Layne Christensen Company v. The Purolite Company
Filing
720
MEMORANDUM AND ORDER denying as moot 666 Purolite's original motion for judgment as a mattter of law and to strike testimony; denying 680 Plaintiffs' motion for enhanced damages and attorney fees; granting in part and denying in part [ 698] Defendant Purolite's Renewed Motion for Judgment as a matter of law and to strike testimony; denying 701 Puolite's Motion to Strike plaintiffs' reply brief ; granting 710 Plaintiffs' Motion for Permanent Injunction; denying 717 Purolite's Motion to Strike a portion of a supporting affidavit. Signed by District Judge John W. Lungstrum on 5/16/2012. (ses)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF KANSAS
LAYNE CHRISTENSEN COMPANY and
DR. ARUP K. SENGUPTA
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Plaintiffs,
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v.
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BRO-TECH CORPORATION,
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d/b/a THE PUROLITE COMPANY,
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Defendant.
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_______________________________________)
Case No. 09-2381-JWL
MEMORANDUM AND ORDER
Over four days beginning on January 24, 2012, the Court conducted a jury trial
of the claim by plaintiffs Layne Christensen Company (“Layne”) and Arup SenGupta
against defendant Bro-Tech Corporation, d/b/a The Purolite Company (“Purolite”) for
infringement of Claims 1, 7, 10, 11, 12, and 13 of U.S. Patent No. 7,291,578 (“the
Patent”). All other claims in the case had been resolved by stipulation or by ruling of the
Court. At the close of plaintiffs’ case, Purolite moved for judgment as a matter of law
on the issues of infringement and willfulness and moved to strike certain testimony of
Dennis Clifford, plaintiffs’ expert, and the Court took the motion under advisement and
allowed the trial to proceed. On January 30, 2012, the jury returned its verdict, by which
it found that Purolite had infringed those claims of the Patent; that those claims were not
invalid for lack of enablement; that plaintiffs sustained $229,171.42 in damages; and that
Purolite’s infringement had been willful. The Court deferred entry of judgment until its
ruling on the issue of the enhancement of damages.
The matter now comes before the Court for ruling on Purolite’s postrial motion,
by which it renews its previous motion for judgment as a matter of law with respect to
the issues of infringement and willfulness and to strike testimony of Dr. Clifford, and,
alternatively, seeks a new trial (Doc. # 698). For the reasons set forth below, that motion
is denied in part and granted in part. The motion to strike testimony is denied. The
motion for judgment as a matter of law is denied with respect to the issue of
infringement. The motion for judgment as a matter of law is granted with respect to the
issue of willfulness, and judgment is awarded to Purolite on that claim. The alternative
motion for a new trial is denied, except that if the Court’s judgment in favor of Purolite
on the issue of willfulness were overturned, it would order a new trial on that issue on
the basis that the jury’s verdict was against the great weight of the evidence. Purolite’s
motion filed at the close of plaintiffs’ case (Doc. # 666) is denied as moot.
The matter also comes before the Court on plaintiffs’ motion for a permanent
injunction against Purolite’s further infringement of the Patent (Doc. # 710). For the
reasons set forth below, that motion is granted, and the requested injunction is hereby
issued by the Court. Purolite’s motion to strike a portion of a supporting affidavit by Dr.
SenGupta (Doc. # 717) is denied.
Finally, the matter comes before the Court for ruling on plaintiffs’ motion for
enhanced damages and attorney fees (Doc. # 680). That motion is denied. Purolite’s
2
motion to strike plaintiffs’ reply brief in support of this motion for enhanced damages
and fees (Doc. # 701) is denied.
I.
Purolite’s Motion for Judgment as a Matter of Law1
A.
Governing Standard
Judgment as a matter of law under Fed. R. Civ. P. 50(b) is improper “unless the
proof is all one way or so overwhelmingly preponderant in favor of the movant as to
permit no other rational conclusion.” Crumpacker v. Kansas Dept. of Human Resources,
474 F.3d 747, 751 (10th Cir. 2007). In determining whether judgment as a matter of law
is proper, a court may not weigh the evidence, consider the credibility of witnesses, or
substitute its judgment for that of the jury. Sims v. Great American Life Ins. Co., 469
F.3d 870, 891 (10th Cir. 2006).
In essence, the court must affirm the jury verdict if, viewing the record in the light
most favorable to the nonmoving party, it contains evidence upon which the jury could
properly return a verdict for the nonmoving party. See Bartee v. Michelin North
1
Plaintiffs argue that Layne’s posttrial motion should be denied because, although
the certificate of service for the motion included a place for local counsel’s electronic
signature, a signature block for local counsel was not included, before the certificate of
service, with the signatures of counsel admitted pro hac vice. Plaintiffs argue that the
motion therefore violates the local rule requiring local counsel to sign all documents
filed. See D. Kan. Rule 5.4.2(c)(3), 83.5.4(c). The Court rejects this argument, which
borders on frivolous. The motion was electronically filed by local counsel, and the local
rules provide that the use of the electronic filing system’s login and password serve as
the signature of the attorney for all purposes. See D. Kan. Rule 5.4.8(a).
3
America, Inc., 374 F.3d 906, 914 (10th Cir. 2004). Conversely, the court must enter
judgment as a matter of law in favor of the moving party only if “there is no legally
sufficient evidentiary basis for a reasonable jury to find for the issue against that party.”
Sims, 469 F.3d at 891.
B.
Infringement
With respect to the sole remaining infringement issue for trial, the Court
instructed the jury as follows:
In this case, only one issue relating to infringement remains for
your consideration. One limitation of Claim 1 requires the dispersion of
a “salt of said metal” “throughout” the intermediate. The Court has
already determined, as a matter of law, that FerrIX does contain iron
dispersed “throughout” the beads. The issue in this case is whether
Plaintiffs have shown that the oxygen-containing compound of iron that
is found in FerrIX (the “salt of said metal” from Claim 1) has in fact been
dispersed “throughout” the beads, as required by Claim 1.
Plaintiffs are not required to prove that all particles of iron
contained in the beads are part of an oxygen-containing compound of iron,
such as iron oxide or iron hydroxide. Instead, Plaintiffs must show that
there is iron oxide or iron hydroxide dispersed “throughout” the beads, as
that term is defined in these instructions.
The Court has already determined that all other limitations in
Claims 1, 7, 10, 11, 12, and 13 are covered by the FerrIX product.
Accordingly, if you find that Plaintiffs have shown that FerrIX contains
an oxygen-containing compound of iron dispersed throughout the beads,
you must find that Purolite has infringed Claims 1, 7, 10, 11, 12, and 13
of the patent. Conversely, if you find that Plaintiffs have not shown that
FerrIX contains an oxygen-containing compound of iron dispersed
throughout the beads, you must find that Purolite has not infringed Claims
1, 7, 10, 11, 12, and 13 of the patent.
4
The jury was further instructed:
Dispersion “throughout the intermediate” in Claim 1 means dispersion all
the way through the intermediate, or through the whole of it, or in or to
every part of it, or everywhere in it. Dispersion “throughout” the
intermediate is not achieved merely by having some particles reach the
interior or go beyond the periphery of the intermediate. On the other
hand, dispersion “throughout” the intermediate does not require that a
stoichiometric amount was used or that every possible exchange site was
reached.
At trial, Purolite did not dispute that the outermost portions of the beads of its product,
FerrIX, do contain iron oxide, the compound that allows the product to remove arsenic
from water as intended. Moreover, as stated in the jury instructions, the Court ruled as
a matter of law (based on experiments by Purolite’s expert, Daniel Stack) that the beads
contain at least iron “throughout”. Purolite took the position, however, that the beads
have a core-shell structure and that the core portions of the beads do not contain iron
oxide.
