PRECISION FABRICS GROUP, INC. v. TIETEX INTERNATIONAL, LTD.
Filing
346
MEMORANDUM OPINION AND ORDER denying 337 Motion for Judgment as a Matter of Law; denying 337 Motion for New Trial. Signed by Honorable Thomas D Schroeder on 3/8/19.(alew, )
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF SOUTH CAROLINA
PRECISION FABRICS GROUP, INC.,
)
)
Plaintiff,
)
)
v.
)
)
TIETEX INTERNATIONAL, LTD.,
)
)
Defendant.
)
)
________________________________ )
)
PRECISION FABRICS GROUP, INC., )
)
Plaintiff,
)
)
)
v.
)
)
TIETEX INTERNATIONAL, LTD.,
)
Defendant.
)
7:17-cv-3037
7:17-cv-3038
MEMORANDUM OPINION AND ORDER
THOMAS D. SCHROEDER, District Judge.
These patent infringement actions are before the court on
two post-trial motions filed by Precision Fabrics Group, Inc.
(“PFG”) for relief from a jury verdict that found that Defendant
Tietex International, Ltd. (“Tietex”) did not infringe its U.S.
Patents Nos. 8,796,162 ('162 Patent) and 8,501,639 ('639 Patent)
for flame-retardant technology for fabrics.
PFG renews its prior
motion for judgment as a matter of law and moves in the alternative
for a new trial.
(Doc. 372.) 1
After careful consideration and
for the reasons set forth below, the motions will be denied.
I.
BACKGROUND
PFG filed the first of these two actions on August 6, 2013,
in the Middle District of North Carolina and, with the follow-on
lawsuit, alleges that certain Tietex products incorporating flameretardant fabrics infringe PFG’s U.S. Patents Nos. 8,796,162 ('162
Patent) and 8,501,639 ('639 Patent).
The patents-in-suit describe
lightweight materials designed to retard fire for a variety of
applications,
vehicles.
including
garments,
furniture,
(Doc. 112-1 at 2; Doc. 112-2 at 2.)
appliances,
and
Tietex developed
a similar fabric that would operate as a flame-retardant cloth for
mattresses.
Up until October 2016, Tietex applied to its fabric
a solution known as SV-X41, which was manufactured by Royal
Adhesives and Sealants, Inc. (“Royal Adhesives”). 2
Tietex concedes that for the approximately three-year period
at issue, its accused fabrics met each of the limitations set forth
in PFG’s patents, with the exception of the claims requiring that
the fabrics be coated with an “intumescent.”
Tietex contends that
the SV-X41 coating it used is not an intumescent.
The meaning of
1
With respect to the pending motions, the docket filings are
substantively identical in each case. For ease of reference, the court
will refer to filings in case 1:17cv3037 unless otherwise noted.
2
In October 2016, Tietex discontinued use of the SV-X41-coated fabrics
in favor of a different technology for flame retardancy involving a
silica rayon product. (Tr. at 1007-08.)
2
the
term
“intumescent”
has
been
disputed
throughout
this
litigation. After conducting a Markman hearing, 3 the court adopted
PFG’s construction and held that “intumescent,” as defined in PFG’s
patents, means “a substance that swells and chars upon exposure to
heat or flame.”
(Doc. 57 at 20-21.)
In so doing, the court denied
Tietex’s proposed claim construction based on a four-component
definition.
(Id. at 11.)
Tietex subsequently conceded that its
coating charred when exposed to heat or flame.
(Doc. 133 at 7.)
Thus, the parties agreed that the sole issue in PFG’s infringement
claims against Tietex was whether SV-X41 swells upon exposure to
heat or flame.
PFG moved for partial summary judgment as to its claims
against
Tietex
for
infringement
and
Tietex’s
counterclaims
alleging inequitable conduct and invalidity of PFG’s patents.
(Doc. 111.)
PFG also moved to exclude the testimony of Tietex’s
expert, Dr. Richard Horrocks.
(Doc. 116.)
The court denied PFG’s
partial motion for summary judgment on its claims of infringement
but
granted
counterclaims.
its
motion
for
summary
(Doc. 152 at 46.)
judgment
on
Tietex’s
After extensive consideration,
the court granted in part and denied in part PFG’s motion to
exclude or limit the testimony of Dr. Horrocks.
3
(Id.)
Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir.
1995) (en banc), aff'd, 517 U.S. 370 (1996).
3
The parties filed a host of motions in limine prior to trial,
including several directed toward the expert witnesses.
Following
transfer of the action to this district in the wake of TC Heartland
LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017), the
case was tried to a jury for five days.
Central to PFG’s case was the testimony of its expert, Gajanan
Bhat, Ph.D.
Dr. Bhat was qualified as an expert in the field of
textiles, flame retardant finishes and coatings, and intumescent
finishes and coatings.
(Tr. at 479.) 4
He testified that he tested
the SV-X41 coating on successive occasions by exposing it, when
applied to varying substrates, to heat and flame, several in
response to criticisms by Tietex’s expert.
Each test applied
various thicknesses of the coating, and Dr. Bhat reported that
each resulted in measurable swelling of the SV-X41 to some degree.
(Id. at 481, 588–90, 604–06.)
For his measurements he used an
electronic pressure foot, which he testified is standard in the
industry and applies a fixed rate pressure to measure non-uniform
fabric surfaces.
(Id. at 580-81.)
Dr. Bhat took magnified
photographs of the test samples and opined that they showed
swelling and charring when exposed to heat or flame and thus showed
the classic signs of an intumescent.
4
(Id. at 480–86, 564–65, 588,
Citations to the trial transcript (Doc. 373-1) are referenced as “Tr.”
and refer to the original transcript page numbers, not the CM/ECF page
numbers.
4
605, 620.)
Dr. Bhat’s first round tested SV-X41 on the accused fabrics.
When challenged, Dr. Bhat acknowledged that these tests did not
provide an accurate assessment because the coating could have
interacted with the fabric.
(Id. at 589).
Dr. Bhat’s second round tested SV-X41 on a stainless steel
pan.
For these tests, Dr. Bhat used a coating of SV-X41 that was
1,250 to 1,720 microns thick, which Tietex claims is “many times
thicker” than the amount Tietex actually applied to the accused
fabrics under the patents-in-suit, thus rendering the results
invalid.
(Id. at 668-71.)
The third round tested the coating on an aluminum pan.
These
tests involved levels of SV-X41 between 633 and 1,000 microns,
which Tietex contended were still multiples over the amount applied
to its accused fabrics under the patents-in-suit.
(Id. at 671-
75.)
To respond to Tietex’s contention that it actually applied,
and the patents called for, coating at levels of approximately 50
to 100 microns, Dr. Bhat finally conducted tests on aluminum foil
with SV-X41 in thicknesses ranging from approximately 50 to 250
microns.
(Id. at 594–96, 603–04.)
reviewed
microscopic
Dr. Bhat himself eventually
cross-sectional
photographs
of
Tietex’s
finished accused fabrics and opined that the thickness of the SVX41 coating was somewhere between 150 to 250 microns.
5
(Id. at
596, 600-03.)
PFG also relied on an email dated August 6, 2013, the day the
first of these two lawsuits was filed, from Stephen Holland,
president of Royal Adhesives, to Wade Wallace, president of Tietex.
The email responded to a question from
Wallace: “I need to know
if our FR [flame retardant] chemistry would meet or not meet this
specific definition of an ‘intumescent system,’” according to a
four-part definition of intumescent Wallace provided (which was
also Tietex’s proposed construction of the term prior to the
court’s Markman hearing).
(Doc. 373-10 at 2.)
In the email,
Holland responded in part, “Our system behaves as an intumescent
but does not exactly follow the definition below.”
(Id.)
email then went on to explain the chemistry of the coating.
The
(Id.)
PFG also presented the testimony of Walt Jones, its president,
as to ownership of the patents.
Ladson “Larry” Fraser, one of the
inventors of the patents-in-suit, testified as to the benefits of
PFG’s
flame-retardant
bedding
products.
Doug
Small,
a
PFG
employee, testified to damages issues and to his observations of
the thickness of Tietex’s coatings.
PFG presented testimony of
Wallace via deposition about his having received the August 6,
2013 email from Holland.
Finally, PFG presented a damages expert,
Joel Wacek, whose testimony is not at issue in the post-trial
motions.
At the close of PFG’s evidence, Tietex moved for judgment as
6
a matter of law (Tr. at 951), and the court took the motions under
advisement (id. at 970).
Tietex
chairman
presented
and
chief
the
testimony
executive
Horrocks, Ph.D., its expert.
Tietex,
the
fact
that
the
of
Martin
officer;
Wildeman,
Holland;
and
its
Richard
Wildeman testified to the history of
company
had
decided
not
to
use
intumescent coatings as far back as 2003 (id. at 1002), and his
observations of burn tests on Tietex’s products using the patentsin-suit (describing them, without objection, as “totally different
in
my
opinion
to
anything
intumescent”) (id. at 1003).
that
I've
seen
relating
to
an
He also explained that he owns over
30 patents, had read the patents-in-suit and concluded that Tietex
was not practicing on them (id. at 1005-06), and described his
basis for that belief.
Holland testified as to his explanation of
his August 6, 2013 email to Wallace and his understanding of his
company’s SV-X41 product.
Finally, Tietex presented the testimony of Dr. Horrocks, who
was qualified as an expert in the fields of flame retardant
textiles,
flame
retardant
coatings,
including
intumescent
coatings, and the chemistry of flame retardants and intumescents.
(Id. at 1089.) 5
Dr. Horrocks is listed on the patents-in-suit as
5
While PFG did not challenge Dr. Horrocks’s qualifications, it objected
to qualifying him as an expert in the field of chemistry on the grounds
that it would prejudice PFG by elevating his testimony over that of Dr.
Bhat. (Tr. at 1089–91.) The court overruled PFG’s objection. (Id. at
1091.)
7
a holder of a patent that is prior art, and the patents-in-suit
cite six publications that he authored or co-authored.
(Id. at
1287–88; Doc. 152 at 20–21.)
Dr. Horrocks offered two primary opinions with respect to
infringement.
First, he testified that, based on his training,
education, and experience, the chemical composition of SV-X41
would not cause it to swell when exposed to heat or flame, in part
because it contains alumina trihydrate 6 and lacks the necessary
carbonific to swell.
(Tr. at 1153–59, 1103, 1187.)
Rather, he
explained, the chemical composition is “flame retardant chemistry”
designed to “releas[e] water vapor, which will extinguish, snuff
out flame.”
(Id. at 1158.)
In this regard, he claimed, the SV-
X41 coating functions differently from an intumescent coating.
(Id.)
Second, he testified that his testing on the coating,
conducted on an inert glass fiber substrate using applications of
SV-X41 in an amount he calculated as being called for in the
patents-in-suit, established that the coating did not swell upon
exposure to heat or flame. Unlike Dr. Bhat, who used an electronic
pressure foot, Dr. Horrocks used a hand-manipulated electronic
micrometer to conduct his measurements.
Dr.
Horrocks
offered
several
6
criticisms
of
Dr.
Bhat’s
Alumina trihydrate is referenced throughout this opinion.
The few
places in the trial transcript that refer to “aluminum” trihydrate (Tr.
at 1157, 1194, 1196) appear to be typographical errors.
8
testing.
With regard to each test, Dr. Horrocks noted that Dr.
Bhat failed to report his results with any experimental error.
(Id. at 1142–43.)
As to Dr. Bhat’s first test conducted on the
accused fabrics themselves, Dr. Horrocks faulted the substrate as
not being inert, noting that the coating would react with the
underlying textile fabric.
(Id. at 1142.)
As to the testing on
aluminum pans, Dr. Horrocks acknowledged that the photographs
introduced
at
trial
showed
swelling
(id.
at
1199), 7
but
he
attributed the result, as well as Dr. Bhat’s testing on steel pans,
to Dr. Bhat’s use of an excessive thickness of the SV-X41 coating
in the second and third tests, noting that the samples had a
thickness in excess of fifteen times the thickness of the actual
coating.
(Id. at 1142-43.)
As for Dr. Bhat’s fourth test conducted on aluminum foil, Dr.
