CARNEGIE MELLON UNIVERSITY v. MARVELL TECHNOLOGY GROUP, LTD. et al

Filing 601

MEMORANDUM ORDER denying 485 Defendant Marvell Technology Group's (Marvell) Motion in Limine No. D3 Re: Precluding CMU from Introducing Evidence of Willfulness; Marvell's motion (Docket No. 485) is DENIED without prejudice, with the Co urt to reserve its ruling on the issue of willfulness until the parties have had an opportunity to present their evidence at trial. Counsel for the parties are HEREBY ORDERED to provide joint interrogatories and jury instructions to this end on or before November 9, 2012 at 5:00 p.m. Signed by Judge Nora Barry Fischer on 11/2/12. (lks)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF PENNSYLVANIA
CARNEGIE MELLON UNIVERSITY,

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Plaintiff,
vs.
MARVELL TECHNOLOGY GROUP, LTD.
et al.,
Defendants.

Civil Action No. 09-290
Judge Nora Barry Fischer

MEMORANDUM ORDER
This patent infringement action is set to commence jury selection and trial on November
26, 2012. The parties have filed a number of motions in limine seeking pretrial rulings on the
admissibility of certain evidence at trial. Presently pending before the Court is Defendant
Marvell Technology Group’s (“Marvell”) “Motion in Limine No. D3 Re: Precluding CMU from
Introducing Evidence of Willfulness” (Docket No. 485).

Marvell argues that because CMU

cannot meet its burden on the objective recklessness prong of willful infringement under Bard
Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003, 1006-08 (Fed. Circ.
2012) the Court should not put the issue of willfulness to the jury. (Docket No. 486). Plaintiff
Carnegie Mellon University (“CMU”) opposes this Motion, arguing they can meet the objective
prong of willfulness with their proof of Marvell’s pre- and post-litigation activity. (Docket No.
562). The Court heard argument on the Motion during its hearing on October 17 and 18, 2012.
(Docket Nos. 579, 590, 591). For the following reasons, Marvell’s motion [485] is DENIED
without prejudice, with the Court to reserve its ruling on the issue of willfulness until the parties
have had an opportunity to present their evidence at trial.

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This is a patent infringement action in which CMU alleges that Marvell has infringed two
of its patents, U.S. Patent Nos. 6,201,839 (the “‘839 Patent”) and 6,438,180 (the “‘180 Patent”)
(collectively, the “CMU Patents”).

The patents-in-suit are generally directed to sequence

detection in high density magnetic recording devices, and more specifically, to high density
magnetic recording sequence detectors. See ‘839 Patent 1:20-23. Both patents claim priority to
a May 9, 1997 provisional application. See ‘839 Patent; ‘180 Patent. The ‘180 Patent is a
continuation-in-part of the ‘839 Patent. See ‘180 Patent. CMU intends to prove that Marvell’s
infringement was willful. (Docket No. 461)
In this Motion, Marvell seeks to preclude CMU from introducing evidence of willful
infringement to the jury. (Docket No. 486 at 1). Under Bard, they argue CMU must prove that
“all of a defendant’s defenses are objectively baseless, such that no reasonable litigant could
realistically expect to succeed on them” before consideration of the defendant’s subjective intent.
(Id.)(quoting Bard 682 F.3d at 1007). Marvell argues it is impossible for CMU to prove this,
given that the objective prong is a matter of law to be decided by the Court, and the Court has
already ruled that summary judgment on invalidity was a “close call”. (Id. at 4). Marvell argues
that since the Court has already recognized implicitly the reasonableness of the Defendant’s
defense, there is no need to wait until after a jury trial for the Court to rule on willfulness. (Id. at
5).
CMU argues first that Marvell’s Motion in Limine is an improper, untimely Motion for
Summary Judgment. (Docket No. 562). Second, they argue that the objective determination of
willfulness should be based on Marvell’s pre-litigation conduct, of which they will offer
sufficient evidence at trial. (Id. at 2-3). Third, CMU argues even if Marvell’s post litigation