The Court makes one note about the proof required for infringement here.
Purolite has generally described plaintiffs’ burden with respect to their infringement
claim as a requirement to show that the iron in the core of the beads is iron oxide. As
the instructions made clear, however, plaintiffs’ burden was not so limited, because not
all particles of iron needed to be iron oxide for a finding of infringement; rather, for
infringement, the jury only needed to find that iron oxide had been dispersed
“throughout” the beads.
The Court concludes that the evidence, viewed in the light most favorable to
5
plaintiffs, is sufficient to support a finding of infringement here. In particular, plaintiffs’
expert, Dr. Clifford, testified that, in his opinion, Purolite’s process for manufacturing
FerrIX infringed the Patent. In supporting that opinion, Dr. Clifford noted that in that
process permanganate soaked into the beads for a period of four hours and that the
permanganate would have reached all parts of the beads in that time. Thus, Dr. Clifford
opined that the iron in the centermost portions of the beads would have been transformed
by the permanganate into iron oxide, just as the iron in the outermost portions were so
transformed. That expert opinion that the iron in all parts of the beads was iron oxide
was sufficient to support the jury’s verdict of infringement.
Moreover, plaintiffs’ evidence of infringement was not limited to Dr. Clifford’s
opinion. Dr. Clifford’s opinion was supported by the testimony of a Purolite employee,
Joe D’Alessandro, who confirmed that the permanganate would indeed flow through the
entirety of the beads with a sufficient amount of permanganate and sufficient time. In
addition, the mere fact that iron was dispersed throughout the beads, when viewed in
plaintiffs’ favor, provides evidence that iron oxide was dispersed throughout the beads.
As noted above, Dr. Stack’s experiments determined that some species of iron was found
at each measured radial point within the beads. Although the concentration of that iron
was much less in the centermost portions of the beads, the Court declined to interpret
“throughout” to require uniformity or some minimum concentration, and it ruled that the
beads did at least contain iron throughout the beads. The Court then ruled, viewing the
evidence in the light most favorable to Purolite, that a question of fact remained
6
concerning whether the smaller concentrations of iron included iron oxide. Viewing that
same evidence in plaintiffs’ favor, however, gives rise to an inference that there was iron
oxide dispersed throughout the beads, as the evidence showed that the sole reason for the
insertion of iron into the beads was to have it transformed to iron oxide, which would
then effect the removal of arsenic from water (the product’s sine qua non). Mr.
D’Alessandro testified that the product would be more effective in removing arsenic if
a greater number of sites in the beads had iron oxide. Several Purolite employees
testified by deposition that the product was “impregnated” with iron oxide,2 and
plaintiffs submitted evidence that Purolite marked the product as “impregnated” with
iron oxide in such a way as to maximize its ability to remove arsenic. Purolite’s decision
not to use its shallow-shell type of bead that lacked a functionalized center in making
FerrIX suggests that it did not intend to leave the center of beads without iron oxide.
Thus, the jury could reasonably have believed that Purolite had an incentive to make sure
that all of the iron in the beads was transformed to iron oxide, which incentive supports
2
At the summary judgment stage, the Court noted that these witnesses did not
testify that iron oxide could be found in both the core and the shell of the beads, or that
some other species of iron was not also contained in the beads; thus, the Court ruled that
plaintiffs’ had not established that iron oxide had been dispersed throughout the beads
as a matter of law if the evidence were viewed the light most favorable to Purolite. Here,
when viewed in the light most favorable to plaintiffs, this testimony supports the
inference that iron oxide was present throughout the beads, especially in light of the fact
that the witnesses did not qualify their description by noting that there was any
significant portion of the beads that did not contain iron oxide.
7
plaintiffs’ position that the iron in the centermost portions of the beads was iron oxide.3
Purolite does not argue that Dr. Clifford’s testimony was insufficient to support
the jury’s verdict of infringement; instead, Purolite argues that the Court should strike
and disregard that testimony. Purolite’s argument runs as follows: Dr. Clifford admitted
in his testimony that there would be no infringement if permanganate did not penetrate
to the center of the beads (assuming fully functionalized beads, with exchange sites
throughout). Dr. Stack conducted an experiment that showed that permanganate does
not reach the center of the beads, but instead leaves a core-shell structure. Joe
D’Alessandro (Purolite’s employee) and Owen Boyd (Layne’s employee) confirmed that
the beads have a core-shell structure after the permanganate is applied. Dr. Clifford did
not conduct any tests to support his opinion that permanganate must have penetrated to
the center of the beads. Thus, Dr. Clifford’s opinion is purely speculative, ipse dixit
testimony, and that testimony should be disregarded.
In seeking to strike Dr. Clifford’s expert testimony, Purolite has not conducted
any analysis under Daubert or Rule 702. Rather, Purolite relies on cases indicating that
a district court may exclude ipse dixit testimony by an expert. See, e.g., General Elec.
3
Jacob Brodie, Purolite’s executive, testified that there is “a very low level of iron
impurity in this bead due to the way it’s manufactured.” The jury was free to discount
that testimony, however. Mr. Brodie did not elaborate or explain the nature of that
impurity. He certainly did not testify that the impurity resulted in the presence of iron
at the core of the beads. Moreover, Purolite’s expert did not offer any opinion that the
iron that he detected in the centermost portions of the bead related to any “impurity” or
to the manufacturing process generally.
8
Co. v. Joiner, 522 U.S. 136, 146 (1997) (“But nothing in either Daubert or the Federal
Rules of Evidence requires a district court to admit opinion evidence that is connected
to existing data only by the ipse dixit of the expert. A court may conclude that there is
simply too great an analytical gap between the data and the opinion proffered.”); accord
United States v. Nacchio, 555 F.3d 1234, 1258 (10th Cir. 2009) (quoting Joiner).
The Court denies Purolite’s motion to strike Dr. Clifford’s testimony on this basis.
First, the motion is untimely. Purolite’s pretrial Daubert motion did not address this
issue of the presence of permanganate, and Purolite failed to assert any such objection
during Dr. Clifford’s testimony. Rule 103 requires a timely motion to strike, see Fed.
R. Evid. 103(a)(1), and Purolite did not file its original motion to strike Dr. Clifford’s
testimony until after another witness had been examined and plaintiffs were resting their
case, at which time Purolite filed its motion for judgment as a matter of law. The Tenth
Circuit has indicated that a motion to exclude expert testimony asserted at the close of
the plaintiff’s case is not timely. See, e.g., Alfred v. Caterpillar, Inc., 262 F.3d 1083,
1086-87 (10th Cir. 2001) (“[c]ounsel should not ‘sandbag’ Daubert concerns until the
close of an opponent’s case, thereby placing opposing counsel and the trial court at a
severe disadvantage;” “Daubert generally contemplates a ‘gatekeeping’ function, not a
‘gotcha’ function”) (citing Macsenti v. Becker, 237 F.3d 1223, 1230-34 (10th Cir.
2001)); see also Vallejos v. C.E. Glass Co., 583 F.2d 507, 511 (10th Cir. 1978) (close
of plaintiff’s case is not the proper time to object to the admission of evidence); United
States v. Pflum, 150 F. App’x 840, 845 (10th Cir. 2005) (same). The Court therefore
9
deems this objection to Dr. Clifford’s testimony to have been waived by Purolite.