Horrocks acknowledged that at least one of the samples corresponded
with the appropriate thickness of the coating on the accused
7
PFG’s initial brief contends that Dr. Horrocks agreed that Dr. Bhat’s
second and third tests conducted on aluminum and steel pans showed
swelling. (Doc. 373 at 9.) However, the relevant portion of the trial
transcript on which PFG relies pertains only to the testing conducted
on aluminum pans. (Tr. at 1199 (“Q: I want to turn to Dr. Bhat's testing
that was done with aluminum pans. A: Yes, aluminum pans, yes. Q: Would
you agree that under Dr. Bhat's experimental conditions that his testing
showed swelling? A: According to his photographs, yes, I agree.”).)
PFG’s reply brief appears to acknowledge as much. (Doc. 379 at 4 (noting
“Dr. Horrocks’s admission that Dr. Bhat’s aluminum pan testing shows
that SV-X41 swells”).)
Nevertheless, it does not appear that Dr.
Horrocks challenged Dr. Bhat’s measurements in the second test apart
from those noted above (thickness of the coating and failure to report
results with experimental error). See (Tr. at 1142.)
9
fabrics.
(Id. at 1144.)
Drawing from his knowledge of chemistry
and review of Dr. Bhat’s expert report, however, he testified that
aluminum foil is not an inert substrate and would react with the
chemical components of SV-X41 when exposed to heat or flame. 8
8
(Id.
A spate of last-minute testing by the experts led to several pretrial
motions. PFG sought to offer new testing by Dr. Bhat, claiming that Dr.
Horrocks had offered new opinions (as to “thermally thin” applications
of SV-X41) in his deposition; Tietex sought to amend Dr. Horrocks’s
report in response to Dr. Bhat’s proposed testing; and PFG sought to
offer yet further opinions by Dr. Bhat in rebuttal. The court granted
PFG’s request to permit Dr. Bhat to supplement his report to include new
testing of SV-X41 in response to Dr. Horrocks’s deposition testimony,
even though the period for discovery had long closed. But because Dr.
Bhat’s new testing used aluminum foil as a substrate, the court permitted
Dr. Horrocks to criticize the use of aluminum as it related to the foil
because it had not been used before, thus denying PFG’s motion to
preclude such testimony. (Doc. 330.) The court did grant PFG’s motion
in limine to the extent Dr. Horrocks sought to criticize Dr. Bhat’s
previous use of an aluminum pan in his earlier testing of SV-X41. (Doc.
318 at 36.) The court found that Dr. Horrocks failed to disclose this
criticism in his earlier deposition, the discovery period had long
closed, and Tietex had delayed unreasonably in disclosing Dr. Horrocks’s
opinion challenging aluminum pans as a proper substrate for testing SVX41. (Id.)
Finally, the court denied PFG’s motion, filed a week before trial,
to permit Dr. Bhat to further supplement his supplemental report to
respond to Dr. Horrocks’s criticisms of Dr. Bhat’s use of aluminum foil
as a testing substrate. (Doc. 319.) Even though discovery had closed,
the court had earlier granted PFG leave to file Dr. Bhat’s supplemental
report for the limited purpose of responding to Dr. Horrocks’s tests
using a “thermally thin” application of SV-X41.
(Doc. 174 at 9-10.)
Dr. Bhat’s proposed testing to rebut Dr. Horrocks’s criticisms of his
supplemental testing was outside the scope of the court’s order. (Id.)
Moreover, PFG had the opportunity to do all the testing it deemed
necessary and should have included or anticipated these additional tests.
Contributing to the problem, PFG had unreasonably delayed in disclosing
Dr. Bhat’s new round of rebuttal testing, failing to provide Tietex with
Dr. Bhat’s proposed supplemental report even though it had been prepared
six months earlier. (Doc. 319 at 5.) The court found that to allow Dr.
Bhat to supplement his report at that late date on the eve of trial
would unfairly prejudice Tietex, which would have to conduct additional
discovery and adjust its trial strategy. (Doc. 330 at 2; Doc. 325 at
6–9); see (Tr. at 1302–03.) The failure to disclose the new testing was
not harmless.
It presented surprise to Tietex, would have required
additional testing to address, and threatened to disrupt the trial
preparation. It also related to the central issue in the case, although
10
at 1144, 1151–53, 1197–99, 1206–08.)
Dr. Horrocks testified that
he analyzed the microscopic photographs of the samples and observed
a gray layer between the substrate and the coating, which he
determined provided evidence of the reaction.
(Id. at 1208–10.)
He further testified that he had conducted measurements using the
microscopic photos that indicated that the aluminum foil substrate
had decreased in thickness after exposure to heat and flame.
at 1211–12.) 9
(Id.
Dr. Horrocks testified that he could not determine
whether the swelling was attributable to the coating and offered
no opinion regarding the quantum of swelling attributable to the
reaction between the SV-X41 and the aluminum foil substrate.
(Id.
at 1152.)
PFG presented rebuttal evidence from Dr. Bhat, challenging
Dr. Bhat had been provided multiple prior opportunities to conduct
testing and offer his opinions. PFG offered no persuasive explanation
for not disclosing the testing and proposed rebuttal report to Tietex
months earlier, even though it was available. Thus, PFG’s explanation
for the failure was also not substantially justified. Preclusion of the
proposed rebuttal supplemental report was thus proper. See S. States
Rack & Fixture, Inc. v. Sherwin-Williams Co., 318 F.3d 592, 596-97 (4th
Cir. 2003); Hill v. Coggins, 867 F.3d 499, 508 (4th Cir. 2017). The
court stated it would consider revisiting the ruling if Tietex
purposefully opened the door at trial. (Doc. 330 at 2.) At trial, PFG
requested that Dr. Bhat be allowed to testify to the testing he conducted
in response to Dr. Horrocks’s final report and which the court had
precluded. (Tr. at 1300-03.) The court denied the request, rejecting
any claim that the door had been opened or that PFG had demonstrated
grounds to justify its request. (Id. at 1302–03.)
9
PFG moved to strike this testimony at trial on the grounds that it
constituted a new opinion not disclosed in Dr. Horrocks’s expert report.
(Tr. at 1256.) The court denied PFG’s motion, finding that Dr. Horrocks
adequately disclosed this testimony in his prior deposition, about which
PFG had ample time to examine him, and that his opinion was based on and
consistent with his expert report. (Id. at 1303–05.)
11
Dr. Horrocks’s use of a glass fiber substrate for testing, opining
that it was not inert.
Dr. Bhat also testified that based on his
examination of the SV-X41 coating, he concluded it was 150 to 250
microns thick, and he defended his calculation of error for his
testing.
(Id. at 1308-14.)
Plaintiff also called Jones to deny
that he broke any promise to Wildman not to sue Tietex for
infringement.
At the conclusion of its rebuttal case, PFG moved for judgment
as a matter of law on literal infringement, infringement under the
doctrine of equivalents, and willful infringement pursuant to
Federal Rule of Civil Procedure 50(a).
reserved ruling on PFG’s motions.
(Id. at 1332.)
The court
(Id. at 1333, 1351.)
After five days of trial, the jury returned a verdict of noninfringement of the patents-in-suit.
(Doc. 350.)
Pursuant to Rule 50(b), PFG now renews its motion for judgment
as
a
matter
infringement
infringement.
of
law
under
on
the
the
issues
doctrine
(Doc. 372.)
of
of
literal
equivalents,
infringement,
and
willful
PFG also moves in the alternative for
a new trial under Rule 59 of the Federal Rules of Civil Procedure.
(Id.); see Fed. R. Civ. P. 50(b).
The motions are fully briefed
and are ready for resolution.
II.
MOTION FOR JUDGMENT AS A MATTER OF LAW
A.
Standard of Review
“A determination of infringement is a question of fact,
12
reviewed for substantial evidence when tried to a jury.”
Verizon
Servs. Corp. v. Cox Fibernet Va., Inc., 602 F.3d 1325, 1340 (Fed.
Cir. 2010) (citing Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d
1301, 1309 (Fed. Cir. 2009)).
In a patent infringement action,
the law of the regional circuit applies to a motion for judgment
as a matter of law or a motion for a new trial.
Id. at 1331.
“Entry of judgment as a matter of law is appropriate only if the
evidence is legally insufficient to support the jury's verdict.”
Bresler v. Wilmington Tr. Co., 855 F.3d 178, 196 (4th Cir. 2017)
(citing Dennis v. Columbia Colleton Med. Ctr., Inc., 290 F.3d 639,
645 (4th Cir. 2002)).
The court must determine “whether there was
a legally sufficient evidentiary basis for a reasonable jury,
viewing the evidence in the light most favorable to the prevailing
party, to find for that party.”
King v. McMillan, 594 F.3d 301,
312 (4th Cir. 2010) (quoting ABT Bldg. Prods. Corp. v. Nat'l Union
Fire Ins. Co. of Pittsburgh, 472 F.3d 99, 113 (4th Cir. 2006)).
The grant of judgment as a matter of law is improper “[i]f
reasonable minds could differ about the verdict.”
ABT Bldg. Prods. Corp., 472 F.3d at 113).
Id. (quoting
When ruling on a motion
for judgment as a matter of law, “the district court is fully
empowered to reverse its evidentiary rulings post-trial and to
reconsider that evidence's effect on the trial.”
Conner v.
Schrader-Bridgeport Int'l, Inc., 227 F.3d 179, 194 (4th Cir. 2000)
(citing Weisgram v. Marley Co., 528 U.S. 440, 453-54 (2000)).
13
A party seeking judgment as a matter of law who also bears
the
burden
of
proof
faces
a
formidable
burden.
Gilliam
v.
Montgomery Ward & Co., Inc., No. 96-1210, 1997 WL 429454, at *8
(4th Cir. 1997) (noting judgment as a matter of law should be
granted in favor of the party bearing the burden of proof only in
“extreme cases,” citing 9A Charles Alan Wright & Arthur R. Miller,
Federal Practice & Procedure: Civil § 2535 (2d ed. 1995)). 10
The
court must determine whether “the effect of the evidence is not
only sufficient to meet his burden of proof, but is overwhelming,
leaving no room for the jury to draw significant inferences in
favor of the other party.”
Radtke v. Lifecare Mgmt. Partners, 795
F.3d 159, 165-66 (D.C. Cir. 2015) (quoting Gay v. Petsock, 917
F.2d 768, 771 (3d Cir. 1990)); Southern v. Agricraft Co., Inc.,
No. 89-2437, 1990 WL 133114, at *1 (4th Cir. 1990) (“When reviewing
an order granting judgment n.o.v. to a party having the burden of
proof, the standard to be applied is whether the evidence is ‘so
overwhelming that [the court] cannot uphold the jury's rejection
of that defense.’” (quoting Thornhill v. Donnkenny, Inc., 823 F.2d
782, 786 (4th Cir. 1987)).
10
This section is now found at 9B Wright & Miller, Federal Practice &
Procedure: Civil § 2535 (3d ed. 2018).
Unpublished opinions of the
Fourth Circuit are not precedential but “are entitled only to the weight
they generate by the persuasiveness of their reasoning.” See Collins
v. Pond Creek Mining Co., 468 F.3d 213, 219 (4th Cir. 2006) (citation
omitted)).
14
B.
Literal Infringement
PFG contends that it is entitled to judgment as a matter of
law as to literal infringement because, based on the evidence
presented at trial, no reasonable jury could find that SV-X41 does
not swell upon exposure to heat or flame.
(Doc. 373 at 3.)
PFG’s
arguments can be grouped into the following general categories:
(1) PFG’s evidence established that SV-X41 swells when exposed to
heat or flame, entitling PFG to judgment in its favor; (2) Tietex’s
evidence improperly redefined the court’s claim construction for
“intumescent”;
(3)
testimony
of
Holland,
president
of
Royal
Adhesives, the maker of SV-X41, constituted improper lay opinion;
and (4) certain of Dr. Horrocks’s opinions were unreliable and
untested.