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defenses are considered, these defenses do not as a matter of law foreclose on CMU’s willfulness
argument, and should be decided at trial. (Id. at 3-5).
To establish willful infringement, a patentee must first “‘show by clear and convincing
evidence that the infringer acted despite an objectively high likelihood that its actions constituted
infringement of a valid patent.” Bard 682 F.3d at 1005 (quoting In re Seagate Technology LLC,
497 F.3d 1360, 1368-71 (Fed. Cir. 2007)(en banc). Then once the “threshold objective standard
is satisfied, the patentee must also demonstrate that this objectively-defined risk ... was either
known or so obvious that it should have been known to the accused infringer.” Id.
“In considering the objective prong of Seagate, the judge may, when the defense is a
question of fact or a mixed question of law and fact, allow the jury to determine the underlying
facts relevant to the defense in the first instance, for example, the questions of anticipation or
obviousness.” Bard, 682 F.3d at 1008. Bard contemplates a decision on the objective prong
after the jury has deliberated on other aspects of willfulness. Cook Inc. v. Endologix, Inc., 1:09CV-01248-TWP, 2012 WL 3779198 (S.D. Ind. Aug. 30, 2012). Instances of mixed questions of
law and fact can be handled by submitting “special interrogatories to the jury on the disputes of
fact, while reserving for [the Court] the ultimate question of law”.

Koninklijke Philips

Electronics N.V. v. Cinram Int'l, Inc., CIV.A. 08-0515, 2012 WL 4074419 at *5 (S.D.N.Y. Aug.
23, 2012).
The Court finds that there are “mixed questions of law and fact” in regards to Marvell’s
defenses, insofar as the jury should be presented the evidence to “determine the underlying facts
relevant to the defense[s]” before this Court rules on the objectiveness prong of willful
infringement. Marvell presses forward with this Motion, despite the fact that Marvell declined

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the Court’s invitation to bifurcate this case.1 Therefore, the Court finds the procedure adopted in
Sargent Manufacturing Co. v. Cal-Royal Products, Inc. persuasive, wherein the Court would
present any questions of fact related to objective recklessness of willful infringement to the jury
in the form of interrogatories and after the jury has answered the interrogatories, the Court would
then resolve the legal question of objective recklessness. 3:08-CV-408 VLB, 2012 WL 3101691
at*2 (D. Conn. July 27, 2012). After the Court’s decision, if appropriate, the jury could consider
the subjective recklessness prong of willfulness infringement. (Id.) Finally, the Court notes that
its summary judgment rulings do not automatically prove that an objectively reasonable defense
has been raised. Monsanto Co. v. E.I. DuPont De Nemours & Co., 4:09CV00686 ERW, 2012
WL 2979080 (E.D. Mo. July 20, 2012).
Therefore, Marvell’s motion (Docket No. 485) is DENIED without prejudice, with the
Court to reserve its ruling on the issue of willfulness until the parties have had an opportunity to
present their evidence at trial. Counsel for the parties are HEREBY ORDERED to provide joint
interrogatories and jury instructions to this end on or before November 9, 2012 at 5:00 p.m.

s/ Nora Barry Fischer
Nora Barry Fischer
U.S. District Judge
Date: November 2, 2012
cc/ecf: All counsel of record.

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The Court granted the parties leave to file a motion and briefs regarding bifurcation of issues for trial.
(Docket No. 579, 591 at 198-199). Said Motion & Briefs in Support/Opposition were due by October 26,
2012 and Response Briefs due by November 2, 2012. (Docket No. 579). On October 25, 2012 the Court
was advised by counsel for Defendant that they had decided not to request bifurcation. The Court
therefore ordered the deadlines for said motions and briefings terminated as moot. (Text Order on October
25, 2012).

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