Exmark Manufacturing Company Inc. v. Briggs & Stratton Power Product Group

Filing 564

ORDER - This matter is before the court on its own motion. Several motions in limine involve the issue of relevance of several categories of evidence (testimony regarding equitable defenses, claims of privilege, rejected defenses of invalidity an d noninfringement, and prior art) to the issue of willfulness. In order to clarify the record, the court finds a ruling as a matter of law on the objective prong of the willfulness inquiry is necessary. Accordingly, the court finds as a matter of l aw that Briggs acted despite an objectively high likelihood that its actions constituted infringement of a valid patent. The evidence presented in connection with the summary judgment motions also establishes that Briggs's defenses, and any r eliance thereon, were not reasonable. The court finds as a matter of law that no reasonable litigant could realistically expect those defenses to succeed. Notably, Briggs has asserted attorney-client privilege with respect to the details of its la wyers' involvement and advice in connection with the issue of infringement of the redesigned mowers and it does not rely on advice of counsel in defense of the willfulness allegations in connection with the original designs. It cannot credibl y argue that it relied on reasonable defenses to infringement. The issue of Briggs's subjective state-of-mindwhether the objectively-defined risk "was either known or so obvious that it should have been known to the accused infringer" remains for determination by the jury. IT IS SO ORDERED.Ordered by Senior Judge Joseph F. Bataillon. (TCL )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
EXMARK MANUFACTURING COMPANY
INC.,
8:10CV187
Plaintiff,
v.

ORDER

BRIGGS & STRATTON POWER
PRODUCTS GROUP, LLC,
Defendant.

This matter is before the court on its own motion. Several motions in limine involve
the issue of relevance of several categories of evidence (testimony regarding equitable
defenses, claims of privilege, rejected defenses of invalidity and noninfringement, and prior
art) to the issue of willfulness. In order to clarify the record, the court finds a ruling as a
matter of law on the objective prong of the willfulness inquiry is necessary. See In re
Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc)).
In its order on summary judgment motions, the court found defendant Briggs
infringed the patent at issue with respect to mowers with the original designs (versions 1-4),
but that there were genuine issues of material fact on the issue of the willfulness. Filing No.
476, Memorandum and Order at 27-30. Further, the court rejected Briggs's defenses of
invalidity based on indefiniteness, laches, waiver, implied waiver and unclean hands. Id. at
2, 29-30.
The determination of willful infringement involves two distinct analyses.

In re

Seagate Tech., LLC, 497 F.3d at 1371. With respect to the first “objective prong” of the
analysis, the court must determine as a matter of law whether “the infringer acted despite
an objectively high likelihood that its actions constituted infringement of a valid patent.”

Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., 776 F.3d 837, 844 (Fed. Cir. 2015)
(quoting In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc));
Carnegie Mellon Univ. v. Marvell Tech. Group, No. 14-1492, 2015 U.S. App. LEXIS 13622,
at *36 (Fed. Cir. Aug. 4, 2015). “The state of mind of the accused infringer is not relevant to
this objective inquiry.” Id. With respect to the second “subjective prong” of the analysis, the
jury must make a factual determination of whether the objectively-defined risk “was either
known or so obvious that it should have been known to the accused infringer.” Id.
"[G]enerally the 'objective' prong of Seagate tends not to be met where an accused
infringer relies on a reasonable defense to a charge of infringement." Bard Peripheral
Vascular, Inc. v. W.L. Gore & Assocs., 682 F.3d 1003, 1005 (Fed. Cir. 2012)(citations
omitted). The issue for the court is "whether a defense or noninfringement theory was
'reasonable.'" Id. at 1006. The court should determine, “based on the record ultimately
made in the infringement proceedings,” whether a “reasonable litigant could realistically
expect” those defenses to succeed.

Id.

"The ultimate legal question of whether a

reasonable person would have considered there to be a high likelihood of infringement of a
valid patent should always be decided as a matter of law by the judge." Id. at 1007.
The court finds there is clear and convincing evidence in the record on the
infringement proceedings with respect to Briggs's modified designs (version 1-4) that shows
there was an objectively high likelihood that Briggs's manufacture and sale of mowers
having the original baffle design would infringe Exmark's patent. See generally Filing Nos.
391-393, Indices of Evidence. Specifically, the president of Briggs’ predecessor in interest,
Ferris Industries, was deposed in the Scag case in 2002. Filing No. 392-20, Ex. 32, Wenzel
Dep. Tr. (Scag) at 32-33, 62. The Scag case settled shortly before trial in 2003. Filing No.
391-11, Ex. 26, Scag Settlement Agreement. There is strong evidence that Briggs was
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aware of the ʼ863 patent at least as a result of the 2002 deposition. Filing No. 317-24,
Briggs Interrogatory Responses at 6-7; Filing No. 317-14, Wenzel Dep. Tr. at 125. This and
other evidence unequivocally establishes that Briggs proceeded in the face of an objective
likelihood of infringement of the ‘863 patent. See also Filing No. 394, Exmark brief at 23-28
and evidence cited therein. Accordingly, the court finds as a matter of law that Briggs acted
despite an objectively high likelihood that its actions constituted infringement of a valid
patent.
The evidence presented in connection with the summary judgment motions also
establishes that Briggs's defenses, and any reliance thereon, were not reasonable. The
court finds as a matter of law that no reasonable litigant could realistically expect those
defenses to succeed. Notably, Briggs has asserted attorney-client privilege with respect to
the details of its lawyers' involvement and advice in connection with the issue of
infringement of the redesigned mowers and it does not rely on advice of counsel in defense
of the willfulness allegations in connection with the original designs. It cannot credibly
argue that it relied on reasonable defenses to infringement. The issue of Briggs's subjective
state-of-mind—whether the objectively-defined risk “was either known or so obvious that it
should have been known to the accused infringer” remains for determination by the jury.
IT IS SO ORDERED.

Dated this 4th day of September, 2015
BY THE COURT:
s/ Joseph F. Bataillon
Senior United States District Judge

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