The Court also rejects Purolite’s motion to strike on its merits. The Court does
not agree that Dr. Clifford’s opinion constitutes unsupported ipse dixit testimony. Dr.
Clifford’s infringement opinion was supported by other evidence, as set forth above.
Moreover, Purolite’s own expert, Dr. Stack, supported the soundness of Dr. Clifford’s
scientific opinion by testifying that he too expected the permanganate to run through to
the center of the beads. Similarly, as noted above, Mr. D’Alessandro testified that the
permanganate would run to the center of the beads with a sufficient quantity of
permanganate and sufficient time.
Purolite relies heavily on Dr. Stack’s testimony about the core-shell structure that
was revealed after he soaked the beads with permanganate. First, the jury was free to
reject this experiment and any conclusions drawn therefrom based on Dr. Stack’s
admission that his experiment did not exactly replicate the manufacturing process for
FerrIX. Furthermore, Dr. Stack based his conclusion on the existence of a core-shell
structure, with the core portion retaining its color while the shell turned purple from the
permanganate. Dr. Stack did not appear to conduct any further test, however, to confirm
that trace amounts of permanganate could not be found in center of the beads where
small amounts of iron awaited. (Dr. Stack’s analysis of the beads amounted to no more
than a visual inspection—and thus was no more “scientific” than Dr. Clifford’s analysis
that Purolite attacks.) Moreover, Dr. Stack did not attempt to offer any explanation,
scientific or otherwise, for the outcome that differed from his expectation that the
10
permanganate would run through to the center of the beads.
Other evidence belies Purolite’s argument that every bead produced by Purolite’s
manufacturing process must have had a distinct, significant core that lacked
permanganate and iron oxide. Dr. Stack testified, for instance, that the beads had a shellcore structure “on average”. Francis Boodoo, Purolite’s employee, testified in his
deposition that “in general” the innermost portions of the beads did not contain iron
oxide; but he stated that he was not testifying that iron oxide would never be found in
the centermost portions of the beads, and he conceded the possibility that some beads in
the FerrIX product did have iron oxide at the center. Purolite points to the deposition
testimony of Dr. Sylvester, but that testimony was equivocal at best. Dr. Sylvester was
referring to other types of beads when he testified that a white center would indicate that
permanganate did not seem to have reached the center of the bead, and he clarified that
the white center indicated only a non-uniform distribution and that there still could be
small amounts of permanganate or iron at the center. Dr. Clifford only conceded that
some beads had a shell-core structure.4
Perhaps most damning for Purolite is the photograph taken by Mr. D’Alessandro
of cleaved beads that Purolite offered into evidence (Exhibit 698). At trial, Purolite
meant for this exhibit to show the beads’ shell-core structure, with a brown shell and a
4
Purolite insists that plaintiffs conceded in their summary judgment brief, as an
undisputed fact, that the beads had a shell-core structure. Purolite’s motion for summary
judgment, however, was based on a view of the evidence in the light most favorable to
Purolite. Plaintiffs did not concede that fact for all purposes.
11
whitish core. One of the five cleaved beads, however, has a much smaller core than
three of its fellows, and another bead appears to have no distinct white core at all, with
the color merely fading to a lighter shade of brown at the center. Thus, Purolite’s own
evidence suggests that not all beads have a substantial whitish core. Purolite did not
offer any evidence establishing that every bead must have a substantial core, or any
evidence relating to the relative size of the cores. Moreover, the Court has never ruled
that the presence of a shell-core structure precludes the presence of at least some amount
of iron oxide within the core portion.
Accordingly, the Court concludes that Dr. Clifford’s opinion is not necessarily
contrary to science, as Purolite argues. Purolite did not establish as a matter of science
that no bead could have iron oxide at the center even though iron was found at the center.
Because Dr. Clifford’s opinion is supported by evidence other than his own expertise and
experience, there is no basis to exclude his opinion as improper ipse dixit testimony.
The Court therefore concludes, based on Dr. Clifford’s testimony and the other
evidence discussed herein, that the jury’s verdict of infringement had a legally-sufficient
evidentiary basis. The Court thus denies Purolite’s motion for judgment as a matter of
law with respect to the issue of infringement.
C.
Willfulness
Purolite also seeks judgment as a matter of law on plaintiffs’ claim that Purolite’s
infringement was willful. The Federal Circuit has set forth the following two-pronged
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standard for showing the requisite objective recklessness for willful infringement:
[T]o establish 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. The
state of mind of the accused infringer is not relevant to this objective
inquiry. If this threshold objective standard is satisfied, the patentee must
also demonstrate that this objectively-defined risk (determined by the
record developed in the infringement proceeding) was either known or so
obvious that it should have been known to the accused infringer.
In re Seagate Technology, LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (citation omitted).
Purolite first argues that plaintiffs failed to show, by clear and convincing
evidence, an objectively high likelihood that it infringed these claims of the Patent and
that the claims were valid. Purolite argues that, despite the verdict of infringement, it
asserted strong and reasonable arguments, including its arguments that there was no iron
oxide at the center of the beads, that “throughout” should be interpreted by the Court to
require the use of a stoichiometric amount of iron oxide (which, if adopted by the Court,
would have doomed any infringement claim), that these claims were invalid for lack of
enablement, and that another claim of the Patent, Claim 15, was invalid as anticipated
by prior art (on which issue Purolite prevailed). Plaintiffs argue in response that the
Court rejected Purolite’s proposed claim construction as unsupported, that the fact that
Purolite prevailed on one claim of the Patent is not dispositive, and that the case
presented at trial was not a close one, as evidenced by the jury’s quick verdict in
plaintiffs’ favor on the issues of infringement and invalidity.
In multiple cases in the last three years, the Federal Circuit has overturned or
13
upheld the overturning of a jury’s verdict of willful infringement, based on the plaintiff’s
failure to satisfy the objective prong of the Seagate test. See, e.g., Uniloc USA, Inc. v.
Microsoft Corp., 632 F.3d 1292, 1310-11 (Fed. Cir. 2011); Spine Solutions, Inc. v.
Medtronic Sofamor Danek USA, Inc., 620 F.3d 1305, 1319-1320 (Fed. Cir. 2010);
DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1335-37 (Fed. Cir.
2009). In DePuy, the court agreed with the district court and the defendant that “there
was no legally sufficient evidentiary basis to find an objectively high likelihood under
Seagate’s first prong” because the defendant “presented a substantial question of
noninfringement under the doctrine of equivalents.” DePuy, 567 F.3d at 1336. The
court concluded as follows:
The jury could have reasonably found for either party on the question of
equivalence. While the fact that an issue was submitted to a jury does not
automatically immunize an accused infringer from a finding of willful
infringement, the record developed in the infringement proceeding in this
case, viewed objectively, indisputably shows that the question of
equivalence was a close one, particularly insofar as equivalence requires
an intensely factual inquiry. The mere fact that the jury ultimately found
equivalence does not diminish the difficulty of their task, which must be
viewed objectively. Accordingly, the district court was correct to rule on
JMOL that an objectively high likelihood of infringement could not have
been found under Seagate’s first prong.
Id. at 1337 (internal quotation and citation omitted).
