Mpt, Inc. v. Marathon Labels, Inc.
| Decision Date | 19 January 2007 |
| Docket Number | No. 1:04-cv-2357.,1:04-cv-2357. |
| Citation | 505 F.Supp.2d 401 |
| Parties | MPT, INC., Plaintiff, v. MARATHON LABELS, INC., and Polymeric Converting, LLC, Defendants. |
| Court | U.S. District Court — Northern District of Ohio |
Kyle B. Fleming, Thomas H. Shunk, David E. Kitchen, John Edward Sullivan, Baker & Hostetler, Cleveland, OH, for Plaintiff.
Bruce H. Wilson, Akron, OH, Mark E. Miller, Miller & Associates Evansville, IN, for Defendants.
A number of post-trial motions have been filed by the parties. Plaintiff MPT, Inc. ("MPT") has filed a Motion for Entry of Judgment Including Permanent Injunction (Doc. 272) and a Motion for Attorneys' Fees (Doc. 271). Defendants Marathon Labels, Inc. ("Marathon") and Polymeric Converting LLC ("Polymeric") have filed Renewed Motions for Judgment as a Matter of Law (Doc. 270, 273). MPT has filed a Motion to Strike Defendants' Motions (Doc. 277). These motions follow a jury verdict in favor of MPT on its claims that Defendants willfully infringed United States Patent No. 5,417,790 (issued May 23, 1995) (the "'790 patent") and United States Patent No. RE 37,164 E (issued May 8, 2001) (the "' 164 patent"). For the following reasons, the Court GRANTS in Part MPT's Motion for Entry of Judgment Including Permanent Injunction, GRANTS in Part MPT's Motion to Strike, GRANTS in Part Defendants' Motions for Judgment as a Matter of Law and DENIES MPT's Motion for Attorneys' Fees.
MPT holds the '790 and '164 patents, which generally claim a method for the labeling and relabeling of reusable containers. MPT sued Defendants for contributory and induced infringement on Claims 1, 2, 3, 4 and 6 of the '790 patent and Claim 1 of the '164 patent. MPT claims that Marathon's customers infringe MPT's patents when they use Marathon's Smart Surface Placard product. Polymeric manufactures the Teflon surface of the Smart Surface Placard. Following a two-week jury trial a unanimous jury returned a verdict that both Defendants had contributed to the infringement of all of the patent claims at issue, that Marathon had induced infringement of all of the patent claims at issue, and that the infringement was willful. (Doc. 267, 269). Plaintiff now seeks entry of judgment, trebled damages, a permanent injunction and attorneys fees. Defendants oppose MPT's motions in part by reference to the arguments set forth in their renewed motions for judgment as a matter of law.
Defendants have filed renewed motions for judgment as a matter of law under Rule 50(b). The Court of Appeals for the Federal Circuit generally decides Rule 50(b) issues under regional circuit law, since "JMOL is not a patent-law-specific issue...." Harris Corp. v. Ericsson Inc., 417 F.3d 1241, 1248 (Fed.Cir.2005). "Judgment as a matter of law is appropriate when `viewing the evidence in the light most favorable to the non-moving party, there is no genuine issue of material fact for the jury, and reasonable minds could come to but one conclusion, in favor of the moving party.'" Jordan v. City of Cleveland, 464 F.3d 584, 594 (6th Cir.2006) (quoting Noble v. Brinker Int'l, 391 F.3d 715, 720 (6th Cir.2004)); see also Power-Tek Solutions Services, LLC v. Techlink, Inc., 403 F.3d 353, 358-59 (6th Cir.2005) (). "Credibility determinations, the weighing of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of the judge." Jordan, 464 F.3d at 594 (quoting Reeves v. Sanderson Plumbing Prods., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000)).
MPT's motion to strike focuses on waiver of the right to file a post-trial JMOL motion. A party can waive its right to file a Rule 50(b) motion where the Rule 50(a) motions made at trial failed to "specify the judgment sought and the law and facts on which the moving party is entitled to judgment." Fed.R.Civ.P. 50(a)(2). Although JMOL issues are generally governed by regional circuit law, Federal Circuit law governs whether general arguments made in a pre-verdict JMOL motion are sufficient to preserve specific patent law issues for a post-verdict JMOL motion. Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098, 1106 (Fed. Cir.2003). The two standards are not appreciably different in any event. Both Circuits recognize the Rule's purpose to alert the non-moving party and the court to the grounds of the motion prior to the submission of the case to the jury. See Jordan, 464 F.3d at 595 (); Duro-Last, 321 F.3d at 1107 ().
