Mobile Hi-Tech Wheels v. Cia Wheel Group

• Decision Date: 20 March 2007
• Docket Number: No. CV 04-09514 SVW (RZx).,CV 04-09514 SVW (RZx).
• Court: U.S. District Court — Central District of California
• Parties: MOBILE HI-TECH WHEELS, Plaintiff, v. CIA WHEEL GROUP, Defendant.

514 F.Supp.2d 1172

MOBILE HI-TECH WHEELS, Plaintiff, v. CIA WHEEL GROUP, Defendant.

No. CV 04-09514 SVW (RZx).

United States District Court, C.D. California.

March 20, 2007.

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Edward R. Schwartz, Christie Parker & Hale, Pasadena, CA, for Plaintiff.

Duncan M. Palmatier, S. J. Christine Yang Law Offices, Fountain Valley, CA, for Defendant.

ORDER DENYING DEFENDANT'S MOTION FOR A NEW TRIAL OR JUDGMENT AS A MATTER OF LAW [164]

STEPHEN V. WILSON, District Judge.

I. INTRODUCTION

This was a patent infringement case brought by Plaintiff Mobile Hi-Tech Wheels against Defendant CIA Wheel Group. Both companies manufacture high-end wheels and rims. Plaintiff alleged that one of Defendant's wheels infringes Patent D501,173 (Vehicle Front Face) ("'173 Patent"), which was issued on January 25, 2005 to Plaintiff. The '173 patent is a design patent for a vehicle-wheel front face.¹ On February 9, 2006, the Court entered summary judgment in favor of Plaintiff that the '173 was valid, finding that genuine issues of material fact existed as to the substantial similarity of the accused infringing wheel to Plaintiffs '173 patent and as to the '173 patent's point of novelty.² (Order Granting in Part and Denying in Part Plaintiffs Motion for Summary Judgment, Feb. 9, 2006.) The Court found that the '173 patent was presumptively valid and that Defendant had failed to overcome this presumption of validity. (Id.)

On October 17, 2006, counsel began opening arguments in the trial. However, the Court declared a mistrial after it became apparent that issues concerning the Figures in the '173 patent needed to be resolved. Specifically, the originally issued '173 Patent contained a set of inconsistent figures. Figure 1 was a perspective view of the vehicle-wheel front face and did not contain lines representing a solid surface behind the apertures. (Id.) However, Figure 2 was a front elevational view of the design and it did contain lines representing a solid surface behind the apertures. Whether the '173 Patent was construed to claim a solid surface behind the apertures was potentially dispositive on the question of infringement because the accused device lacked a solid surface behind its apertures.

On October 27, 2006, the Court issued an Order clarifying the scope of the '173 Patent, granting Plaintiffs motion to exclude evidence regarding the validity of the '173 Patent, dismissing Plaintiffs unfair competition claim, and granting Defendant's motion to exclude evidence regarding the alleged infringement of a different patent. (Order Clarifying Patent Figures, Oct. 27, 2006.) With regard to the inconsistency in the figures, the Court ordered "that Figure 1 in the '173 patent be interpreted to include the corrected Figure 1, which has lines representing a solid surface behind the apertures." (Id. at 15.)

A second trial began on November 7, 2006. Prior to submission of the case to the jury, Defendant moved for judgment as a matter of law (JMOL) and for a new trial pursuant to Rule 50(a). (Vol III Tr: 105:18-107:18.) Defendant argued that the motion should be granted because the patent was invalid and unenforceable (Vol III Tr: 105:25-106:20.) and because the Court improperly mixed issues of claim construction with infringement. (Vol III Tr: 107:4-14.) The Court deferred ruling on Defendant's Rule 50(a) motion and submitted the case to the jury. The jury returned a verdict of infringement and awarded Plaintiff $300,000 in damages based on lost royalties.³

Defendant has now filed a renewed motion for JMOL pursuant to Rule 50(b), or in the alternative, a new trial pursuant to Rule 50(b) and Rule 59(a). Defendant argues that a new trial or JMOL is warranted for five reasons: (1) the '173 Patent was invalid and unenforceable as a matter of law; (2) the Court erred in carving out the functional elements; (3) the Court properly mixed issues of claim construction and infringement; (4) the evidence was insufficient, as a matter of law, to support infringement; and (5) the evidence was insufficient, as a matter of law, to support a royalty of $48.25/wheel. For the reasons discussed below, Defendant's motion is DENIED.

II. STANDARD FOR A MOTION FOR A JUDGMENT AS A MATTER OF LAW OR NEW TRIAL

Defendant renews its motion for judgment as a matter of law pursuant to Rule 50(b), or in the alternative, a new trial pursuant to Rule 50(b) and Rule 59(a). Although this is a patent case, the Court applies Ninth Circuit law for procedural issues not unique to patent law such as motions for judgment as a matter of law or a new trial. Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1363 (Fed.Cir.2004).