In Spine Solutions, the Federal Circuit reversed a district court’s denial of a
defendant’s motion for judgment as a matter of law on the issue of willfulness. See 620
F.3d at 1320. The court cited DePuy in noting that the “‘objective’ prong of Seagate
tends not to be met where an accused infringer relies on a reasonable defense to a charge
14
of infringement.” See id. at 1319 (citing DePuy, 567 F.3d at 1336-37). The court held
that even though sufficient evidence supported the jury’s finding against the defendant
on the issue of obviousness, the defendant had not been objectively reckless in relying
on that defense, as the defendant had “raised a substantial question as to the
obviousness” of the patent. See id. The court further noted that the district court had
expressly stated that the defendant’s obviousness arguments had been “reasonable”. See
id. at 1319-20. Thus, the court concluded that substantial evidence did not support the
jury’s finding that the defendant had “acted despite an objectively high likelihood that
its actions constituted infringement of a valid patent.” See id. at 1320.
Finally, in Uniloc, the court affirmed the district court’s judgment as a matter of
law in favor of the defendant, despite the jury’s verdict in favor of the plaintiff on the
issue of willfulness. See 632 F.3d at 1310. The court applied the following standard:
“If the accused infringer’s position is susceptible to a reasonable conclusion of no
infringement, the first prong of Seagate cannot be met.” Id. (citation omitted).
Applying the standards and reasoning from these cases, the Court concludes that
there was no objectively high likelihood here that Purolite infringed valid claims of the
Patent, and thus that Seagate’s first prong for willfulness has not been satisfied in this
case.
The Court agrees with plaintiffs that Purolite’s construction of the term
“throughout” proved unsupported. The Court concludes, however, that although Purolite
did not ultimately prevail in the jury room, it did present strong and reasonable
arguments concerning the issue of infringement, based on a well-qualified expert’s
15
opinion and testing that permanganate did not reach the center of the beads and thus
could not have formed iron oxide there, as well as on other evidence that the use of a
substoichiometric solution generally produced beads with a distinct whitish core.
Purolite also succeeded in invalidating one independent claim of the Patent, and it
presented credible arguments to the jury, again based on expert testimony, that the other
independent claim and its dependent claims were not enabled and thus were invalid. The
case presented a true battle of well-qualified experts, the issues were intensely factual,
and the jury could reasonably have found in favor of Purolite on either infringement or
invalidity. Viewing the matter objectively, Purolite raised a substantial question as to
its liability. Accordingly, under the Federal Circuit’s standards, Seagate’s objective
prong is not satisfied in this case.5
In light of this ruling, the Court need not consider the application of Seagate’s
subjective prong. See Uniloc, 632 F.3d at 1311; DePuy, 567 F.3d at 1337. The Court
5
Plaintiffs cite i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (Fed. Cir.
2010), in which the Federal Circuit refused to overturn a jury’s verdict of willfulness.
In that case, the court stated that “[t]he fact that Microsoft presented several defenses at
trial, including noninfringement and invalidity, does not mean the jury’s willfulness
finding lacks a sufficient evidentiary basis,” and that “[b]ased on its own assessment of
the evidence and Microsoft’s defenses, the jury was free to decide for itself whether
Microsoft reasonably believed there were any substantial defenses to a claim of
infringement.” See id. at 860. The Court does not find i4i to be as helpful or persuasive
as the other cases cited above, however. In i4i, the court did not indicate that the
defendant’s positions were objectively reasonable or strong, and its analysis generally
focused on the defendant’s state of mind, which may not be considered for purposes of
applying Seagate’s objective prong. Thus, i4i is distinguishable from the present case,
in which Purolite’s strong and reasonable and credible arguments precluded a reasonable
finding of an objectively high likelihood of infringement of a valid patent.
16
grants Purolite’s motion for judgment as a matter of law to this extent, and Purolite is
awarded judgment on plaintiffs’ claim of willful infringement.6
D.
Alternative Motion for a New Trial
In its renewed motion, in the alternative to its motion for judgment as a matter of
law, Purolite moves for a new trial on the issues of noninfringement and willfulness. See
Fed. R. Civ. P. 50(c)(1) (if the court grants a renewed motion for judgment as a matter
of law, it must also conditionally rule on any motion for a new trial).
Purolite first seeks a new trial based on its argument that the jury’s verdicts are
against the great weight of the evidence, for the same reasons argued with respect to its
motion for judgment as a matter of law. A motion for a new trial made on the ground
that the jury’s verdict is against the weight of the evidence is committed to the sound
discretion of the trial court. Veile v. Martinson, 258 F.3d 1180, 1188 (10th Cir. 2001)
(citing Getter v. Wal-Mart Stores, Inc., 66 F.3d 1119, 1125 (10th Cir. 1995)). The
evidence is viewed in the light most favorable to the plaintiff. Macsenti v. Becker, 237
F.3d 1223, 1235 (10th Cir. 2001). The “inquiry focuses on whether the verdict is clearly,
decidedly or overwhelmingly against the weight of the evidence.” Veile, 258 F.3d at
1188 (citing Getter, 66 F.3d at 1125). In assessing the propriety of granting a new trial,
the court must bear in mind that “determining the weight to be given to the testimony,
6
Because the Court has addressed the same issues in ruling on Purolite’s renewed
motion, the Court denies as moot Purolite’s original motion for judgment as a matter of
law and to strike testimony, which Purolite filed at the close of plaintiffs’ case.
17
drawing inferences from the facts established, resolving conflicts in the evidence, and
reaching ultimate conclusions of fact” are functions within the sole province of the jury.
Id. at 1190-91 (quoting Thunder Basin Coal Co. v. Southwestern Pub. Serv. Co., 104
F.3d 1205, 1212 (10th Cir. 1997)).
With respect to the issue of infringement, the Court denies a new trial on this
basis, for the same reasons set forth above. With respect to the issue of willfulness, the
Court concludes that the jury’s verdict was against the great weight of the evidence with
respect to the objective prong of the analysis. Accordingly, the Court conditionally
grants a new trial on that issue, in the event that the Court’s judgment in Purolite’s favor
on that issue is ultimately overturned.
Purolite also seeks a new trial based on the following allegations of trial error by
the Court: “denial of the motion for bifurcation; denial of the motion in limine to
exclude evidence at trial relating to the Agreement; refusal to instruct the jury that
Purolite’s former licensee status is irrelevant to infringement; and admittance of Layne’s
arguments regarding the ‘name change’ from ArsenX to FerrIX.” The Court rejects each
of those bases for a new trial.
The Court denied Purolite’s motion for bifurcation of the trial into infringement
and willfulness/damages phases, which Purolite filed only a few days before trial.
Purolite has not shown how the Court erred and abused its broad discretion in ruling that
a single trial would not be unfair to Purolite. See York v. American Tel. & Tel. Co., 95
F.3d 948, 957 (10th Cir. 1996) (district court possesses broad discretion in deciding
18
whether to bifurcate). Purolite’s only argument consists of its post-hoc reasoning that
in deciding infringement the jury was confused by plaintiffs’ focus on Purolite’s
deceptive acts, which bore only on the issue of willfulness. The Court still believes,
however, that the jury could easily separate the issues of infringement (which turned on
the makeup of the beads) and willfulness, and that a single trial did not unfairly prejudice
Purolite. Thus, the Court denies this basis for a new trial.
In its second basis for a new trial based on trial error, Purolite claims that the
Court erred in “[denying] the motion in limine to exclude evidence at trial relating to the
Agreement.” Purolite made no such motion in limine, however. Purolite sought to
exclude the characterization of Purolite as a “licensee of the patent.” The Court granted
that motion and instructed that the relationship be accurately described at trial. Purolite
has not cited to any specific point in the trial at which that instruction was violated.