Tietex responds that irrespective of Dr. Horrocks’s
opinions, (1) the jury was free to reject Dr. Bhat’s opinions
claiming to measure swelling in his testing; (2) Tietex did not
redefine the court’s construction of “intumescent”; (3) Tietex’s
examination of Holland was proper because PFG put his email into
evidence
and
opened
the
door
to
examination
of
it,
which
nevertheless remained within the contours of the court’s claim
construction; and (4) Dr. Horrocks’s testimony was proper.
In
sum, Tietex contends that PFG fails to demonstrate that its
evidence of infringement was so overwhelming that a reasonable
jury could only find in its favor, even if the challenged evidence
were excluded.
Many of these issues overlap, as will the court’s
15
discussion of them, but the court will attempt to address each in
turn.
1.
PFG’s Evidence and Dr. Bhat’s Unrebutted Opinions
PFG notes that Dr. Bhat testified that he measured swelling
to some degree in every one of his several test samples.
373 at 3.)
(Doc.
PFG contends that no reasonable jury “unaffected by
irrelevant
and
prejudicial
otherwise.
(Id.)
evidence
and
argument”
could
find
PFG also points to Holland’s email that noted
that SV-X41 “behaves as an intumescent” (id. at 4 (citing Doc.
373-10)) and contends that Dr. Horrocks admitted at trial that Dr.
Bhat’s testing showed swelling.
(Id.)
According to PFG, Tietex’s
evidence failed to overcome this conclusion.
(Id.)
Tietex
responds that PFG had the burden of proof and the jury was free to
reject Dr. Bhat’s opinions.
(Doc. 376 at 7.)
Moreover, it
contends, Dr. Horrocks rebutted Dr. Bhat’s conclusions, creating
fact issues for the jury.
(Id. at 8.)
As PFG bore the burden of proof on the question of literal
infringement, to be entitled to judgment as a matter of law it
must establish that the evidence was not only sufficient to meet
this burden, but is “overwhelming, leaving no room for the jury to
draw significant inferences in favor of the other party.”
795 F.3d at 165-66 (quoting Gay, 917 F.2d at 771).
Radtke,
For the reasons
noted below, PFG fails to do so.
Most notably, the jury was free to disbelieve Dr. Bhat’s
16
testimony, particularly based on Tietex’s cross-examination of
him.
For example, Dr. Bhat conceded that the results of his first
tests were not reliable because of the testing conditions.
at 589.)
(Tr.
Dr. Bhat also conceded that many of his tests involved
applications of SV-X41 that were multiples over the amount he
believed was contemplated by the patents.
(Id. at 595-96.)
Dr.
Horrocks also provided several reasons to question Dr. Bhat’s
conclusions, leaving the jury free to question and reject Dr.
Bhat’s testing results. 11
were the following:
Principal among the deficiencies noted
Dr. Bhat’s alleged use of applications of SV-
X41 that were significantly greater than the proper amount for
testing and that the coating would behave differently based on the
applied thickness (id. at 1116-18); use of improper substrates
that were not inert but allegedly interacted with the coating to
skew the results; and the chemical composition of SV-X41 that is
not expected to swell.
Moreover, PFG’s representation of Dr. Horrocks’s alleged
admission is not accurate.
The cited testimony, which related
only to Dr. Bhat’s testing on aluminum pans, provided:
Q:
Would you agree that under Dr.
experimental
conditions
that
his
testing
swelling?
A:
According to his photographs, yes.
11
Bhat’s
showed
I agree.
The agreed upon jury instructions charged the jury that it could
disregard any opinion of either expert witness entirely should it
conclude that the reasons given in support “are not sound, or if you
feel that it is outweighed by other evidence.” (Tr. at 1409.)
17
(Id. at 1199.)
Thus, Dr. Horrocks conceded only that Dr. Bhat’s
photographs showed swelling; he did not agree with the methodology
used.
Quite
the
opposite,
Dr.
Horrocks
disputed
that
the
experimental conditions employed by Dr. Bhat (who himself conceded
he was far less experienced in the field of intumescents than Dr.
Horrocks (id. at 667)) were appropriate, especially as to the
amount of coating he applied, and thus did not accept Dr. Bhat’s
conditions as correct.
True, Dr. Horrocks offered no opinion as
to whether a coating of SV-X41 in excess of 100 microns swelled
upon exposure to heat or flame.
(Id. at 1194 (“Q: And my question
is, is it correct that in this case, if Tietex's coatings are
thicker than a hundred microns, you have no opinions; is that
correct?
A:
microns.”).)
I
have
no
opinion
if
they're
over
a
hundred
But it was not Tietex’s burden to establish the
absence of swelling at any level; rather, it was PFG’s burden to
establish swelling at a proper level.
These challenges therefore
fall far short of constituting overwhelming evidence necessary to
justify judgment in PFG’s favor.
2.
Claim Construction
As PFG urged, the court construed the claim term intumescent
as “a substance that swells and chars upon exposure to heat or
flame.”
(Doc. 57 at 20–21.)
PFG contends that Tietex introduced
evidence that limited and thus impermissibly redefined the court’s
18
claim construction, pointing at times to actual testimony.
373 at 5-6.)
(Doc.
Tietex responds that its evidence properly fell
within the court’s claim construction and the scope of the patent.
(Doc. 376 at 18–20.)
PFG’s first area of contention relates to testimony as to the
visibility and size of any swelling.
For example, PFG points to
testimony by Tietex’s CEO, Wildeman, that during the “early days”
of its product development in approximately 2003, Tietex’s burn
testing of its products in its laboratory demonstrated “there was
no visible swelling” (Tr. at 973), which contrasted with his
experience of having observed “very significant swelling” that was
“highly visible” during burn tests of other products.
(Id. at
999-1004.) While PFG contends this limited the claim construction,
this testimony actually related to Tietex’s defense of PFG’s claim
of
willfulness.
In
fact,
based
in
part
on
this
testimony,
Wildeman, who holds some 30 patents of his own, concluded, without
objection, that Tietex did not believe it was infringing the
patents-in-suit.
(Id. at 1004, 1006-07.)
PFG next points to portions of Dr. Horrocks’s testimony.
As
to nearly all of the complained of testimony, however, when PFG
objected, the court sustained PFG’s objections.
at
5–6
(citing
Tr.
at
1132-33
(sustaining
E.g., (Doc. 373
objection
to
Dr.
Horrocks’s testimony that “we have to agree what is [an] acceptable
level of swelling” and noting that his own patent had swelling
19
“somewhere between 50 percent and a hundred percent”); Tr. at 1131–
32 (sustaining objections to testimony regarding “swelling more
than a little” and to a lengthy answer that included the terms
swelling “more than a little”); Tr. at 1136 (sustaining objection
to
phrasing
“significant
swelling”);
Tr.
at
1205
(sustaining
objection to testimony including the phrase “swells and chars more
than a little”); Tr. at 1128-1129 (sustaining objection about his
expectation that his testing would reveal a “heavy char” or “char
formation
question
of
a
swelling
seeking
an
character”
explanation
as
of
non-responsive
his
test
to
the
protocols)).)
Plaintiffs never moved to strike any of this testimony or requested
any limiting instruction.
Thus, PFG cannot complain where its
objections were sustained and the court precluded questioning
based on it.
PFG also cites testimony by Wildeman relating to the presence
or absence of carbon in the coatings, objecting to his testimony
that
a
“large
amount
intumescent swell.
of
carbon”
is
required
to
achieve
an
(Doc. 373 at 5 (citing Tr. at 1001-1002).)
Similarly, it cites Holland’s testimony that “in an intumescent,
you have a very high level of carbon that’s added to the system[,]
[a]nd when that burns it chars and it swells up,” that his
company’s products (SV-X41) do not have any added carbon, and that
burn tests of intumescents produce swelling “you actually see” and
“can actually touch [] and feel.”
20
(Id. (citing Tr. at 1051,
1054).)
However, like much of PFG’s complained of evidence, this
testimony
was
admitted
without
objection.
Moreover,
it
was
relevant insofar as a key component of Tietex’s defense was its
contention that the chemistry of SV-X41 prevented it from swelling
like an intumescent.
PFG next cites testimony by Dr. Horrocks who, when asked if
he knew what an intumescent is, responded: “An intumescent is a
material which swells and chars to form a thermal barrier once
it’s been exposed to heat or flame.”
at 1083).)
(Doc. 373 at 5 (citing Tr.
PFG contends that the court permitted Tietex to add a
limitation to the claim — that it form a thermal barrier.
What
PFG fails to note is that upon PFG’s objection, the court reminded
the jury of the court’s definition of an intumescent to be applied
for purposes of the case.
(Tr. at 1083–84.)
Moreover, PFG’s own
patents-in-suit state they provided flame retardancy by producing
a thermal barrier to protect the underlying product.
See (PFG
Exh. 1 at 5 (‘639 patent describing the flame retardant mechanism
in the fabric as “barrier chemistry that causes the fabric to char
and swell when exposed to flame to provide an insulating thermal
barrier”), Exh. 2 at 6 (identical language in the ‘162 patent).)
And more to the point, PFG itself introduced, through its direct
examination of its company witness, Larry Fraser, the proposition
that an intumescent in the patents-in-suit works by forming a
thermal barrier:
21
Q:
And what is an intumescent?
A:
An intumescent is a material that swells and chars
upon exposure to heat or flame.
Q:
Just in general terms, how does an intumescent
work?
A:
Well, when an intumescent is — comes into contact
with a — with extreme heat or flame, it swells and chars.
It actually — it actually swells and chars and — make —
into a flame-preventive-type barrier with the material
it's used with. It helps the fabric become a thermal
barrier.
Q:
You said a thermal barrier?
A:
Yes.
Q:
And what do you mean by thermal barrier?
A:
Thermal barrier is what would keep the insult or
the attack of a flame or extreme heat from further
damaging things on the other side of it.
(Tr. at 246-47 (emphasis added).)
is
difficult
to
say
that
Dr.
Under these circumstances, it
Horrocks
misled
the
jury
into
redefining the claim construction.
PFG also points to a portion of Dr. Horrocks’s testimony that
it characterizes as modifying the claim to “require a particular
‘thickness’” of the coating. (Doc. 373 at 5 (citing Tr. at 1113).)
However, what PFG cites to is a question to Dr. Horrocks whether
he was aware of whether Dr. Bhat had performed any calculations to
determine whether the thickness of his coatings he tested were
within the requirements of the patents-in-suit, to which Dr.
Horrocks answered, “I’m not aware of that.”
22
(Tr. at 1113.)
Immediately
following
that,
Dr.
Horrocks
testified,
without
objection, to the results of his calculations to confirm the
thickness of the coatings contemplated by the patents-in-suit for
purposes of his testing.
(Id.)
Frequently, both before and during trial, the court advised
the parties that they could not attempt to add limitations to the
claim that were not approved by the court.
1055, 1097–98, 1101.)
E.g., (Tr. at 630-33,
The court also instructed the jury more
than once on the court’s construction of the claim and that the
jury was bound by it.
E.g., (Tr. at 1083–84, 1415.)
Based on the
trial record, PFG’s contentions that the cited testimony added an
impermissible claim limitation lacks merit.
3.
Testimony of Holland and Wildeman
PFG challenges a portion of testimony by Holland and Wildeman
that it characterizes as improper lay opinion testimony that was
irrelevant and prejudicial. (Doc. 373 at 7-9.) More specifically,
PFG argues that testimony by Holland that his company’s product,
SV-X41, does not swell (Tr. at 1067-68) was unreliable because it
was not supported by scientific evidence where he only tested the
product
on
swelling.
coated
(Doc.
fabrics
373
at
and
does
8.)
PFG
not
know
contends
how
that
to
measure
Wildeman’s
statements as to his visual observations of the accused fabrics,
rather
than
quantitative
measurements,
are
unreliable
and
inadmissible for purposes of determining literal infringement.
23
Tietex responds that Holland’s testimony that SV-X41 does not swell
upon
exposure
to
heat
or
flame
and
is
not
an
intumescent
constitutes a sufficient evidentiary basis upon which a reasonable
jury could find that PFG failed to carry its burden of proving
literal infringement.
(Doc. 376 at 22–23.)
