Fujifilm Corporation v. Motorola Mobility Holdings, Inc. et al

Filing 344

ORDER REGARDING 343 JOINT STATUS REPORT. Signed by Judge William H. Orrick on 06/24/2015. (jmdS, COURT STAFF) (Filed on 6/24/2015)

1
2
3
4

UNITED STATES DISTRICT COURT

5

NORTHERN DISTRICT OF CALIFORNIA

6
7

FUJIFILM CORPORATION,

Case No. 12-cv-03587-WHO

Plaintiff,
8

ORDER REGARDING JOINT STATUS
REPORT

v.
9
10

MOTOROLA MOBILITY LLC,

Re: Dkt. No. 343

Defendant.

United States District Court
Northern District of California

11
On June 16, 2015, the parties filed a Joint Status Report concerning various issues that

12
13

remain unresolved following entry of the jury verdict in the patent infringement trial held in this

14

case. See Dkt. No. 343 (“Rpt.”). This order addresses each issue below.

15

I.

16

INEQUITABLE CONDUCT
“Inequitable conduct is an equitable defense to patent infringement that, if proved, bars

17

enforcement of a patent.” Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276, 1285

18

(Fed. Cir. 2011). To prevail on the defense, the accused infringer must prove that the patent

19

applicant “misrepresented or omitted material information with the specific intent to deceive the

20

PTO.” Id. at 1287. “The accused infringer must prove both elements – intent and materiality – by

21

clear and convincing evidence.” Id.

22

Motorola concedes that, in light of the jury’s finding of no invalidity under 35 U.S.C. §

23

102(f), it cannot satisfy the materiality element of its inequitable conduct defense. Rpt. at 1. It

24

states that I may rule on the defense without the introduction of additional evidence. Id. Fujifilm

25

agrees. See Rpt. at 1-2.

26

I will issue a decision on inequitable conduct in conjunction with a decision on laches,

27

discussed below. The parties shall not submit additional briefing or evidence on inequitable

28

conduct.

1

II.

LACHES
The equitable defense of laches may bar a patentee’s claim for pre-suit damages. A.C.

2
3

Aukerman Co. v. R.L. Chaides Const. Co., 960 F.2d 1020, 1028 (Fed. Cir. 1992). “[A]pplication

4

of the defense . . . is committed to the sound discretion of the district court.” Id. at 1032. A

5

defendant seeking to invoke the defense must prove two elements: (1) that the patentee “delayed

6

filing suit for an unreasonable and inexcusable length of time from the time [it] knew or

7

reasonably should have known of its claim against the defendant;” and (2) that “the delay operated

8

to the prejudice or injury of the defendant.” Id. A presumption of laches arises “upon proof that

9

the patentee delayed filing suit for more than six years after actual or constructive knowledge of

10

the defendant’s alleged infringing activity.” Id. at 1035-36.
Motorola asserts laches as a defense to infringement of the ’763 patent, the one patent in

United States District Court
Northern District of California

11
12

suit that the jury found valid and infringed. To adjudicate the defense, Motorola proposes a short

13

evidentiary hearing at which it would require no more than thirty minutes and would call only one

14

witness. Rpt. at 2. Motorola further proposes that within ten days of the evidentiary hearing, the

15

parties would submit proposed findings of fact and conclusions of law. Id.
Fujifilm objects to this proposal on several grounds, including that: (1) Motorola has

16
17

already exhausted its allotted eighteen hours of trial time; (2) the one witness that Motorola

18

intends to offer in support of its laches defense, David Yen, is not a technology expert (and thus,

19

according to Fujifilm, cannot possibly provide testimony sufficient to establish that the relevant

20

Motorola product infringes the ’763 patent) and was not disclosed as a laches witness;1 (3) the

21

parties already submitted proposed findings of fact and conclusions of law on the defense, “so

22

additional submissions on [the] issue would be redundant;” and (4) more generally, the defense

23

“plainly [has] no merit” and should be summarily rejected on this ground. Rpt. at 4-5.
I tentatively am inclined, based on the argument in the Joint Status Report, to find that Yen

24
25
1

26
27
28

In its pretrial witness list, Motorola stated that Yen would testify regarding the following
subjects: “Operation of the accused devices. Invalidity of and workarounds for the asserted
claims. May also be called as a rebuttal witness on issues, defenses or claims raised by Fujifilm,
or for impeachment purposes.” Dkt. No. 215-9 at 1. The sentence starting with, “May also be
called,” is a boilerplate sentence that Motorola included in its description of the testimony of
nearly all of its witnesses. See id. at 1-10.
2

1

was not disclosed as a laches witness and to prohibit him from testifying in support of the defense.