Purolite also sought to exclude evidence of its breaches of the Agreement, its use of
“confidential information,” or the injunction ordered by the Court based on Purolite’s
breach of the Agreement between the parties. The Court denied the motion with respect
to “confidential information” and the fact of Purolite’s breaches (as relevant to the issue
of contract damages), but it granted the motion with respect to the injunction and details
about the breaches. Again, Purolite has not cited any instance at trial in which that order
was not followed. Nor has Purolite pointed to any evidence about “confidential
information” or the fact of its breaches that should have been excluded. Again, Purolite
has not shown that the Court committed prejudicial error with respect to any particular
19
evidence or argument, including any evidence or argument to which Purolite objected
at trial.
Purolite did propose the following jury instruction: “Purolite’s prior authorization
under an agreement to use the patented technology is irrelevant to proving patent
infringement.” The Court concluded that there was no danger of the jury’s confusion on
that issue, and it rejected that proposed instruction as unnecessary. The Court now
concludes that it did not commit prejudicial error in so concluding. Purolite has not cited
any authority requiring such an instruction, nor has Purolite explained why the
instruction was necessary for an accurate statement of the law to govern the jury’s
deliberations. Purolite was certainly free to argue to the jury the point asserted in its
proposed instruction.
Finally, Purolite asserts that the Court erred in admitting plaintiffs’ “arguments
regarding the ‘name change’ from ArsenX to FerrIX.” Purolite argues that such
arguments were inflammatory and impugned its character. Such evidence was clearly
relevant to the issue of willfulness, however, and Purolite has again failed to cite to
specific evidence or argument from the trial that the Court admitted over Purolite’s
objection. Accordingly, Purolite has failed to show that the Court committed prejudicial
error entitling it to a new trial.
II.
Plaintiffs’ Motion for a Permanent Injunction
In light of its success in showing infringement of their patent, plaintiffs move for
20
a permanent injunction against Purolite as follows:
restricting Purolite from using any process that infringes claims 1, 7, 10,
11, 12, or 13 of U.S. Patent No. 7,291,578 (the “’578 patent”), including,
but not limited to the process Purolite used to make FerrIX A33E, and
from making, using, offering to sell, or selling any product made by the
processes described in claims 1, 7, 10, 11, 12, and 13 of the ’578 patent,
including, but not limited to, the product previously sold under the name
FerrIX A33E.
In considering this motion, the Court applies the four eBay factors, recently stated by the
Federal Circuit as follows:
Consistent with traditional equitable principles, a patentee seeking
a permanent injunction must make a four-part showing:
(1) that it has suffered an irreparable injury; (2) that remedies
available at law, such as monetary damages, are inadequate to
compensate for that injury; (3) that, considering the balance of
hardships between the plaintiff and the defendant, a remedy in
equity is warranted; and (4) that the public interest would not be
disserved by a permanent injunction.
Robert Bosch LLC v. Pylon Mfg. Corp., 659 F.3d 1142, 1148 (Fed. Cir. 2011) (quoting
eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (2006)). In Robert Bosch, the
court confirmed that in eBay the Supreme Court rejected the Federal Circuit’s prior
presumption of irreparable harm arising from a finding of infringement. See id. at 1149.
The court cautioned, however, that the lack of such a presumption did not mean that a
patentee should not be entitled to an injunction:
Although eBay abolishes our general rule that an injunction
normally will issue when a patent is found to have been valid and
infringed, it does not swing the pendulum in the opposite direction. In
other words, even though a successful patent infringement plaintiff can no
longer rely on presumptions or other short-cuts to support a request for a
permanent injunction, it does not follow that courts should entirely ignore
21
the fundamental nature of patents as property rights granting the owner the
right to exclude. Indeed, this right has its roots in the Constitution, as the
Intellectual Property Clause of the Constitution itself refers to inventors’
“exclusive Right to their respective . . . Discoveries.” Although the
Supreme Court disapproved of this court’s absolute reliance on the
patentee’s right to exclude as a basis for our prior rule favoring
injunctions, that does not mean that the nature of patent rights has no place
in the appropriate equitable analysis. While the patentee’s right to exclude
alone cannot justify an injunction, it should not be ignored either.
The abolition of categorical rules and the district court’s inherent
discretion to fashion equitable relief, moreover, also do not mandate that
district courts must act on a clean slate. Discretion is not whim, and
limiting discretion according to legal standards helps promote the basic
principle of justice that like cases should be decided alike. In this area, as
others, a page of history is worth a volume of logic when it comes to
discerning and applying those standards. This wisdom is particularly apt
in traditional cases, such as this, where the patentee and adjudged infringer
both practice the patented technology.
See id. at 1149-50 (citations and internal quotations omitted).
Thus, the Court first considers whether plaintiffs suffered an irreparable injury
that cannot be adequately compensated by remedies at law such as monetary damages.7
Owen Boyd, Layne’s general manager, testified at trial (outside the presence of the jury)
that monetary damages would not fully compensate Layne for the harm it has suffered
from Purolite’s infringement; that such harm would increase without an injunction; that
7
Plaintiffs argue that Purolite has conceded these elements by failing to oppose
at the summary judgment stage plaintiffs’ request for an injunction for breach of the
parties’ agreement. The Court rejects this argument. In its summary judgment order, the
Court noted that Purolite had not addressed the remedy of the injunction in opposing
summary judgment on plaintiffs’ claim for breach of contract. The Court does not deem
Purolite to have waived the right to oppose entry of a different injunction later in the
case.
22
Layne had lost business from customers that purchased Purolite’s product, FerrIX,
instead of ArsenX and Layne’s other products; and that Purolite’s infringement had
caused confusion within a close-knit market and among regulators.
Purolite argues that Mr. Boyd failed to state specifically that Layne practiced the
Patent, and it argues that plaintiffs therefore failed to provide any evidence that Layne
had commercialized the Patent. Purolite cites to MercExchange, L.L.C. v. eBay, Inc.,
500 F. Supp. 2d 556 (E.D. Va. 2007) (on remand from Supreme Court’s eBay decision),
in which the court held that irreparable harm had not been shown in part because the
patentee had consistently licensed the patent instead of engaging in commercial activity
in practicing the patent. See id. at 570-71; see also High Tech Medical Instrumentation,
Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1556 (Fed. Cir. 1995) (“Although a
patentee’s failure to practice an invention does not necessarily defeat the patentee’s
claim of irreparable harm, the lack of commercial activity by the patentee is a significant
factor in the calculus.”) (cited in MercExchange).
MercExchange is inapposite,
however, as the Court finds, based on the testimony of Mr. Boyd, that Layne does
engage in commercial activity with which Purolite’s infringing product would directly
compete, and for which Layne pays royalties to Dr. SenGupta, the owner of the Patent.
Thus there is no similar evidence in this case that Layne has consistently chosen to
license the patent instead of engaging in commercial activity itself.
Purolite next argues a lack of evidence, based on Mr. Boyd’s concession that he
did not have any “evidence” on hand to support his testimony. Clearly, however, Mr.
23
Boyd was referring to documents and other supporting evidence; his own testimony
constitutes evidence in support of a finding of irreparable harm. The Court also rejects
Purolite’s argument that Mr. Boyd provided evidence only of monetary damages, as Mr.
Boyd also testified to lost business generally (including regeneration business) and
confusion in the market and with regulators. Purolite also argues that plaintiffs refused
to provide discovery concerning Layne’s own sales of competing products, and that
plaintiffs therefore should not be permitted to offer evidence of harm to Layne’s
business. The time to complain about a refusal to provide discovery has long since
passed, however, and Purolite failed to object to Mr. Boyd’s testimony at trial.