Tietex argues that
Holland’s lay opinion testimony was properly admitted as a direct
response to PFG’s introduction of Holland’s August 6, 2013 email
which opened the door to his testimony.
Tr. at 1046–47).)
(Id. at 22 n.8 (citing
Tietex further argues that the jury could reach
a reasonable conclusion that Tietex did not infringe based on
Wildeman’s testimony that he did not observe visible swelling of
the SV-X41 coating when he observed burn tests.
As to Holland, context is necessary.
(Id. at 23.)
His testimony was the
subject of significant discussion with the court. During Holland’s
direct examination, PFG’s objection was initially on the ground of
relevance.
(Tr. at 1040.)
PFG ultimately agreed with Tietex’s
assessment that Holland could testify as to “the bases for what he
said there [in his August 6, 2013 email to Mr. Wallace] and if he
changed his opinion on it.”
(Id. at 1041.) 12
The court also found
that by introducing the August 6, 2013 email, PFG had opened the
12
In a March 1, 2018 pretrial hearing and during trial, PFG agreed to
Tietex’s legal arguments, contained in a memorandum (Doc. 329; Doc. 3291 (PFG statement)), that Holland could testify about the August 6, 2013
email pursuant to Federal Rule of Evidence 701. (Doc. 327; Tr. at 103233, 1042-46, 1056-57). Both PFG and Tietex listed Holland on their trial
lists.
24
door to Tietex’s examination of Holland about the email.
1046–47.)
(Id. at
The court also noted that Holland could testify as to
his perceptions as it related to a defense of the claim of
willfulness
and
explained
that,
while
it
would
consider
the
testimony on a question-by-question basis, it would sustain PFG’s
objections if Tietex’s counsel strayed from these areas.
1045–46, 1056–57.)
(Id. at
Even in the absence of objection, the court
interjected itself, sua sponte, to ensure that the testimony did
not conflict with the court’s claim construction. E.g., (Tr. 105456.)
As to the limited testimony to which PFG now complains, PFG
raised no objection at trial.
waived.
Therefore, any objection has been
Further, to the extent PFG argues that Holland was not
qualified to explain whether he believed his company’s product was
an intumescent, it opened the door to that testimony by introducing
Holland’s August 6, 2013 email on that very issue. (Tr. at 1041–
46.) 13
As to Wildeman, PFG objects to what it describes generally,
without
record
citation,
to
be
testimony
observations of the accused fabrics.
about
his
visual
(Doc. 373 at 7–8.)
It
contends that Wildeman’s testimony was inadmissible lay opinion
but acknowledges in its reply (citing to Tr. 1021-22, 1032) that
13
Holland, who testified he holds both a bachelor’s degree and a master’s
degree in chemistry from the University of Massachusetts, has not been
shown to have lacked any qualification to so testify. (Doc. 373-1 at
1037.)
25
it was admissible on the issue of willfulness.
(Doc. 379 at 13.)
This is just how the court limited his testimony.
When PFG raised the issue at trial, it argued that Wildeman
should be precluded from testifying as to his visual observations
of swelling because the court had earlier ruled that Dr. Horrocks
was prevented from opining as to swelling of SV-X41 tested on steel
pans based on his unaided, visual observation.
(Tr. at 897-98.)
The court drew a distinction between Dr. Horrocks’s opinion offered
for
literal
infringement
(because
it
was
ipse
Wildeman’s testimony offered to rebut willfulness.
dixit),
and
(Id. at 899.)
The court stated it would proceed question by question and directed
PFG to object if it concluded that any question strayed into an
impermissible area.
(Id. at 898-901.)
PFG made but one objection
about Wildeman’s visual observations of fabric testing — on the
ground of relevance, which was overruled.
(Id. at 1000.)
The
testimony PFG actually complains of came in on cross-examination
in response to questions by PFG’s counsel, and PFG never moved to
strike any part of any response it now claims is objectionable. 14
However, because Wildeman’s testimony was admitted as it related
14
On cross-examination, PFG examined Wildeman as to his company’s efforts
to test the coating on the accused fabrics, inquiring whether it was a
visual observation and whether he took any measurements.
Wildeman
responded that he examined the coating under a microscope but took no
measurements because he saw no visual swelling. (Tr. at 1021.) Even
in the absence of any objection by PFG, the court sustained its own
objection and reminded the jury that Wildeman’s testimony was admitted
only on the issue of willfulness. (Id. at 1022.)
26
to Tietex’s defense of PFG’s claim of willful infringement, the
court need not consider Tietex’s attempt to rely on this testimony
to support the merits of its literal infringement defense (see
Doc. 379 at 13–14).
expressed
(Doc. 376 at 23).
frustration
over
the
Ultimately, the court
absence
of
objections
and
remonstrated counsel on both sides that it was their duty to object
and not to assume the court would do so sua sponte.
(Tr. at 1032-
33.)
On this record, PFG fails to establish entitlement to relief.
4.
Admissibility of Dr. Horrocks’s Testimony
The remainder of PFG’s arguments relate to the testimony of
Tietex’s expert, Dr. Horrocks.
PFG first argues that any criticism regarding the thickness
of
the
samples
was
irrelevant
and
inadmissible
because
it
improperly added a limitation to the claim and was directly
undermined by Dr. Horrocks’s admission that Dr. Bhat’s aluminum
pan testing showed swelling.
(Doc. 379 at 5.)
PFG contends that
Dr. Horrocks superimposed a thickness requirement on the court’s
claim
construction,
noting
that
the
patents-in-suit
have
a
separate claim limitation governing the amount of coating applied
to the patented fabrics.
“[i]t
is
axiomatic
(Doc. 373 at 6 n.1.)
that,
if
the
SV-X41
Tietex argues that
coating
is
not
an
‘intumescent’ as it is actually applied on Tietex’s fabrics,
Tietex’s fabrics would not be treated with an intumescent coating,
27
and could not have been found to infringe PFG’s patents.”
376
at
18-19
(emphasis
omitted).)
Tietex
argues
(Doc.
that
“Dr.
Horrocks’s opinion and Tietex’s criticism of Dr. Bhat simply
recognizes that, if the SV-X41 coating does not meet the definition
of an ‘intumescent’ at the thicknesses in which it is applied on
Tietex’s fabrics, those fabrics cannot infringe PFG’s patents.”
(Id. at 19.)
Claim construction is a matter of law for the court to decide.
Markman, 52 F.3d at 979.
Once the court has construed a claim,
the parties may not seek to contradict, or further construe, the
court’s claim construction to a jury.
Exergen Corp. v. Wal-Mart
Stores, Inc., 575 F.3d 1312, 1321 (Fed. Cir. 2009); Tinnus Enters.,
LLC v. Telebrands Corp., No. 6:16-CV-00033-RWS, 2017 WL 3457104,
at *2–4 (E.D. Tex. Aug. 11, 2017).
Here, neither party challenges the court’s construction of
the claim term intumescent as “a substance that swells and chars
(Doc. 57 at 20-21.) 15
upon exposure to heat or flame.”
trial,
Dr.
Horrocks
raised
a
factual
dispute
During
regarding
the
appropriate method of testing whether the SV-X41 coating applied
to the accused fabrics swells upon exposure to heat or flame.
He
opined that the coating would behave differently at different
thicknesses (i.e., “thermally thin” versus “thermally thick”),
15
To be sure, Tietex unsuccessfully urged a different construction at
the Markman hearing.
28
testified
that
it
was
thickness
actually
important
contemplated
to
by
test
the
the
coating
at
the
patents-in-suit,
and
explained his testing at that level.
Dr.
Horrocks’s
testimony
limitations to the claim.
did
not
impermissibly
add
At a minimum, it reflects a reasonable
dispute over the appropriate method, scientifically, to test the
SV-X41 to determine whether it, as called for in the patents-insuit and thus as applied on the accused products, infringes PFG’s
patents.
applicable
Dr. Horrocks based his opinion on his knowledge of the
science,
the
chemical
composition
of
the
SV-X41
coating, the amount of coating called for in the patents-in-suit,
and his calculations of the amount of SV-X41 applied on the accused
fabrics by Tietex.
Based on these considerations, he testified
that the SV-X41 coating applied on the accused products did not
swell upon exposure to heat or flame.
He also testified that
testing the proper amount was critical because it is commonly known
that too much of any substance, even though not an intumescent,
could swell upon exposure to heat or flame.
(Doc. 119-1 at 214-
15 (observing during deposition that a thicker coating of nylon,
which is not an intumescent, would swell and char when exposed to
heat or flame).)
To adopt PFG’s position — to bar Dr. Horrocks
from responding to an opposing expert’s testing that employed
amounts of SV-X41 at multiples over that ever contemplated by the
patents-in-suit — would impermissibly extend the coverage of the
29
patents-in-suit beyond the scope of the claim limitation.
See
Aqua-Aerobic Sys., Inc. v. Aerators Inc., 211 F.3d 1241, 1245 (Fed.
Cir.
2000)
(affirming
the
district
court’s
rejection
of
the
patentee’s proposed claim construction that would broaden the
claims beyond the scope of the claim limitations and specification
description).
PFG next argues that Dr. Horrocks’s testing is unreliable
because
it
was
not
scientifically
valid
and,
therefore,
is
inadmissible under Federal Rule of Evidence 702 and Daubert v.
Merrell Dow Pharm., Inc., 509 U.S. 579 (1993), and its progeny.
(Doc. 379 at 7.) Relying on this court’s prior order denying PFG’s
motion for partial summary judgment, Tietex contends that this
court has already rejected PFG’s arguments in considering the same
evidence it introduced at trial.
Doc. 152 at 22.)
(Doc. 376 at 2-3, 11-17; see
PFG responds that the court’s prior motion does
not conclusively resolve the issue and contends that the evidence
presented at trial was different from that considered in PFG’s
prior motion.
(Doc. 379 at 8-10.)
Under Rule 702, an expert witness is permitted to offer
opinion testimony if he “is qualified as an expert by knowledge,
skill,
experience,
training,
or
education.”
The
witness’s
knowledge must help the trier of fact understand the evidence or
determine
a
fact
in
issue,
the
testimony
must
be
based
on
sufficient facts or data, the testimony must be the product of
30
reliable principles and methods, and the witness must reliably
apply the principles and methods to the facts of the case.
R. Evid. 702(a)-(d).
a
trial
judge
Fed.
This rule “imposes a special obligation upon
to
‘ensure
that
any
and
all
testimony . . . is not only relevant, but reliable.’”
[expert]
Kumho Tire
Co. v. Carmichael, 526 U.S. 137, 147 (1999) (quoting Daubert, 509
U.S. at 589).
Under Rule 702, expert testimony is admissible if it “rests
on a reliable foundation and is relevant.”
E.E.O.C. v. Freeman,
778 F.3d 463, 466 (4th Cir. 2015) (quoting Westberry v. Gislaved
Gummi AB, 178 F.3d 257, 260 (4th Cir. 1999)).
The overall focus
is on scientific validity, based on the principles and methods
used.
that
Daubert, 509 U.S. at 592–93.
the
proffered
expert
opinion
Thus, the court must “ensure
is
‘based
on
scientific,
technical, or other specialized knowledge and not on belief or
speculation, and inferences must be derived using scientific or
other valid methods.’”
Nease v. Ford Motor Co., 848 F.3d 219, 229
(4th Cir. 2017) (quoting Oglesby v. Gen. Motors Corp., 190 F.3d
244, 250 (4th Cir. 1999)). The district court has “broad latitude”
to take into account any “factors bearing on validity that the
court finds to be useful.”
Westberry, 178 F.3d at 261).
Freeman, 778 F.3d at 466 (quoting
The court makes its determination
under Federal Rule of Evidence 104(a), assessing whether the
preponderance of the evidence demonstrates the admissibility of
31
the evidence under Rule 702’s standards.
592-93 & n.10.
Daubert, 509 U.S. at
If that is met, questions as to the weight of the
evidence are for the factfinder to resolve under Rule 104(b).
At the outset, it bears noting that the court entertained an
extensive pretrial challenge to Dr. Horrocks’s opinion testimony
and issued a detailed analysis, which granted the motion in part
and denied it in part. 16
(Doc. 152.)