2

The boilerplate description of his testimony quoted in footnote 1 above is hardly sufficient.

3

However, if Motorola wishes to file a brief of ten pages or less that explains what previously

4

disclosed evidence regarding laches it intends to produce and why Yen is an appropriate laches

5

witness, procedurally and substantively, it may do so on or before July 1, 2015. Fujifilm may

6

respond with a brief of similar length on or before July 8, 2015. There will be no reply.

7

III.

8
9

OBJECTIVE PRONG OF WILLFULNESS
To prove willful infringement, “a patentee must show by clear and convincing evidence

that the infringer acted despite an objectively high likelihood that its actions constituted
infringement of a valid patent.” In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007).

11
United States District Court
Northern District of California

10

“If this threshold objective standard is satisfied, the patentee must also demonstrate that this

12

objectively defined risk . . . was either known or so obvious that it should have been known to the

13

accused infringer.” Id. A willful infringement determination thus “requires a two-pronged

14

analysis entailing separate objective and subjective inquiries.” Powell v. Home Depot U.S.A., Inc.,

15

663 F.3d 1221, 1236 (Fed. Cir. 2011). The objective inquiry is question of law for the court,

16

while the subjective inquiry is a fact question for the jury. Bard Peripheral Vascular, Inc. v. W.L.

17

Gore & Associates, Inc., 682 F.3d 1003, 1007-08 (Fed. Cir. 2012).

18

The jury in this case was given the subjective prong and returned a verdict of no willful

19

infringement with respect to each of the asserted claims. Dkt. No. 337 at 9. Motorola

20

nevertheless asks that I now rule on the objective prong “to avoid the potential for multiple,

21

fractured decisions on willfulness.” Rpt. at 6. Motorola explains that if Fujifilm succeeds in

22

overturning the jury’s findings on the subjective prong, then the matter will return to this Court for

23

a determination on the objective prong – unless the determination is made now. Id. Fujifilm

24

responds that in light of the jury’s findings on the subjective prong, willfulness should only be

25

addressed, if at all, in the context of Rule 50 or 59 motions.

26

I agree with Fujifilm. “Because both prongs must be established for the Court to make an

27

ultimate finding of willfulness, failure on either prong defeats a claim of willfulness. If the Court

28

finds no objective willfulness, the inquiry is at an end, and the Court need not consider whether
3

1

the jury’s finding of subjective willfulness was supported by substantial evidence. Conversely,

2

if the jury found no subjective willfulness, the Court need not consider objective willfulness, as

3

the willfulness claim must fail either way.” Apple, Inc. v. Samsung Electronics Co., 920 F. Supp.

4

2d 1079, 1107 (N.D. Cal. 2013) (assessing objective willfulness only for those patents for which

5

the jury found subjective willfulness) aff’d in part, rev’d in part on other grounds, 2015 WL

6

2343543 (Fed. Cir. May 18, 2015).
Here, the jury found no subjective willfulness. Accordingly, the willfulness claim must

7
8

fail, and there is no need for me to decide objective willfulness before judgment may be entered.

9

If the parties raise willfulness in their Rule 50 or 59 motions, I will consider it there.

10
11

IV.

REIMBURSEMENT OF EXPENSES INCURRED IN REBUTTING FUJIFILM’S
SUBSTITUTE EXPERT REPORT

United States District Court
Northern District of California

Several months before trial, I allowed Fujifilm to designate a substitute damages expert,
12

but only on the condition that it “pay for all fees and costs associated with rebutting the substitute

13
report.” Dkt. No. 147. The parties now dispute the reasonableness of certain expenses for which
14
Motorola seeks reimbursement. Rpt. at 7. They seek leave to file a joint letter on the issue and
15

ask that they be allowed to attach “limited exhibits” to the letter. Id. This request is GRANTED.

16
The letter (which shall be no more than five pages, double-spaced) is due by July 1, 2015.
17

Motorola asks that it be allowed to submit its counsel’s invoices for in camera review “to

18
protect the confidentiality of any billing rates and/or privileged information.” Rpt. at 7. This
19
request is DENIED. If Motorola has a good faith basis for believing that there exists good cause
20
to seal part or all of the invoices, it may file an administrative motion to file under seal pursuant to
21
Civil Local Rule 79-5.
22
IT IS SO ORDERED.
23
Dated: June 24, 2015
24
25
26

___________________________________________
WILLIAM H. ORRICK
United States District Judge

27
28
4