Accordingly, the Court will consider that testimony.
Purolite also takes issue with a declaration by Dr. SenGupta submitted by
plaintiffs in support of their motion, in which Dr. SenGupta stated that he would suffer
irreparable harm from continued infringement by Purolite; that his royalties from owning
the Patent fund his research and his efforts to bring clean water to impoverished areas
in India; and that money damages alone would not be sufficient to remedy the harm from
Purolite’s infringement. Purolite questions whether Dr. SenGupta has standing to weigh
in on this issue because only Layne has the right to enforce the Patent. Dr. SenGupta
was added as a party to this case at the request of Purolite, however, and he retains rights
relating to the Patent. Thus, harm to him would be relevant to the Court’s consideration.
Purolite also seeks to strike Dr. SenGupta’s statements concerning irreparable
harm and the inadequacy of money damages, on the basis that such conclusory
24
statements lack any factual support. Dr. SenGupta did offer the factual statement
concerning his use of royalties, and Mr. Boyd testified that Layne pays Dr. SenGupta
royalties on its sales; thus, the Court recognizes plaintiffs’ argument that a loss of
business for Layne resulting from Purolite’s infringement also affects Dr. SenGupta. For
that reason, the Court denies the motion to strike the portions of Dr. SenGupta’s
declaration. The Court does agree with Purolite, however, that the sparse declaration is
not especially helpful to the Court’s analysis.
Finally, Purolite argues that any infringement could be adequately remedied by
money damages in the form of royalties, as plaintiffs have demonstrated a willingness
to license the patent. As noted above, however, Layne does sell its own products with
which any infringing products would compete, and it also provided unrebutted evidence
from Mr. Boyd, whom the Court found credible, that Layne suffered harm in the form
of confusion in the market and with regulators.
Thus, the Court concludes, based on Mr. Boyd’s testimony, that plaintiffs have
shown that they have suffered an irreparable injury from Purolite’s infringing activity
that cannot be adequately compensated by remedies at law such as monetary damages.
See Robert Bosch, 659 F.3d at 1155 (concluding that the patentee would continue to
suffer irreparable harm from lost market share, lost business opportunities, and price
erosion without an injunction, and that there was no reason to believe that the defendant
would stop infringing or that those irreparable harms would otherwise cease).
With respect to the third eBay factor, the Court concludes that the balance of
25
hardships between the parties weighs in favor of an injunction. The Court noted above
the importance of a patentee’s right to exclude that the Federal Circuit emphasized in
Robert Bosch. Plaintiffs also point out that Purolite is the world’s second-largest
producer of ion exchange resins, and Purolite concedes that FerrIX generated only a
small percentage of its overall revenue. Purolite points to its $1,500,000 investment in
this product, and it argues that “it would be an unfair hardship to lose its entire
investment simply because one day Layne decided that it did not want to license Purolite
any longer.” Purolite did realize a return on that investment through its sales of FerrIX
for a number of years, however, and Layne had the right to terminate the license. The
Court weighs this factor in favor of plaintiffs.
Finally, Purolite argues that, based on Dr. SenGupta’s declaration, the public
interest in clean water in India is best served by allowing any infringement to be
remedied by the payment of royalties and not by an injunction. The Court rejects that
argument, as Dr. SenGupta would lose royalties from Layne if an infringing product
were allowed to compete, and at any rate, Dr. SenGupta has obviously decided that his
work for clean water in India would be furthered and not be hindered by an injunction.
On the other hand, the public has an interest in furthering a patentee’s right to exclude.
Accordingly, the Court concludes that the public interest would not be disserved by a
permanent injunction.
Plaintiffs’ request for an injunction is not supported only by the infringement
verdict, but is also properly supported by credible evidence presented to the Court. The
26
four eBay factors weigh in favor of a permanent injunction in this case, especially in
light of the Federal Circuit’s view that an injunction remains appropriate in a traditional
case in which both parties practice the patented technology, such as the present case. See
Robert Bosch, 659 F.3d at 1150. Purolite has not taken issue with the particular terms
or language of the injunction requested by plaintiffs. Accordingly, the Court grants
plaintiffs’ motion, and it hereby issues a permanent injunction against Purolite as
requested by plaintiffs.
III.
Plaintiffs’ Motion for Enhanced Damages and Attorney Fees8
A.
Enhanced Damages
Plaintiffs seek enhanced damages of three times the damages found by the jury,
pursuant to 35 U.S.C. § 284. Willful infringement is a prerequisite for an award of
enhanced damages, however, and because the Court has awarded judgment to Purolite
on plaintiffs’ claim of willful infringement, plaintiffs may not recover enhanced
damages. See DePuy, 567 F.3d at 1337. Accordingly, plaintiffs’ motion for enhanced
8
At the close of trial, the Court set specific deadlines for plaintiffs’ motion for
enhanced damages and for Purolite’s response to that motion. Purolite has now moved
to strike plaintiffs’ reply brief in support of their motion for enhanced damages and
attorney fees, on the basis that the Court did not expressly authorize a reply brief. The
Court denies this motion. First, the Court’s deadlines applied only to a motion for
enhanced damages; thus, there is no basis to strike the portion of plaintiffs’ reply
addressed to attorney fees. Second, the local rules expressly provide that the moving
party may file and serve a reply brief, see D. Kan. Rule 7.1(c), and the Court did not
intend to override that rule and prohibit a reply brief in this instance.
27
damages is denied.
28
B.
Attorney Fees
Plaintiffs also seek an award of their attorney fees in the amount of $2,587,701.20
and their expenses in the amount of $149,415.26, pursuant to 35 U.S.C. § 285. Section
285 provides: “The court in exceptional cases may award reasonable attorney fees to the
prevailing party.” Id.
When deciding whether to award attorney fees under § 285, a
district court engages in a two-step inquiry. First, the court must
determine whether the prevailing party has proved by clear and convincing
evidence that the case is exceptional. . . . If the district court finds that the
case is exceptional, it must then determine whether an award of attorney
fees is justified.
MarcTec, LLC v. Johnson & Johnson, 664 F.3d 907, 915-16 (Fed. Cir. 2012) (citations
omitted). “A case may be deemed exceptional under § 285 where there has been willful
infringement, fraud or inequitable conduct in procuring the patent, misconduct during
litigation, vexatious or unjustified litigation, conduct that violates Federal Rule of Civil
Procedure 11, or like infractions.” Id. at 916 (internal quotation and citation omitted).
Plaintiffs first argue that the present case is exceptional for purposes of Section
285 because of Purolite’s willful infringement. The Court’s judgment in Purolite’s favor
on plaintiffs’ claim of willful infringement disposes of that argument.
Plaintiffs also argue that the case is exceptional because of Purolite’s vexatious
and unjustified conduct throughout the litigation. Plaintiffs have listed 28 acts by
Purolite that plaintiffs argue constitute vexatious litigation conduct. Purolite responds
that its conduct amounts merely to a vigorous defense of the patent claims and did not
29
rise to the level of vexatious conduct.
The Court expressed its concern and dismay on more than one occasion during
the course of this case that each side’s counsel were not acting with the civility and
cooperation that the Court would hope to see, and the conduct of both sides and their
counsel no doubt contributed in some manner to the protracted and contentious nature
of the litigation between the parties. The Court cannot conclude, however, that the
conduct by either side rose to the level of vexatious and unjustified litigation for
purposes of applying Section 285. Accordingly, the Court concludes that plaintiffs have
failed to show by clear and convincing evidence that Purolite’s conduct in litigation
made this case exceptional as required for an award of fees and expenses.