To a large extent, PFG’s
challenges seek to re-litigate those issues.
The court also notes
that PFG does not challenge Dr. Horrocks’s qualifications to offer
any opinion at issue.
Indeed, Dr. Horrocks is listed in the
patents-in-suit as a holder of a patent that is prior art, and the
patents-in-suit favorably cite six publications he authored or coauthored.
(Tr. at 1087–89; Doc. 152 at 20–21.)
Moreover, PFG’s
expert, Dr. Bhat, conceded that Dr. Horrocks had more experience
in the field of intumescents.
(Tr. at 667.)
PFG contends that the evidence presented at trial supports
several arguments as to why Dr. Horrocks’s testing is unreliable
and therefore inadmissible.
First, PFG contends that Dr. Horrocks’s calculation of the
coating thickness on the accused products was unreliable.
379 at 6.)
(Doc.
It cites Dr. Horrocks’s acknowledgment that he never
16
The court granted the motion in part and excluded Dr. Horrocks from
testifying as to his opinion that he observed no swelling of the exposed
SV-X41 coating on a steel substrate with his unaided visual examination.
(Doc. 152 at 22-24.)
32
inquired of Tietex as to the thickness of the coating on its
fabrics and never personally examined the fabrics to determine it.
(Id.)
PFG further represents that Dr. Horrocks conceded it would
have been more accurate to ascertain the thickness by examining
the actual fabrics under a microscope, which he did not do.
(Id.
(citing Tr. at 1192-93).)
Dr. Horrocks testified that he determined the thickness of
Tietex’s coating based on his prior experience working with similar
fabrics, flame retardants, and intumescent coatings. (Tr. at 1109–
10, 1116–18.)
He also testified that he performed an analysis and
determined that the coating used on Tietex’s fabrics was 25 to 53
microns thick. (Id. at 1113.) As to whether he could have observed
the coating on the Tietex fabrics under a microscope, Dr. Horrocks
stated that it would not have been feasible to do so because the
coating permeates the fabric, thus attempting to distinguish a
contrary response in his deposition. 17
(Id. at 1191, 1193 (“So if
this [deposition answer] is relating to the fabric samples I
produced, then it is a feasible way of determining the thickness
because you don't get the penetration here that you do on a Tietex
fabric.
So we have to understand the context you asked that
question and the context of the answer I gave you.”).)
17
Dr.
PFG cross-examined Dr. Horrocks with his agreement in his deposition
to a question that “it would have been more accurate to get the thickness
of the coating on the actual Tietex fabrics to examine them under a
microscope.” (Tr. at 1191-93.)
33
Horrocks
did
allow
that
he
could
have
used
a
microscope
to
determine the coating thickness on the glass woven fabrics used in
his testing, rather than the accused fabrics.
(Id. at 1193 (“Q:
And is it correct that based on the answer that you gave me, that
that was all something you could have done?
with the experimental fabrics I had.”))
directly
dispute
calculations
A: I could have done
In the end, PFG does not
performed
by
Dr.
Horrocks
or
otherwise argue that he lacked the relevant qualifications or
expertise to perform such calculations, relying instead on the
analysis of its expert, Dr. Bhat. So, while this criticism affects
Dr. Horrocks’s credibility, it does not render his testimony
inadmissible.
See Syngenta Crop Protection, LLC v. Willowood
Azoxystrobin, LLC, 267 F. Supp. 3d 649, 655 (M.D.N.C. 2017) (noting
that “Daubert and Rule 702 are safeguards against unreliable or
irrelevant opinions, not guarantees of correctness[,]” and that
“the fact finder, not the court, must determine whether an expert
is
credible
and
whether
the
expert’s
opinions
are
correct.”
(quoting i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831, 854
(Fed. Cir. 2010), aff’d, 564 U.S. 91 (2011))).
Second, PFG relies on Dr. Horrocks’s testimony that in a
previous study he had determined that a glass woven fabric “was
not as inert as anticipated.”
(Doc. 373 at 11; Doc. 379 at 6.)
Dr. Bhat also testified in rebuttal, relying at least in part on
this prior study by Dr. Horrocks, that the “E-glass” substrate Dr.
34
Horrocks used was not inert.
(Tr. at 1310.)
Dr. Horrocks
testified that his glass fabric was inert (Id. at 1121–22) and
that the chemical composition of the intumescents in that study
differed significantly from SV-X41 and thus this prior study could
not serve as a proper basis to predict how the glass fabric would
react.
(Id. at 1204 (“So you cannot compare the results of what
I did 20 years ago for a particular situation with what I have
done here when the situation is completely different.”).)
Thus,
this was a disputed fact issue. Moreover, even if the glass fibers
he used were not fully inert, there is no showing how their use
would have rendered Dr. Horrocks’s opinion unreliable.
As such,
this criticism goes to the weight rather than the admissibility of
Dr. Horrocks’s testing.
See United States v. Baller, 519 F.2d
463, 466 (4th Cir. 1975) (“Unless an exaggerated popular opinion
of the accuracy of a particular technique makes its use prejudicial
or likely to mislead the jury, it is better to admit relevant
scientific evidence in the same manner as other expert testimony
and allow its weight to be attacked by cross-examination and
refutation.”).
Third, PFG raises several issues with regard to Dr. Horrocks’s
testing methods.
It notes that Dr. Horrocks designed his test
protocol for this litigation and never used it previously.
373 at 12; Doc. 379 at 7 (citing Tr. at 1175).)
(Doc.
It further notes
that he admitted he had never used a caliper to measure intumescent
35
materials and contends that his testimony demonstrated that his
measurements were unreliable.
(citing
Tr.
at
1172).)
(Doc. 373 at 11; Doc. 379 at 7–8
Further,
PFG
argues,
Dr.
Horrocks
disregarded the variations in thickness on the glass fabric he
used as a substrate and compared measurements from different
locations as if the coated fabric was uniform.
12; Doc. 379 at 7.)
(Doc. 373 at 11–
PFG also claims that Dr. Horrocks testified
that he could have measured the same location before and after the
testing, but did not.
at 1185).)
(Doc. 373 at 12; Doc. 379 at 7 (citing Tr.
Finally, PFG contends that Dr. Horrocks admitted that
his testing was incapable of detecting swelling of less than 22
percent, due to his calculated margin of error.
(Doc. 373 at 11;
Doc. 379 at 7 (citing Tr. at 1186).)
One consideration in determining admissibility is “whether
experts are testifying ‘about matters growing naturally’ out of
their own independent research, or if ‘they have developed their
opinions expressly for purposes of testifying.’”
Wendell v.
GlaxoSmithKline LLC, 858 F.3d 1227, 1232 (9th Cir. 2017) (quoting
Daubert v. Merrell Dow Pharm., Inc., 43 F.3d 1311, 1317 (9th Cir.
1995)).
“While independent research into the topic at issue is
helpful to establish reliability, its absence does not mean the
experts' methods were unreliable.”
Id. at 1235.
Here, PFG’s
criticism that Dr. Horrocks developed this test for this litigation
carries little persuasiveness where PFG’s own expert acknowledged
36
that there was no established industry test to measure swelling in
intumescents.
(Tr. at 663-64); see Wendell, 858 F.3d at 1235
(noting that “expert testimony may still be reliable and admissible
without peer review and publication,” particularly “when dealing
with rare diseases that do not impel published studies”).
This
methods
court
are
community.
previously
well
found
supported
that
within
Dr.
the
Horrocks’s
relevant
testing
scientific
See, e.g., (Doc. 152 at 17 (“Whatever the criticisms
of Horrocks’ techniques in performing his measurements, it is clear
that his methods of testing flame-retardant fabrics have been peerreviewed and published approximately 200 times.”).) 18
At trial,
Dr. Horrocks opined that there was no established test protocol
within the industry for determining whether a coating swelled.
(Tr. at 1105.)
Dr.
Horrocks
On this point, Dr. Bhat agreed.
outlined
three
considerations
(Id. at 663-64.)
he
designing and performing his test on the coating.
identified
in
(Id. at 1106.)
First, he considered the proper thickness of the coating,
opining that it was important to test the coating at the thickness
as applied to the allegedly infringing fabric, which he determined
to be approximately 25 to 53 microns, as noted above.
Drawing
from his extensive experience in flame retardant chemistry, he
18
What may have differed is the use of microscopy for some measurements
in prior peer-reviewed studies. (Doc. 119-1 at 74.)
37
testified that the coating would function as a “thermally thin”
material at a thickness of 50 microns and “would behave quite
differently” from thicker applications.
Second,
Dr.
Horrocks
testified
(Id. at 1117–18.) 19
that
he
analyzed
the
appropriate substrate on which to test the coating, noting that it
19
Dr. Horrocks testified in relevant part:
In fire science, flame retardant chemistry, we talk about
thermally thick and thermally thin materials.
That's a
scientific way of saying a thin material on one hand can be
defined what it is, and a thick material on another, made
from the same material, whatever it is.
[. . . .]
And a scientist will carry out experiments, and you'll say
for this sort of material, that's thermally thin, and for
another one, it's thermally thick and there's a boundary
between the two.
So now you can see if we've got a coating on a Tietex fabric
of 50 microns, that is definitely thermally thin. You can't
get much thinner than 50 microns. Anything higher than that
is taking you into the thermally thick zone. And so it would
behave quite differently.
So this is why you have to use the same thickness, the proper
thickness in the item you are trying to analyze. Had we been
looking at a bolt plastic with that thick[ness] with the same
material in it, it would have been a different experiment.
But we're dealing with a textile, which itself is probably
about 250 microns thick. The top layer is a 50-micron film.
We have to replicate exactly the conditions that that flame
retardant material is within that fabric counting.
(Tr. at 1116–18.)
The court previously addressed Dr. Horrocks’s
explanation of thermally thin coatings in connection with PFG’s prior
motion to exclude his testimony.
(Doc. 152 at 7-8.)
In short, Dr.
Horrocks described a thermally thin substance as “one which when heated
on the surface it is so thin that there is no heat gradient” and “[t]he
back of it is assumed to be the front temperature.” (Id. at 7 (alteration
in original) (quoting Doc. 119-1 (Horrocks deposition) at 89).) He
distinguished this from a thermally thick coating, “where you have a hot
surface, a cool back and you have a thermal gradient.” (Id. (quoting
Doc. 119-1 (Horrocks deposition) at 89.)).)
38
must be inert so as not to react with the coating when exposed to
heat
or
flame
unreliable.
and
thus
(Id. at 1119.)
render
the
measurement
of
swelling
Based on this consideration, he chose
to perform the experiment on a glass woven fabric, which he
contended would mimic the textile surface of the accused fabrics
while providing an inert surface.
Third,
he
procedures.
considered
the
(Id. at 1123–26.)
(Id. at 1118–23.)
proper
testing
protocol
and
He selected a hand-adjustable
electronic micrometer (also referred to as a caliper) to measure
the coating because the glass fabric was a hard surface.
1123.)
(Id. at
He explained his prior experience using this measurement
tool and believed it was appropriate based on the potential
increases
in
thickness
intumescent coating.
that
he
would
(Id. at 1133–35.)
have
expected
with
an
He testified that it was
a device a person of ordinary skill in the art would have found
acceptable in this application and noted that he rejected the
pressure foot used by Dr. Bhat because, he claimed, it was too
large to measure the small areas at issue and because a caliper
was, in his view, more reliable for this application.
1180-82.)
(Id. at
Dr. Horrocks also responded to Dr. Bhat’s “valid
criticism” that the design of his testing with an electronic
caliper did not permit him to measure the coating thickness in the
same area before and after application of heat and flame.
1130, 1182.)
(Id. at
According to Dr. Horrocks, had he measured the
39
thickness first, he would have had to cut the sample, which would
have destroyed it and compromised the accuracy of the measurement.
(Id.
at
1130.)
Finally,
he
highlighted
the
importance
of
determining experimental error and discussed his calculation and
use of experimental error.
(Id. at 1126, 1139-41.) 20
PFG challenges Dr. Horrocks’s use of an electronic caliper
purchased
approximately
fifteen
years
ago
from
a
company
specializing in selling equipment for hand loading ammunition and
which he stored in a non-climate-controlled garage in the summer
months.
