on the brief were R. David Donoghue and Daniel L. Farris, of Chicago, IL.

Robert S. Rigg, Vedder Price, P.C., of Chicago, IL, argued for defendant-appellant. With him on the brief were David E. Bennett, and William J. Voller, III.

Before DYK, MOORE, and O'MALLEY, Circuit Judges.

Opinion for the court filed by Circuit Judge O'MALLEY. Circuit Judge DYK concurs.

O'MALLEY, Circuit Judge.

In this patent case, Meyer Intellectual Properties Limited and Meyer Corporation, U.S. (collectively, “Meyer”) filed suit against Bodum, Inc. (“Bodum”) in the United States District Court for the Northern District of Illinois, alleging that Bodum infringed two of Meyer's patents, both of which are directed to a method for frothing milk: U.S. Patent Nos. 5,780,087 (“the '087 Patent”) and 5,939,122 (“the '122 Patent”) (collectively, “the patents-in-suit”). Bodum counterclaimed for declaratory judgment of noninfringement and invalidity.

The district court granted Meyer's motions for summary judgment that Bodum's products infringed the patents-in-suit. Before proceeding to trial, the district court granted Meyer's motions in limine prohibiting Bodum from: (1) introducing and relying on certain prior art; (2) presenting certain testimony relating to that prior art; and (3) introducing any evidence to support its inequitable conduct claims. The jury returned a verdict in favor of Meyer, finding that the patents-in-suit were not proven to be invalid, finding that Bodum's infringement was willful, and awarding Meyer damages in the amount of $50,000. The district court subsequently denied Bodum's post-trial motions for judgment as a matter of law (“JMOL”) and granted Meyer's motion requesting enhanced damages and attorney fees.

Bodum appeals from the district court's final judgment awarding damages and attorney fees to Meyer in the amount of $906,487.56. Judgment, Meyer Intellectual Props. Ltd. v. Bodum, Inc., 764 F.Supp.2d 1004 (N.D.Ill.2011), ECF No. 237. On appeal, Bodum challenges several of the court's rulings. Specifically, Bodum challenges the district court's decisions: (1) granting summary judgment in favor of Meyer on infringement; (2) granting Meyer's motions in limine precluding Bodum from presenting certain prior art and testimony at trial; (3) denying Bodum's motion for JMOL that Bodum did not willfully infringe the patents-in-suit; (4) enhancing damages and awarding attorney fees in Meyer's favor; and (5) denying Bodum's renewed motion for JMOL and motion to alter the court's infringement decisions. For the reasons explained below, we reverse-in-part, vacate-in-part, and remand.

Background

A. Factual Background

1. The Patents–in–Suit

Frank Brady (“Brady”) is the sole inventor of the '087 and '122 Patents. For approximately ten years, from 1986 to 1996, Brady was an independent sales representative for Bodum, a company that designs and sells housewares products, including coffee makers, milk frothers, and other kitchen products. Tr. of Proceedings held on Nov. 12, 2010, Meyer Intellectual Props. Ltd. v. Bodum, Inc., No. 06–6329 (N.D.Ill. Apr. 29, 2011), ECF No. 268 at 683:14–23. In that capacity, and as the Chief Executive Officer of Brady Marketing Company, Inc., Brady marketed and sold a number of Bodum's household products, including Bodum's French press coffee makers. Brady explained that he first conceived of a frother using aeration instead of steam in the mid–1990s, and that he introduced it for sale at a trade show in May 1996. Tr. of Proceedings held on Nov. 10, 2010, Meyer Intellectual Props. Ltd. v. Bodum, Inc., No. 06–6329 (N.D.Ill. Apr. 29, 2011), ECF No. 267 at 466:3–467:2. Around that same time, Brady began selling his frothers through his company BonJour, Inc. (“BonJour”).

On September 23, 1996, Brady filed a patent application directed to a “Method for Frothing Liquids.” That application became the '087 Patent, which issued on July 14, 1998. During prosecution of the application that resulted in the '087 Patent, the PTO examiner initially rejected Claim 1 as anticipated by a prior art reference: U.S. Patent No. 5,580,169 (“the Ghidini Patent”). In response, Brady amended the claim to provide: (1) a dimensional limitation requiring that the container have a height that is at least two times the diameter; and (2) a plunger with a screen and a spring, where the spring is “positioned about the circumference of the plunger body such that the spring is biased to hold the screen in place in contact with, though not sealably connected to, the container.” With these changes, Claim 1 of the '087 Patent was allowed.

While the application that resulted in the '087 Patent was pending, Brady filed a continuation application that later became the '122 Patent. The ' 122 Patent issued on August 17, 1999.