With respect to the particular conduct alleged by plaintiffs, the Court generally
agrees with Purolite’s responses to plaintiffs’ 28 examples. The Court addresses those
examples as follows (the numbers correspond to the order in which the examples were
listed by plaintiffs):
Item 1. Plaintiffs complain that Purolite should have admitted earlier in the
litigation, as it did at trial, that the first version of Purolite’s product FerrIX was identical
to Purolite’s last version of ArsenX. Plaintiffs point to a number of their factual
statements at the summary judgment stage that Purolite attempted to controvert. In its
summary judgment briefs, however, Purolite conceded that only a name change occurred
when FerrIX was first introduced, and the Court relied on that concession in granting
plaintiffs summary judgment on one contract claim. Moreover, although plaintiffs
30
complain about increased costs from this alleged refusal to make such an admission,
plaintiffs already had accumulated their evidence on the issue at the time of the summary
judgment briefing. Plaintiffs have not provided any examples of a specious denial of this
fact by Purolite prior to summary judgment. Thus, the Court cannot conclude that
Purolite improperly increased the amount of litigation by its statements on this issue.
Items Relating to Discovery. Plaintiffs complain about various conduct by
Purolite during the course of discovery, but plaintiffs have failed to show that Purolite
vexatiously increased litigation by those acts. The number of document requests ( items
2 and 3) or requests for admission (4) or third-party subpoenas (5) does not show
misconduct by itself, and in fact the Court denied plaintiffs’ motion for a protective order
based on the number of requests for admission (4). The fact that Purolite used only one
produced document at trial does not mean that the requests were improper. (For
instance, only a few of the total issues in the case were tried, and plaintiffs had already
introduced a number of exhibits.) Any objections to Purolite’s discovery responses or
requests—including complaints about the method of production of e-mails (8), the
failure to produce invoices (14), Purolite’s objections to requests for admission (15), and
allegedly identical requests by Purolite after entry of a protective order (17)—should
have been made by motion to compel or motion for protective order at the time of the
request.9 Plaintiffs complain about Purolite’s refusal to admit certain facts upon requests
9
The fact that plaintiffs did not seek relief from the Court at the time does not
(continued...)
31
for admission (4), but Purolite’s denials were based on their objections, which, again,
should have been challenged by motion at that time. The fact that Purolite requested
sanctions against plaintiffs eleven times (6) does not show misconduct, as those requests
generally accompanied arguments on discovery motions, and such requests are not
atypical in a complex civil case. See, e.g., Fed. R. Civ. P. 37(a)(5) (providing for award
of expenses relating to discovery motions). The parties dispute whether Purolite
interfered with compliance with a third-party subpoena (18), and the Court is not
persuaded that Purolite engaged in misconduct or filed a false declaration. The Court
does not find the service of deposition notices without conferral (20) necessarily to
constitute misconduct without a showing that Purolite actually refused to confer on the
dates that the depositions were conducted. Service of a third-party deposition subpoena
without notice to plaintiff on a single occasion (21) (Purolite insists that the mistake was
inadvertent) does not constitute vexatious litigation. Finally, the Court does not find
deposition testimony by Jacob Brodie, in which Mr. Brodie stated that he could not state
that certain sales figures were accurate without checking them against the computer data
even though he had compiled those figures (13), to represent vexatious conduct;
9
(...continued)
necessarily preclude a finding that Purolite’s requests or responses were improper.
Nevertheless, plaintiffs are required to show an exceptional case by clear and convincing
evidence, and the fact that plaintiffs did not seek relief (especially since neither party has
been shy about fully litigating every dispute) at least raises the reasonable inference
either that Purolite’s positions were justified or that plaintiffs suffered little or no
prejudice from those positions.
32
moreover, any challenge to such testimony should have been made at that time.
Item 7. Plaintiffs’ overreaching is best demonstrated by its listing of Purolite’s
five motions for leave to file a sur-reply as an example of vexatious conduct. The mere
fact that Purolite filed such motions certainly does not show misconduct—as plaintiffs
would have to agree, as plaintiffs filed at least three such motions themselves.10 Indeed,
as Purolite points out, the filing of so many motions for leave to file a sur-reply gives rise
perhaps to a stronger inference that plaintiffs consistently included new material in their
reply briefs.
Item 9. Similarly, the Court is not impressed by the fact that Purolite’s summary
judgment briefs totaled more than 400 pages. Lengthy briefs, by themselves, do not rise
to the level of misconduct. Purolite filed only one summary judgment motion while
responding to three such motions from plaintiffs (whose briefs exceeded 300 pages in
total), and the motions raised a large number of issues, some of them complex.
Moreover, plaintiffs have misrepresented the Court’s rulings in stating that Purolite was
“wholly unsuccessful [at summary judgment] save for one limited issue.” In fact, as
Purolite points out, it prevailed on a number of issues. Purolite was awarded summary
judgment on its own claim for the invalidity of Claim 15 of the Patent; and on plaintiffs’
10
No doubt in an attempt to insulate themselves from a comparison of their
conduct with that of Purolite, plaintiffs argue that their own litigation conduct is
irrelevant to this inquiry. Plaintiffs have argued, however, that Purolite’s conduct has
unnecessarily increased the amount of litigation, and the Court must examine plaintiffs’
own litigation conduct in order to evaluate whether the protracted nature of these
proceedings is more appropriately attributed to Purolite’s conduct.
33
claims based on one theory for breach of the parties’ agreement, on marking estoppel,
on indirect infringement, and on the doctrine of equivalents. Purolite also succeeded in
preventing summary judgment on the issue of damages on Layne’s claim for unpaid
royalties, on plaintiff’s claim for infringement of Claim 1, and on Purolite’s invalidity
defenses with respect to Claim 1. The Court does not find Purolite’s summary judgment
briefs to have been improperly excessive.
Items Relating to Purolite’s Claims and Motion to Dismiss. The Court finds that
Purolite did not engage in misconduct by asserting its counterclaims (10, 11, 12).
Plaintiffs have not persuaded the Court that those claims were frivolous. Purolite
withdrew its unfair competition claim at the summary judgment stage, and plaintiffs have
not demonstrated that they suffered any significant additional costs from the assertion
of that claim. The Court also finds that Purolite’s motion to dismiss based on standing
(22) was not frivolous. The Court did not “summarily den[y]” this motion, as plaintiffs
have stated; rather, the Court issued a summary written order reflecting its denial of the
motion, which denial it had fully explained on the record of a hearing conducted on the
motion. Moreover, as Purolite notes, the document produced by plaintiffs in opposing
the motion ultimately supported Purolite’s successful argument at summary judgment
that plaintiffs lacked standing to assert a claim for breach of the parties’ agreement based
on breach of a second agreement.
Items Relating to Conduct at Trial. The Court is not persuaded that Purolite’s
conduct at trial, including with respect to notifying plaintiffs about whether witnesses
34
would appear live (23), rose to the level of vexatious misconduct. The Court was not
offended by Purolite’s use of the Stack declaration at trial (26), and the Court is not
convinced that Purolite suborned perjury from Mr. Begg or Ms. Riddle (27).
Item 25. The Court is not persuaded that Purolite engaged in misconduct in
refusing to admit liability for unpaid royalties. At summary judgment Purolite asserted
a defense of prior material breach, and plaintiffs have not shown that they suffered any
real prejudice in Purolite’s delay in agreeing to the amount of those damages. The Court
also notes that Purolite was forced to assert a similar claim against plaintiffs for failure
to pay for shipments of product.