(Doc. 373 at 11 (citing Tr. at 1171-72).)
Dr. Horrocks
testified that he was highly proficient in using a caliper and was
“confident that [he] could get the maximum accuracy out of the
measurements that [he] was using.”
(Tr. at 1133-34.)
He further
disputed Dr. Bhat’s testimony that calipers were not used to
measure fabrics and testified that this method of measurement was
acceptable to an expert in the relevant field.
(Id. at 1134–35.)
The court addressed challenges to the use of the electronic
20
Dr. Horrocks also testified, in response to PFG’s criticisms at trial,
that he did not “foam” the coating before applying it. Dr. Small, PFG’s
Global Business Director (who is also a trained chemist), testified that
PFG does so, which he said would have changed the coating’s density and
made it thicker — between 160 and 250 microns. (Tr. at 373, 396–97.)
Acknowledging he did not do so, Dr. Horrocks noted that there is no
evidence that Dr. Bhat did so, either. (Id. at 1124-25.) He further
opined that not having done so would not affect the validity of his
results, noting that upon drying the foamed coating would nevertheless
collapse to form a thin film, which is what he measured. (Id. at 112425 (“So foaming is a process. It will have no influence on the nature
of the film that is deposited on the surface.”).)
40
caliper in its earlier opinion.
In particular, the court noted
that according to Dr. Horrocks, a thumbwheel micrometer is highly
sensitive, using a digital readout measuring increments of 2.5
microns — that is, one tenth of one thousandth of an inch — and is
sufficiently objective for his purposes to conduct such miniscule
measurements. 21
(Doc. 152 at 15.)
Dr. Horrocks contested PFG’s
claim that the fact the handwheel must be manipulated by hand
rendered
it
too
unreliable.
(Id.)
Rather,
in
one
of
his
depositions, Dr. Horrocks testified that the micrometer can be
reliably
operated
on
the
surfaces
at
issue
with
“quite
reproducible” results and for present purposes the caliper was
more reliable than the pressure foot used by Dr. Bhat because, Dr.
Horrocks contended, the pressure foot was too large to adequately
measure the areas being tested.
(Id. at 15-16.)
Dr. Horrocks had
concluded that the slight variability of results was inherent in
the ordinary application of the instrument and the swelling of the
material itself.
(Id. at 15-17.)
The court allowed that PFG’s criticisms about the use of the
micrometer were valid.
instrument
is
(Id. at 17.)
hand-manipulated
No doubt, the fact that the
interjects
subjectivity into the measuring process.
21
an
element
of
But a micrometer is a
A micron is one thousandth of a millimeter. By comparison, the width
of a human hair is 40 to 80 microns. (Doc. 133-7 at 115; Doc. 133-6
at 8 (citing Robert R. Ogle, Jr. & Michelle J. Fox, Atlas of Human
Hair: Microscopic Characteristics 28 (CRC Press 1999)).)
41
scientific instrument used for measuring, and it is accurate to
the nearest 2.5 microns, which is an extremely small unit of
measure.
Here, Dr. Horrocks testified it was calibrated to within
10 microns.
(Tr. at 1132–33.)
Dr. Horrocks’s measurements using
this device could have been tested and either reproduced or
challenged by Dr. Bhat, had he wished to do so.
offered
his
own
testing
and
results,
he
did
While Dr. Bhat
not
attempt
to
replicate Dr. Horrocks’s testing on a glass substrate and measure
the results using the pressure foot.
See (Doc. 151-1 at 5–6
(acknowledging Dr. Horrocks’s testing but declining to conduct his
own on the fiberglass fabric); Doc. 319; Tr. at 606, 612–13.)
At
trial, Dr. Horrocks again explained his use of the caliper and
opined, without objection, that a person of ordinary skill in the
art would find it acceptable.
(Tr. at 1135.)
Under these circumstances, especially where Dr. Horrocks has
a criticism that the pressure foot was too large to accurately
test the area at issue, PFG has not demonstrated a basis to reverse
the court’s previous ruling denying PFG’s motion to exclude Dr.
Horrocks’s opinion testimony for a jury’s consideration.
(Doc.
152 at 14-15, 22 (finding that, as long as the methods have
scientific validity and are reliable, the accuracy of his method
of measurement using a caliper goes to the weight of the testimony
rather than its admissibility)); see Heller v. Shaw, Inc., 167
F.3d 146, 160 (3d Cir. 1999) (holding that expert testimony cannot
42
be excluded simply because the expert uses one test rather than
another, when both tests are accepted in the field and both reach
reliable results).
Dr. Horrocks testified that he accounted for the variations
in
thickness
as
well
as
the
potential
calculating experimental error. 22
for
human
error
by
He stated that because the
uncoated glass fiber had natural undulations, he conducted several
measurements of it and determined that on average its thickness
was .30 millimeters, with a deviation of ± 20 microns.
1174-75.)
(Tr. at
He then applied a 45-micron layer of SV-X41 coating to
this substrate.
(Id. at 1178.)
(Id. at 1177.)
This produced an uneven surface.
After exposure to heat and flame, he cut the
samples and measured the thickness on various places of the exposed
22
Dr. Horrocks had explained in more detail in his deposition how he
calculated his experimental rate of error. His testing involved coating
glass fabric samples with SV-X41 before exposing them to heat. (Doc.
119-1 at 160-77, 234-37, 258, 260-62.) He used the electronic micrometer
to measure the thickness on each surface. He rounded his measurements
to the nearest hundredth of a millimeter, rounding down if the caliper
recorded a measurement of five thousandths of a millimeter (i.e., a
measurement of .365 millimeters was recorded as .360). (Id. at 37, 7577.) Dr. Horrocks then added his sixteen measurements (Doc. 119-2 at
14-15) and divided the sum by sixteen to calculate an average
measurement.
(Doc. 119-1 at 160-77, 234-37, 258, 260-62.)
He then
calculated the differences between his 16 measurements and the mean.
(Id.) He added those figures and divided by 16 to calculate the average
deviation in his measurements, equaling .02 millimeters, or 20 microns.
(Id.) The coating thickness in the unexposed areas of the substrate
measured 45 microns, and the coating thickness in the exposed areas of
the substrate measured 55 microns. (Id. at 164.) He concluded that the
error rate of ± 20 microns in the unexposed coated regions was greater
than the error rate of ± 10 microns in the heat/flame-exposed regions.
(Id.) Dr. Horrocks repeated this explanation, in more truncated form,
at trial. (Tr.at 1130-31.)
43
coating.
(Id. at 1178-79.)
He measured the deviations on the
exposed coating, which he termed his error rate, of ± 20 microns.
(Id. at 1185.)
He concluded that the measurements of the exposed
coating fell within his deviations noted on the unexposed coating;
in other words, he found no swelling within his rate of error of
22
percent.
(Id.
at
1131,
1135-36,
1186.)
Dr.
Horrocks
acknowledged that he “cannot say there was zero swelling because
there’s always uncertainty in any measurement.”
(Id. at 1131.)
But he did testify, without objection, that he expected to see
swelling of 70 or 80 microns, which he did not observe.
1133.)
(Id. at
He concluded that, based on his knowledge of intumescents,
his measurements, and the swelling he would have expected to see,
there was no scientifically significant swelling (or increase in
thickness) in his test results.
(Id. at 1136.) 23
While Dr. Bhat criticized the rate of experimental error, he
did not dispute Dr. Horrocks’s calculation of it.
13.)
In
fact,
Dr.
Bhat
conceded
that
if
(Id. at 712-
Dr.
Horrocks’s
calculations of his rate of error were correct, then Dr. Horrocks
was correct that his test results were the statistical equivalent
of no swelling.
(Id. at 712-13.)
23
This would be sufficient for a
The parties agreed before trial that a proper interpretation of the
court’s pretrial order, to which PFG did not object, permitted Dr.
Horrocks to opine that “any increase in thickness is not swelling as one
of ordinary skill in the art would understand it.” (Tr. at 34-35.)
44
jury, if believed, to conclude that the SV-X41 applied during the
testing did not swell.
As this court previously found, Dr. Horrocks’s calculated
rate
of
error
was
sufficient
requirements of Rule 702.
to
survive
the
admissibility
(Doc. 152 at 20 (finding that Dr.
Horrocks’s calculated rate of error met the third factor under
Daubert)); see Banks v. United States, 75 Fed. Cl. 294, 301 (2007)
(holding that “[t]he potential rate of error need not be completely
accurate,” but based on sufficient evidence, and any disagreement
with the expert’s calculated rate of error may be raised during
trial and presented on cross examination).
did not dispute his calculation.
Moreover, PFG’s expert
The question is whether Dr.
Horrocks’s opinions he draws from his calculations are reasonably
drawn from his methods and principles.
Dr. Bhat concluded that
the experimental error was “too high an experimental error to
trying [sic] to determine the small change in difference.”
(Tr.
at 713.) But Dr. Horrocks did make clear the limits of his testing:
that it showed no swelling within the limits of his experimental
error rate and that he “cannot say there was zero swelling because
there’s always uncertainty in any measurement.”
(Id. at 1131.)
Dr. Horrocks opined that this was the equivalent of no swelling,
given his knowledge of how intumescents behave, noting that any
error in his calculations would not have been the result of
intumescent swelling.
(Id. at 1131, 1133–36.)
45
Fourth,
reactivity
PFG
theory
contends
is
that
“entirely
unsupported by sufficient facts. 24
Dr.
Horrocks’s
unreliable,”
aluminum
irrelevant,
(Doc. 373 at 13).
foil
and
At trial,
Dr. Horrocks limited his opinion to the criticisms of Dr. Bhat’s
use of an aluminum substrate and offered no opinion as to the
quantum of swelling associated with any purported reaction between
SV-X41 and the aluminum foil substrate.
(Tr. at 1151–52.)
The
court previously considered and denied PFG’s motion to exclude Dr.
Horrocks’s aluminum opinions insofar as they describe criticisms
of the aluminum foil substrate used in Bhat’s supplemental testing.
(Doc. 318 at 36.)
As the court previously noted, “Dr. Horrocks’s
opinions regarding the general chemical principles and reactivity
of aluminum is well supported by scientific literature.”
34.)
(Id. at
PFG offers no persuasive evidence that such testimony is
inadmissible.
See (Id. at 36.)
Finally, PFG contends that Dr. Horrocks failed to support his
“thermally thin/thermally thick opinion with any testable reliable
science” or testing regarding the thermal thickness boundary of
SV-X41.
(Doc. 379 at 10; see Doc. 373 at 9–10.)
Furthermore, it
argues that Dr. Horrocks failed to provide testimony regarding any
standards,
methodology,
or
support
24
within
the
scientific
PFG again does not challenge Dr. Horrocks’s qualifications to evaluate
the potential for a chemical reaction between SV-X41 and an aluminum
substrate.
46
literature to support this theory and failed to apply any such
analysis to the coating at issue.
(Doc. 379 at 11.)
Dr. Horrocks
offered his opinions based on his substantial knowledge of flame
retardant
materials.
Horrocks’s
curriculum
See
(Doc.
vitae
152
lists
at
10
(noting
previous
that
Dr.
peer-reviewed
publications he has authored on thermally thin coatings).)
As Dr.
Horrocks acknowledged, “a scientist will carry out experiments,
and you'll say for this sort of material, that's thermally thin,
and for another one, it's thermally thick and there's a boundary
between the two.”
(Tr. at 1117.)
PFG overlooks the fact that Dr.
Horrocks did in fact perform a test using what he determined to be
a thermally thin coating of SV-X41 with a thickness of 50 microns.
(Id. at 1113, 1118.)
In the final analysis, whether or not the
coating of SV-X41 is thermally thin or where the line between
thermal
thinness
and
thickness
lies
does
not
undermine
Dr.
Horrocks’s opinions; his testing provided support for his opinion
that SV-X41 was applied at a thickness of approximately 50 microns
and that he observed no measurable swelling.
In
sum,
Dr.
Horrocks’s
opinion
testimony
satisfied
preponderance of the evidence standard to be admissible.
the
While
the case presented unique questions and Dr. Horrocks’s testing
methods
differed
differences
goes
from
those
to
their
of
Dr.