A. Motion for Judgment as a Matter of Law or in the Alternative, a New Trial Pursuant to Federal Rule of Civil Procedure 50

Rule 50(a) provides that a party may move for judgment as a matter of law "at any time before the case is submitted to the jury." Fed.R.Civ.P. 50(a)(2). The Court may grant the motion "if a party has been fully heard on an issue during a jury trial and the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue." Fed.R.Civ.P. 50(a)(1), "Because the district judge lacks the authority to resolve disputed issues of fact under those circumstances, judgment as a matter of law is appropriate only if no reasonable jury could find for a party on that claim. This necessarily means that the court must draw all reasonable evidentiary inferences in favor of the non-moving party." Ritchie v. United States, 451 F.3d 1019, 1022-1023 (9th Cir.2006). See also Graves v. City of Coeur D'Alene 339 F.3d 828, 838 (9th Cir. 2003) ("Judgment as a matter of law is proper if the evidence, viewed in the light most favorable to the nonmoving party, permits only one reasonable conclusion."); Murphy v. F.D.I.C, 38 F.3d 1490, 1495 (9th Cir.1994) ("[w]e are required to sustain a judgment based on a jury verdict if it was supported by ... such relevant evidence as reasonable minds might accept as adequate to support a conclusion.") (internal quotation marks omitted).

"If the court does not grant a motion for judgment as a matter of law made under [Rule 50(a)], the court is considered to have submitted the action to the jury subject to the court's later deciding the legal questions raised by the motion. The movant may renew its request for judgment as a matter of law by filing a motion no later than 10 days after the entry of judgment or — if the motion addresses a jury issue not decided by a verdict — no later than 10 days after the jury was discharged. The movant may alternatively request a new trial or join a motion for a new trial under Rule 59." Fed.R.Civ.P. 50(b).

The procedural prerequisite that a party move for JMOL pursuant to Rule 50(a) prior to submission of the case to a jury in order to renew its motion for JMOL after trial is a strict requirement. See Farley Transp. Co. v. Santa Fe Trail Transp. Co., 786 F.2d 1342, 1346 (9th Cir. 1986) ("the requirement that [a JMOL] motion be made at the close of all the evidence is to be strictly observed"). Thus, the failure to move for a JMOL prior to submission of the case to the jury precludes a party from bringing a renewed motion for JMOL after trial. Janes v. Wal-Mart Stores Inc., 279 F.3d 883, 886-887 (9th Cir.2002); see also Savino v. C.P. Hall Co., 199 F.3d 925 (7th Cir.1999) (failure to move for JMOL prior to submission of the case to the jury constitutes waiver of the argument post-trial); Queenie, Ltd. v. Nygard Intern., 321 F.3d 282 (2d Cir. 2003) (same); Neely v. American Family Mut. Ins. Co., 930 F.Supp. 360 (N.D.Iowa 1996) (same); Taber Partners I v. Insurance Co. of North America, Inc., 917 F.Supp. 112 (D.Puerto Rico 1996).

B. Motion for a New Trial under Rule 59

Rule 59(a) provides that "A new trial may be granted to all or any of the parties and on all or part of the issues ... in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States." Fed.R.Civ.P. 59(a). "The authority to grant a new trial ... is confided almost entirely to the exercise of discretion on the part of the trial court." Allied Chemical Corp. et al. v. Daiflon, Inc., 449 U.S. 33, 36, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980).

A new trial may be granted if "the verdict is contrary to the clear weight of the evidence, or is based upon evidence which is false, or to prevent, in the sound discretion of the trial court, a miscarriage of justice." Graves v. City of Coeur D'Alene 339 F.3d 828, 839 (9th Cir.2003); see also City Solutions, Inc. v. Clear Channel Communications 365 F.3d 835, 843 (9th Cir.2004) ("A new trial is warranted where the verdict is contrary to the clear weight of the evidence and the verdict results in the miscarriage of justice."); United States v. 4.0 Acres of Land 175 F.3d 1133, 1139 (9th Cir.1999) ("The trial court may grant a new trial, even though the verdict is supported by substantial evidence, if the verdict is contrary to the clear weight of the evidence, or is based upon evidence which is false, or to prevent, in the sound discretion of the trial court, a miscarriage of justice.'") (quoting Oltz v. St. Peter's Community Hosp., 861 F.2d 1440, 1452 (9th Cir.1988)). However, "a district court may not grant or deny a new trial merely because it would have arrived at a different verdict." United States v. 4.0 Acres of Land, 175 F.3d 1133, 1139 (9th Cir.1999) (citing Wilhelm v. Associated Container Transp. (Australia) Ltd., 648 F.2d 1197, 1198 (9th Cir.1981)).

III. DISCUSSION

Defendant argues that a new trial or JMOL is warranted for five reasons: (1) the '173 Patent was invalid and uneforceable as a matter of law; (2) the Court erred in carving out the functional elements; (3) the Court improperly mixed issues of claim construction and...