Item 28. Purolite’s notice of appeal from the Court’s summary judgment order
may or may not prove premature, but the fact that Purolite intends to continue litigation
of this case in the Tenth Circuit does not necessarily constitute conduct that exceeds a
properly vigorous litigation strategy.
Items Relating to Improper Conduct by Purolite. The Court does agrees that
Purolite did act improperly in at least a few instances during the litigation of this case.
For example, Purolite improperly instructed its witness not to answer questions about
certain criminal convictions (16), took a deposition without providing proper notice to
plaintiffs (19), and filed a motion to alter or amend the Court’s summary judgment order
on the eve of trial that the Court viewed as a delay tactic (24). The Court has already
considered the appropriate sanctions in the first two examples, however, and plaintiffs
suffered no prejudice from the motion to alter or amend, as the Court denied that motion
35
the next day. The Court does not find these instances to rise to the level of vexatious
conduct in the course of this litigation for purposes of Section 285.
In summary, the Court is not persuaded that Purolite’s conduct was intended
solely to increase plaintiffs’ burden in litigating this case, as plaintiffs contend. In the
Court’s view, the “scorched-earth” tactics were not limited solely to Purolite, as each
side made it a consistent practice to challenge fully every action and position taken by
the other side. The Court does not find that Purolite’s conduct as a whole exceeded a
vigorous litigation of the parties’ claims and defenses. Accordingly, the Court finds that
Purolite has not engaged in misconduct or in vexatious or unjustified litigation, and the
Court concludes that plaintiffs have not shown by clear and convincing evidence that this
case is exceptional for purposes of Section 285.
The Court denies plaintiffs’ request for fees and expenses on other grounds as
well. For instance, plaintiffs have utterly failed to support their claim for reasonable fees
and expenses incurred in litigating the patent claims. In support of this claim, plaintiffs
have provided only a declaration from Layne’s general counsel stating that plaintiffs
incurred $2,587,701.20 in attorney fees and $149,415.26 in costs in this case; that
supporting documentation is available upon request; that attorneys worked 7,422.4 hours
on this case at an average rate of $328 per hour; that support staff worked 1,055.3 hours
on this case at an average rate of $145.49 per hour; and that the time spent, hourly rates,
and total fees and expenses incurred were reasonable. Plaintiffs did not provide copies
of the billing statements, or even a breakdown of the attorneys and support personnel
36
with their qualifications and hourly rates.
Thus, the Court cannot calculate an
appropriate lodestar figure, or otherwise analyze the reasonableness of plaintiffs’ claim,
as it is wholly unable to judge whether the hours worked or the hourly rates charged
were reasonable. In addition, and most significantly, this case involved substantial
litigation of claims other than the parties’ patent claims, and plaintiffs have made no
attempt to determine the reasonable fees and expenses incurred with respect to the patent
claims only, for which Section 285 provides a basis for recovery. See Gjerlov v.
Schuyler Labs., Inc., 131 F.3d 1016, 1025 (Fed. Cir. 1997) (“When an action embraces
both patent and non-patent claims, no fees under section 285 can be awarded for time
incurred in litigation of non-patent issues.”) (quoting Machinery Corp. of Am. v.
Gullfiber AB, 774 F.2d 467, 475 (Fed. Cir. 1985)).
In their reply brief, plaintiffs address this deficiency by stating as follows:
At this stage, plaintiffs have asked this Court for a determination that the
Court will award fees and Plaintiffs have provided preliminary evidence
of those fees. If the Court determines that it will award fees, but needs
more evidence to determine the amount of fees, plaintiffs are happy to
submit whatever further evidence and follow any additional process the
Court would like.
It is clear, however, that plaintiffs sought more than a mere determination of liability for
fees in its initial motion and memorandum. For instance, plaintiffs sought awards of
their fees and expenses in specific amounts, representing the full amount of their fees and
expenses incurred; they submitted a declaration stating that those fees and expenses were
reasonable; they argued that the Court should award them the full amount of fees and
37
expenses in undertaking the second step in the two-step analysis set forth above; and
they argued that such an award would not be an abuse of discretion and would be
consistent with controlling precedent. With respect to the amount requested, plaintiffs
argued that Purolite must have spent even more than plaintiffs and thus should not be in
a position to question plaintiffs’ costs. Thus, the Court cannot agree that plaintiffs
intended all along to address the amount of its request in a subsequent proceeding.11 In
seeking and arguing for a specific award, plaintiffs were obliged to support that request
with proper and sufficient evidence. Plaintiffs’ failure to do so provides another basis
for denying plaintiffs’ request for fees and expenses.
Finally, plaintiffs have failed to comply with the required procedure set out in D.
Kan. Rule 54.2. That rule provides for a motion for statutory attorney fees, then
promptly-initiated consultation with the opposing party, and then the filing of a
memorandum with the factual basis for the motion. See id. The rule expressly provides
that the court may not consider a motion for fees until the moving party has filed a
statement of compliance with the consultation requirement. In this case, plaintiffs filed
their motion and supporting memorandum simultaneously, without a statement or any
other suggestion of a consultation with Purolite. Indeed, even after Purolite pointed out
this defect in its response brief, plaintiffs refused to cure that defect or even to address
11
Plaintiffs’ arguments that Purolite engaged in conduct that increased the amount
and costs of litigation and that Purolite should therefore be punished for that conduct are
undermined by this disingenuous explanation that it intended a protracted, two-phase
proceeding all along.
38
the local rule in their reply brief. Therefore, plaintiffs’ motion is properly denied for that
reason as well.
Accordingly, the Court denies plaintiffs’ motion for an award of attorney and fees
and expenses.
IT IS THEREFORE ORDERED BY THE COURT THAT defendant Purolite’s
renewed motion for judgment as a matter of law and to strike testimony (Doc. # 698) is
denied in part and granted in part. The motion to strike testimony is denied. The
motion for judgment as a matter of law is denied with respect to the issue of
infringement. The motion for judgment as a matter of law is granted with respect to the
issue of willfulness, and judgment is awarded to Purolite on that claim. The alternative
motion for a new trial is denied, except that if the Court’s judgment in favor of Purolite
on the issue of willfulness were overturned, it would order a new trial on that issue on
the basis that the jury’s verdict was against the great weight of the evidence.
IT IS FURTHER ORDERED BY THE COURT THAT Purolite’s original motion
for judgment as a matter of law and to strike testimony (Doc. # 666) is denied as moot.
IT IS FURTHER ORDERED THAT plaintiffs’ motion for a permanent injunction
(Doc. # 710) is granted. Purolite is hereby permanently enjoined from using its process
for the manufacture of its product FerrIX A33E or any other process that infringes
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Claims 1, 7, 10, 11, 12, or 13 of U.S. Patent No. 7,291,578, and from making, using,
offering to sell, or selling FerrIX A33E or any other product made by the processes
described in those Claims of the Patent.
IT IS FURTHER ORDERED THAT Purolite’s motion to strike a portion of a
supporting affidavit by Dr. SenGupta (Doc. # 717) is denied.
IT IS FURTHER ORDERED THAT plaintiffs’ motion for enhanced damages and
attorney fees (Doc. # 680) is denied.
IT IS FURTHER ORDERED THAT Purolite’s motion to strike plaintiffs’ reply
brief (Doc. # 701) is denied.
IT IS SO ORDERED.
Dated this 16th day of May, 2012, in Kansas City, Kansas.
s/ John W. Lungstrum
John W. Lungstrum
United States District Judge
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