Bhat,
credibility
the
—
quintessentially within the role of the jury.
47
a
weight
of
the
consideration
“Vigorous cross-
examination,
instruction
presentation
on
the
of
burden
contrary
of
proof
evidence,
are
the
and
careful
traditional
and
appropriate means of attacking shaky but admissible evidence.”
Daubert, 509 U.S. at 596; see Baller, 519 F.2d at 466 (“Unless an
exaggerated
popular
opinion
of
the
accuracy
of
a particular
technique makes its use prejudicial or likely to mislead the jury,
it is better to admit relevant scientific evidence in the same
manner as other expert testimony and allow its weight to be
attacked by cross-examination and refutation.”).
While Horrocks’s
testing methods differ from Bhat’s, that does not render his
results inadmissible.
5.
PFG
Sufficiency of the Evidence
argues
that
even
if
Dr.
Horrocks’s
testimony
is
admissible, it fails to rebut Dr. Bhat’s finding of infringement.
(Doc. 373 at 12.)
PFG cites to Dr. Horrocks’s admission that Dr.
Bhat’s aluminum pan testing shows that SV-X41 swells (Doc. 373 at
13; Doc. 379 at 4) and contends that Dr. Horrocks’s reported
experimental error rate of 22 percent fails to rebut Dr. Bhat’s
findings of swelling (Doc. 373 at 12).
PFG points out that while
Dr. Horrocks challenged Dr. Bhat’s use of aluminum foil as a
substrate, Dr. Horrocks could not attribute an amount of swelling
to it.
(Id. at 13.)
PFG concludes that Dr. Horrocks’s admission
that SV-X41 does swell at higher thicknesses renders his opinion
48
about the chemical composition “manifestly incredible.”
(Doc. 379
at 5.)
A party is entitled to judgment as a matter of law when no
reasonable jury could have found infringement under the proper
construction of the relevant claims at issue.
Eon Corp. IP
Holdings v. Silver Spring Networks, 815 F.3d 1314, 1320 (Fed. Cir.
2016) (holding district court erred in failing to construe the
claim terms “portable” and “mobile” and defendants were entitled
to judgment as a matter of law as to all claims because “when the
claim terms are properly construed, no reasonable jury could have
found that Silver Spring's electric utility meters infringe.”),
cert. denied sub nom. EON Corp. IP Holdings LLC v. Silver Spring
Networks, Inc., 137 S. Ct. 640 (2017); Dominion Energy, Inc. v.
Alstom Grid LLC, 725 F. App'x 980, 986 (Fed. Cir. 2018) (reversing
district court and granting judgment as a matter of law in favor
of defendant, holding that plaintiff failed to present substantial
evidence
to
support
jury’s
verdict,
where
plaintiff’s
expert
testimony “was conclusory, unsupported, contrary to the evidence
in the case, or not directed to the claim limitation at issue.”);
see MobileMedia Ideas LLC v. Apple Inc., 780 F.3d 1159, 1172 (Fed.
Cir. 2015) (holding that defendant was entitled to judgment as a
matter of law as to patent invalidity, where defendant presented
unrebutted testimony at trial regarding invalidity and plaintiff’s
expert only offered conclusory statement that “I don't see evidence
49
for that”).
Here, PFG fails to demonstrate that this is an “extreme case”
in which judgment as a matter of law should be entered in its
favor, where it bears the burden of proof.
See Gilliam, 1997 WL
429454 at *8; Nobelpharma AB v. Implant Innovations, Inc., 141
F.3d 1059, 1065 (Fed. Cir. 1998) (holding that defendant was
entitled to judgment as a matter of law as to issue of invalidity
despite bearing the burden of proof on this issue, where plaintiff
disclosed admissions by the inventor that he possessed a preferred
method of making the claimed invention and failed to adequately
disclose it). Indeed, PFG fails to identify a single case in which
a court overturned a jury verdict of non-infringement and granted
judgment as a matter of law in favor of the plaintiff.
Contrary
to PFG’s representations in its initial brief (Doc. 373 at 7), the
Federal Circuit in Eon Corp. IP Holdings v. Silver Spring Networks
reversed a jury verdict of infringement and granted judgment as a
matter of law in favor of the defendants.
Eon Corp. IP Holdings,
815 F.3d at 1316.
PFG, not Tietex, bore the burden of proving infringement by
the preponderance of the evidence. During PFG’s cross examination,
Dr. Horrocks admitted that SV-X41 applied to aluminum pans showed
swelling under Dr. Bhat’s experimental conditions based on the
photographs of the testing introduced at trial. (Tr. at 1199 (“Q:
Would you agree that under Dr. Bhat's experimental conditions that
50
his testing showed swelling? A: According to his photographs, yes,
I agree.”).)
Contrary to PFG’s assertion, however, Dr. Horrocks
did in fact criticize this testing — principally the failure to
use a “realistic thickness”
of the coating used (which he stated
was many times the amount called for in the patents and thus
“wholly inappropriate”) as well as Dr. Bhat’s failure to calculate
experimental error for his results.
(Id. at 1142-43.) 25
In addition, as noted elsewhere in this opinion, Dr. Horrocks
opined that SV-X41 lacked a carbonific, such that its chemistry
prevented it from swelling, but rather relied on “flame retardant
chemistry” that “snuffed out” the flame.
(Id. at 1154–59, 1187.)
This was a sufficient ground, if believed by the jury, to support
the conclusion that SV-X41 could not swell when properly applied
and thus a finding of no literal infringement. 26
In the end, Dr. Horrocks and Dr. Bhat presented conflicting
expert
testimony
as
to
the
issue
of
literal
infringement.
25
PFG misconstrues this court’s statement during a side bar that “right
now as I understand it, there's no evidence in the record that he had
any criticism of the aluminum pans.” (Tr. at 1201.) This statement was
made with reference to the fact that Tietex had offered no criticism
regarding Dr. Bhat’s use of an aluminum substrate during his third round
of testing (in accordance with the court’s previous ruling precluding
it), rather than any indication that Dr. Horrocks failed to offer any
criticism of the parameters used generally in those tests. (Id.)
26
Throughout this case, Tietex has consistently maintained that the
amount of intumescent to be applied to the fabric was material, noting
that many items that are not intumescents (such as nylon) will exhibit
some swelling and charring when exposed to heat or flame. The court has
previously articulated the analysis relating to the permissible scope
of the experts’ opinions in this regard and will not repeat it here.
(Doc. 333.)
51
Resolution of these factual issues was properly for the jury to
resolve.
credit
The jury was entitled to disbelieve Dr. Bhat and/or
Dr.
Horrocks’s
testimony
over
that
of
Dr.
Bhat
and,
therefore, it was not unreasonable for the jury to find that PFG’s
patents were not infringed.
See Verizon Servs. Corp., 602 F.3d at
1341. 27
C.
Doctrine of Equivalents
PFG contends that it is entitled to judgment as a matter of
law as to infringement under the doctrine of equivalents because
no reasonable jury could find that SV-X41 was not the substantial
equivalent of an intumescent coating.
(Doc. 373 at 15.)
Tietex
contends that a reasonable jury could have found that PFG failed
to carry its burden based on the “function, way, result” test.
(Doc. 376 at 24).
Tietex also relies on the court’s prior order
denying PFG’s motion for summary judgment in which the court found
that Tietex presented sufficient evidence for a reasonable jury to
find in its favor on the question of infringement under the
doctrine.
(Id. at 26-27 (citing Doc. 152 at 44-45).)
“An accused device that does not literally infringe a claim
27
PFG also contends that the lay testimony offered by Messrs. Holland
and Wildeman is not admissible and therefore insufficient to support a
finding of non-infringement. (Doc. 379 at 11-14.) As noted elsewhere
herein, Holland’s testimony was proper, as it related to his email and
perceptions, and Wildeman’s testimony was admitted to rebut PFG’s claim
of willfulness. Having determined that Dr. Horrocks’s expert testimony
was sufficient to support the jury’s verdict, the court need not consider
PFG’s alternate argument as to these witnesses.
52
may still infringe under the doctrine of equivalents if each
limitation of the claim is met in the accused device either
literally or equivalently.”
Cybor Corp. v. FAS Techs., Inc., 138
F.3d 1448, 1459 (Fed. Cir. 1998) (en banc) (citations omitted),
abrogated on other grounds by Teva Pharm. USA, Inc. v. Sandoz,
Inc., 789 F.3d 1335 (Fed. Cir. 2015).
In applying the doctrine of
equivalents, it is the equivalency to a limitation of a claim, and
not a comparison of the allegedly infringing and patented products
themselves, that is the focus of the inquiry.
Read Corp. v.
Portec, Inc., 970 F.2d 816, 822 n.2 (Fed. Cir. 1992), abrogated on
other grounds by Markman, 52 F.3d at 975.
“An element in the
accused
limitation
product
is
equivalent
to
a
claim
if
the
differences between the two are ‘insubstantial’ to one of ordinary
skill in the art.”
Amgen Inc. v. F. Hoffman-La Roche Ltd., 580
F.3d 1340, 1382 (Fed. Cir. 2009) (citing Warner–Jenkinson Co. v.
Hilton Davis Chem. Co., 520 U.S. 17, 40 (1997)). “Insubstantiality
may
be
determined
by
whether
the
accused
device
performs
substantially the same function in substantially the same way to
obtain the same result as the claim limitation.”
Id. (citing
Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608
(1950)).
A patent holder must provide “particularized testimony and
linking argument as to the ‘insubstantiality of the differences’
between the claimed invention and the accused device or process,
53
or with respect to the function, way, result test when such
evidence is presented to support a finding of infringement under
the doctrine of equivalents.”
Texas Instruments, Inc. v. Cypress
Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996).
As this
court has previously noted, “the case law is clear that evidence
of equivalence must be from the perspective of one of ordinary
skill in the art.”
(Doc. 318 at 43); AquaTex Indus., Inc. v.
Techniche Sols., 479 F.3d 1320, 1329 (Fed. Cir. 2007) (“[T]he
difficulties
and
complexities
of
the
doctrine
require
that
evidence be presented to the jury or other fact-finder through the
particularized testimony of a person of ordinary skill in the art,
typically a qualified expert, who (on a limitation-by-limitation
basis) describes the claim limitations and establishes that those
skilled in the art would recognize the equivalents.”).
In this case, the parties agree that the “function, way,
result” test for the doctrine of equivalents applies.
In ruling
on PFG’s motion in limine to limit evidence related to the doctrine
of
equivalents,
the
court
described
the
relevant
inquiry
as
follows: “Whether a component in the accused subject matter [SVX41] performs substantially the same function as the claimed
limitation
[intumescent,
by
charring
and
swelling]
in
substantially the same way to achieve substantially the same result
[flame retardancy].”
(Doc. 318 at 50 (alterations in original).)
For purposes of the trial, the parties stipulated that SV-X41
54
achieved substantially the same result as the claimed limitation.
(Tr. at 67, 1422.)
Thus, the relevant inquiry was whether the
coating performs substantially the same function in substantially
the same way.
(Id. at 1422.)
Throughout
this
litigation,
the
parties
have
shifted
litigation positions as to infringement under the doctrine of
equivalents.
See, e.g, (Doc. 318 at 42-43, 46-50.)
Even now,
they continue to offer conflicting interpretations of the proper
inquiry under this theory of infringement. Nevertheless, the court
finds that substantial evidence supported the jury’s verdict of
non-infringement.
Both
parties
offered
testimony
from
experts
they
agreed
possessed ordinary skill in the art regarding infringement under
the doctrine of equivalents.
Dr. Bhat testified that SV-X41
performs substantially the same function, in substantially the
same way, to achieve the same result as the claimed intumescent.
(Tr. at 614–15, 617–18.)
he
opined
that
the
Based on the results of his own testing,
coating
performed
substantially
the
same
function as an intumescent, acting as a thermal insulator, in
substantially the same way “[b]y forming a char which acts as an
insulator.”
(Id. at 615.)
He testified that the coating achieves
the same result, which he defined as forming “a thermal barrier.”
(Id.)