The patents-in-suit, which share a common specification, are directed to a method for frothing liquids such as milk. Specifically, the patents relate to “an apparatus and method for frothing, which allows the user to obtain foamy, frothed milk without the use of a complicated steamer device.” '087 Patent col.1 ll.5–10; '122 Patent col.1 ll.8–12.¹ The “Background of the Invention” explains that, at the time the application was filed, “[m]ost of the prior art foaming devices [were] complicated machines which involve the use of steam to aerate or foam the liquid.” ' 087 Patent col.1 ll.12–15. The background section concludes with the statement that, “[w]hat is needed, and is lacking in the prior art, is a device to froth liquids, such as milk, which is simple to use, has no need for electricity or steam, and is relatively easy to clean and store.” Id. at col. 1 ll.64–67.

Generally speaking, the claims disclose four steps: (1) providing a container that has a height to diameter aspect ratio of 2:1; (2) pouring liquid ( e.g., milk) into the container; (3) introducing a plunger that includes at least a rod and plunger body with a screen; and (4) pumping the plunger to aerate the liquid. '087 Patent col.5 ll.20—col.6 ll.8.

2. Bodum's Accused Products

Meyer accuses three of Bodum's milk frothers of infringement: (1) the Chambord Frother Model No.1964; (1) the Aerius Frother Model No. 1364; and (3) the Shin Bistro Frother Model No. 10492. Bodum began selling a first generation of accused milk frothers—referred to as the Version 1 frothers—in 1999. The Version 1 frothers departed from Bodum's previous non-electric milk frothers in that: (1) the carafe was taller and thinner; and (2) the plunger had a different construction involving a mesh and spring design. The following images show a comparison between Bodum's Version 1 Chambord Frother and the Figures from Meyer's '087 Patent:

Image 1 (2.6" X 3.6") Available for Offline Print

Image 2 (2.93" X 3.25") Available for Offline Print

B. Procedural History

In May 2005, Brady sold his company—BonJour—to Meyer. In the sale, BonJour transferred its intellectual property rights to Meyer, and it is undisputed that Meyer owns the patents-in-suit.

On November 20, 2006, Meyer filed suit against Bodum in the Northern District of Illinois, alleging infringement of the patents-in-suit. In the Complaint, Meyer alleged that Bodum “has been and still is using, selling, offering for sale and/or importing one or more milk frother products for frothing liquids that infringe, directly, indirectly, contributorily and/or by inducement” the ' 087 Patent and the '122 Patent. Complaint, Meyer Intellectual Props. Ltd. v. Bodum, Inc., No. 06–cv–6329 (N.D.Ill. Nov. 20, 2006), ECF No. 1. Meyer amended its complaint a year later, in November 2007, to add a claim for willful infringement.

On January 19, 2007, Bodum: (1) filed an answer asserting an affirmative defense of inequitable conduct; and (2) counterclaimed seeking a declaration that the asserted claims of the patents-in-suit are invalid and not infringed.

Roughly six months after it was served with the complaint, Bodum ceased manufacturing its Version 1 frothers and transitioned to Version 2 frothers with a new plunger design. Bodum did not change the name or designation of its frother products. According to Bodum, “[u]nlike the Version 1 plunger, the Version 2 plunger does not have a spring or other biasing element that holds the screen against the inside wall of the container or housing, and the screen does not extend beyond the diameter of the plunger plate.” Appellant Br. 9. Instead, the Version 2 plunger contains an O-ring around the circumference of the plunger body. Bodum subsequently removed the O-ring from the Version 2 frother and began selling the new design as Version 3 in July 2008.

1. Claim Construction

On May 14, 2008, the district court issued its claim construction order. Meyer Intellectual Props. Ltd. v. Bodum, Inc., 552 F.Supp.2d 810 (N.D.Ill.2008) (“Claim Construction Order ”). In that order, the court noted that the parties “agree[d] on which claims are in dispute and have submitted a joint letter identifying the disputed language.” Id. at 812. Consistent with the parties' request, the court limited its construction to certain language in Claim 1 of the '087 Patent and Claims 1 and 10 of the ' 122 Patent. The bulk of the court's claim construction order is not relevant to resolution of this appeal so we do not discuss it in any detail. Notably, however, the parties did not ask the court to construe the phrase “providing a container” as it is used in Claim 1 of the patents-in-suit at this stage of the proceedings. See '087 Patent col.5 ll.23–25 (“providing a container characterized by a height and a diameter, the height being at least two times the diameter”).

2. Summary Judgment

On September 2,...