MPT argues in its Motion to Strike that Defendants have raised new noninfringement arguments in their renewed motions. The Court has reviewed the various motions and agrees that a number of noninfringement arguments in the Rule 50(b) motions were not stated in the preverdict motions: 1) MPT failed to prove that the direct infringers utilize "reusable" containers; 2) MPT provided no evidence that any Marathon customer placed and removed pressure sensitive adhesive labels on Marathon's product; 3) MPT failed to provide any evidence that a "first product," "first contents set," "another product" or a "second contents set" is placed in a reusable container; 4) MPT failed to prove that the labels included "product quantities," "indicia" or product "information"; 5) MPT failed to prove that a first product set was positioned "at a selected one of a time prior to and subsequent to the first label applying step"; and 6) MPT failed to prove infringement of Claims 2 and 3 of the '790 patents with respect to the printing and transparent surfaces.
Defendants point to excerpts of the trial transcript as supporting their post-verdict motions. However, the best that can be said for these excerpts and related written materials is that Defendants stated in the most general terms that MPT had failed to prove that all elements of the method claims were infringed. This characterization may be somewhat charitable, since most mentions of claim elements other than a "release coated," "placard" or "substantially permanent attachment" related to whether the method steps were performed in the United. States, not whether they were performed at all. It is also notable that these subjects were not part of Defendants' trial brief, closing arguments, or trial strategy. The Court must therefore decide whether a general statement in a pre-verdict JMOL motion that the plaintiff has failed to prove that all elements of the claims were practiced by Defendants preserves the right to challenge specific elements (or dependent claims with respect to claims 2 and 3) that were never mentioned in the pre-verdict motion.
The Federal Circuit recently addressed a similar issue in Duro-Last. The Duro-Last defendant moved for pre-verdict JMOL on inequitable conduct and the onsale bar but failed to explicitly move on obviousness. 321 F.3d at 1106. The defendant noted in its post-verdict motion on obviousness that the inequitable conduct motion discussed prior art references that were also relevant to obviousness. Id. at 1107. The Federal Circuit held that this was not adequate to preserve the issue for a Rule 50(b) motion. New prior art references were raised in the post-verdict motion and the pre-verdict motion lacked any discussion of the previously-disclosed prior art references with respect to obviousness factors.Id.1
This case is quite similar to Duro-Last. Just as the Duro-Last plaintiff was unable to address the new prior art, MPT never had an opportunity at trial to address Defendants' new noninfringement arguments. See also W.S. Molnar Co. v. IKG Industries, 39 U.S.P.Q.2d (BNA) 1219, 82 F.3d 434 (Fed.Cir.1996) () (citing Libbey-Owens-Ford Co. v. Ins. Co. of N. Am., 9 F.3d 422, 426 (6th Cir.1993)). Other district courts have reached a similar conclusion in patent cases. See, e.g., Am. Standard, Inc. v. York Intl Corp., 244 F.Supp.2d 990, 993 (W.D.Wis.2002) (). The Court's conclusion is buttressed by the fact that the new arguments could not even be gleaned from Defendants' conduct or argument at trial.2
Accordingly, the Court concludes that Defendants have waived certain noninfringement grounds which were never raised during pre-verdict JMOL motions. The Court will not consider any of the six arguments listed above.3
Defendants generally ask the Court to disregard the testimony of MPT's expert, Dr. Prahl. The Court rejects these arguments for the same reasons it did at trial. As a threshold matter, Defendants did not object to Dr. Prahl's testimony in a timely manner. Moreover, even if they had objected properly the Court finds that Prahl's testimony was proper and that Defendants' objections merely go to weight to be given his testimony.
Defendants argue that MPT failed to demonstrate that Marathon's customers "substantially permanently" attach the Smart Surface Placard to containers. First, they note that Richard Rizzi, the representative of a Marathon customer, testified that a specimen demonstrated to the jury was a poor example because...
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