In addition to his own testing, he relied on Wallace’s
communication with Royal Adhesives about the coating as well as
55
Holland’s email in which he wrote that the coating “behaves as an
intumescent.”
(Id. at 616–18.)
According to Dr. Bhat, Tietex’s
coating would be considered an intumescent if it both swelled and
extinguished a flame.
(Id. at 618.) 28
Dr. Horrocks testified regarding what he characterized as two
“very
different”
ways
of
achieving
flame
retardancy,
distinguishing between an intumescent, which relies on “barrier
chemistry,”
and
SV-X41,
which
chemistry.”
relies
(Id. at 1154, 1157–58)
on
“flame
retardant
He stated that intumescents
use “barrier chemistry” to swell and form a thermal barrier.
28
PFG’s counsel had the following exchange with Dr. Bhat:
Q: All right. During opening statements, did you hear a
statement that Tietex's coatings do not infringe because it
extinguishes or snuffs out the flame?
A: Yes, I did hear that.
Q: Can a coating that extinguishes a flame also swell?
A: Yes, it can.
Q: Can a coating that snuffs out a flame also swell?
A: Sure, it can.
Q: If Tietex's coating extinguishes a flame and also
swells, what is your opinion?
A: Then it is an intumescent.
Q: And if Tietex's coating snuffs out a flame and also
swells, what is your opinion?
A: It is an intumescent coating.
(Tr. at 618.)
56
(Id.
at
1158.)
However,
SV-X41,
he
said,
uses
flame
retardant
chemistry, first developed in World War II, through the use of
alumina
trihydrate
and
the
combination
of
urea
and
ammonium
polyphosphate, which “form[s] a powerful flame retardant action”
that extinguishes or “snuff[s] out” the flame.
(Id. at 1156–58.)
He noted that the chemicals in the SV-X41 coating also promote a
char formation within the coating.
(Id. at 1158.)
So, while he
appeared to agree that the accused coating functioned like an
intumescent by charring and acting as a flame retardant, he
distinguished the way in which it did so, noting that the alumina
trihydrate releases a water vapor “which will extinguish, snuff
out flame.” (Id.) He concluded that this process did not function
in substantially the same way as an intumescent.
(Id. at 1158–
59.)
PFG first contends that Dr. Horrocks’s opinion regarding the
doctrine
of
equivalents
is
inadmissible
adequately disclosed in his expert report.
because
it
was
not
(Doc. 373 at 16.)
The
court previously denied PFG’s motion in limine on this ground,
finding that his report adequately described the characteristics
that
he
maintained
distinguish
SV-X41
particularly in the way it functioned.
from
an
intumescent,
(Doc. 318 at 51-52 (e.g.,
opining that SV-X41 did not swell at thermally thin applications,
but that the alumina trihydrate gave off moisture that had a
“flame-diluting effect”).)
PFG now points to Dr. Horrocks’s
57
testimony at trial: namely, his statement that “I've only met this
equivalence and I can't say in the last two days, so I'm not too
clear about it.”
(Doc. 373 at 17 (quoting Tr. at 1160).) 29
Tietex
points to the court’s previous rejection of these arguments,
including PFG’s motion to strike Dr. Horrocks’s testimony at trial.
(Doc. 376 at 24 n.10 (citing Doc. 318 at 50-52; Tr.at 1163–69).) 30
29
The relevant exchange between Tietex’s counsel and Dr. Horrocks is
reproduced below for reference:
Q: All right. And then let's split out the doctrine of
equivalents.
Is it your understanding that it relates to
substantially same function and substantially same way?
A: No, it doesn't.
Q: No, I'm sorry, I'm talking about just in general
doctrine of equivalents. Is it your understanding
doctrine of equivalents involves a comparison of the ways
the functions and the results of the intumescent coating
forth in the patent versus the SV-X41 coating?
the
the
and
set
A: I've only met this equivalence and I can't say in
the last two days, so I'm not too clear about it. If you're
asking me is the SV-X41 an equivalent to the intumescent
coating cited in the patent, then the answer is no, it is not
equivalent. That's my interpretation of the meaning of
equivalent, correct.
(Tr. at 1160.)
30
PFG also argues that Dr. Horrocks’s testimony as to non-infringement
under the doctrine of equivalents should have been precluded as not being
disclosed as a contention under the Middle District of North Carolina’s
local patent rules when the case was pending there. (Doc. 373 at 17.)
Yet PFG acknowledges that Tietex did contend that as to the intumescent
finish limitation “no element which is absent literally is present under
the doctrine of equivalents.”
(Id.)
Moreover, while Dr. Horrocks’s
opinions were offered in his depositions, fully litigated at the summary
judgment stage, and the subject of great discussion both before and
during the trial, this objection was never raised. See (Doc. 152 at 4–
11; Doc. 288 at 50–52.)
The court can discern neither surprise nor
prejudice and declines to find Dr. Horrocks’s testimony inadmissible on
this basis at this stage.
58
The court finds that Dr. Horrocks’s testimony does not alter
the
court’s
earlier
conclusion.
Whether
Dr.
Horrocks
fully
understood the names of the legal doctrines applicable in this
case is not the issue. The question is whether his earlier reports
setting forth reasons there was no infringement in his view
adequately provided notice of his opinions.
The court found they
were sufficient, and he was made available for deposition conducted
by experienced counsel. For the reasons given in the court’s prior
rulings on this issue, therefore, PFG’s motion on this basis is
denied.
PFG next contends that even if Dr. Horrocks’s testimony is
admissible, no reasonable jury could find in favor of Tietex as to
the question of infringement under the doctrine of equivalents.
(Doc. 373 at 17-18.)
PFG argues that should SV-X41 extinguish or
“snuff out” flame, as Dr. Horrocks opined, it nevertheless is the
substantial equivalent of an intumescent because it “function[s]
as a thermal insulator by forming a char which acts as an insulator
to form a thermal barrier.”
(Id.)
PFG claims that Tietex admits
that SV-X41 acts as a thermal barrier (id. at 18 (citing Doc. 347
at 16)) and notes that Holland’s August 6, 2013 email states that
the coating “acts as an intumescent” and “forms an intumescent
char” (id. (citing Doc. 373-10; Tr. at 616–17)).
PFG contends
that Dr. Horrocks’s testimony that SV-X41 does not use barrier
chemistry (Tr. at 1154) is a conclusory statement inconsistent
59
with the admissible evidence.
(Doc. 373 at 18.)
This is yet another example of the parties either shifting
their positions or failing to use clarity in their terminology.
Earlier in the case, PFG argued that the function of an intumescent
was to form an intumescent char (Doc. 114 at 19) but later
contended and agreed it was flame retardancy (Doc. 223 at 16).
Tietex similarly appears to have conflated the function and results
prongs of the test, describing the function as “promoting char
formation” as well as forming a “barrier”.
1158.) 31
See (Tr. at 1023,
Whatever the potential overlap in the parties’ analysis,
Dr. Horrocks did testify that the way SV-X41 functioned was
substantially different from that of an intumescent, thus creating
a fact issue for the jury on the doctrine of equivalents.
PFG’s reliance on the statements in Holland’s August 6, 2013
email are similarly unavailing.
To the extent PFG seeks to treat
them as admissions or unchallenged facts, the court has previously
rejected this argument (Doc. 152 at 45) insofar as Royal Adhesives
is not a party to this litigation and the meaning of the statements
was explained by Holland’s testimony.
Moreover, it is curious
that PFG relies on these statements now as fact, given that Holland
has not been qualified as a person of ordinary skill in the art,
31
During PFG’s cross examination, Tietex’s chief executive officer,
Wildeman, conceded that SV-X41 “forms a char, which to some degree forms
a thermal insulation barrier.” (Tr. at 1023.)
60
and its contentions about what he should not have been permitted
to testify about.
See (Doc. 373 at 7–9, 18.) 32
In any event,
these prior statements are insufficient to compel a finding of
infringement under the doctrine of equivalents.
AquaTex, 479 F.3d
at 1329. 33
In sum, at a minimum there was a factual dispute as to whether
SV-X41 functioned in substantially the same way as an intumescent.
This
was
sufficient
to
support
the
jury’s
infringement under the doctrine of equivalents.
verdict
regarding
See Mikohn Gaming
v. Acres Gaming, Inc., No. CV-S-97-1383-EJW, 2001 WL 34778689, at
*13 (D. Nev. Aug. 2, 2001) (finding that the evidence produced at
trial was sufficient to support the jury’s verdict under the
doctrine of equivalents).
D.
Willful Infringement
PFG argues that the evidence presented at trial establishes
that Tietex willfully infringed as a matter of law.
(Doc. 373 at
32
PFG argues that the lay opinion testimony of Wildeman and Holland is
unreliable, irrelevant, and inadmissible as to infringement under the
doctrine of equivalents. (Doc. 373 at 18.) PFG cannot have it both
ways; once it opened the door to the testimony by introducing the August
6, 2013 email, testimony related to the email was admissible for the
limited purpose of willfulness.
The court rejects this argument for
the same reasons as discussed on the question of whether this testimony
was admissible on the issue of literal infringement.
33
Tietex also relies on the testimony of Holland, Wildeman, and Fraser
in support of the jury’s verdict. (Doc. 376 at 25-26.) Even though
Tietex does not bear the burden of proof as to this issue, this evidence
provides little support for a finding of non-infringement under the
doctrine of equivalents because none of these witnesses qualified as a
person of ordinary skill in the art. See AquaTex, 479 F.3d at 1329.
61
19.)
Having determined that a reasonable jury could find that
Tietex did not infringe PFG’s patents, there is no basis on which
to grant PFG’s motion for judgment as a matter of law on the issue
of willful infringement.
III. MOTION FOR A NEW TRIAL
PFG requests in the alternative that the court grant a new
trial as to the issue of infringement based on trial misconduct.
(Doc. 373 at 21–22.)
PFG claims that Tietex repeatedly violated
the court’s instructions and confused the jury with irrelevant,
prejudicial, and unreliable evidence and arguments.
(Id. at 22.)
Even if these individual acts of misconduct do not warrant a new
trial, it contends, Tietex’s conduct, when viewed in the aggregate,
was prejudicial to PFG and rendered the trial unfair.
(Id. at
31.)
A.
Standard of Review
Pursuant to Federal Rule of Civil Procedure 59, a district
court may grant a new trial if “(1) the verdict is against the
clear weight of the evidence, or (2) is based upon evidence which
is false, or (3) will result in a miscarriage of justice, even
though there may be substantial evidence which would prevent the
direction of a verdict.”
Bilenky v. Ryobi Techs., Inc., 115 F.
Supp. 3d 661, 668 (E.D. Va. 2015) (quoting Atlas Food Sys. &
Servs., Inc. v. Crane Nat'l Vendors, Inc., 99 F.3d 587, 594 (4th
Cir. 1996)), aff'd, 666 F. App'x 271 (4th Cir. 2016).
62
“The
decision to grant or deny a motion for a new trial lies at the
heart of the district court's sound discretion and ‘will not be
disturbed absent a clear showing of abuse of discretion.’”
Gibson
v. Total Car Franchising Corp., 223 F.R.D. 265, 276 (M.D.N.C. 2004)
(quoting Wilhelm v. Blue Bell, Inc., 773 F.2d 1429, 1433 (4th Cir.
1985)).
“A court may grant a new trial based on misconduct where there
is a reasonable probability that the jury was improperly influenced
by that conduct.”
omitted).
The
Bilenky, 115 F. Supp. 3d at 677 (citation
party
seeking
demonstrating harmful error.
relief
bears
the
burden
Gibson, 223 F.R.D. at 276.
of
It is
entitled to a new trial “[o]nly when there is a ‘reasonable
probability’ that improper arguments effectively subverted ‘the
jury's reason or [ ] its commitment to decide the issues on the
evidence received and the law as given it by the trial court.’”
Verizon, 602 F.3d at 1335 (quoting Arnold v. E. Air Lines, Inc.,
681 F.2d 186, 197 (4th Cir. 1982)).
“[T]he crucial inquiry is
whether an error occurred in the conduct of the trial that was so
grievous as to have rendered the trial unfair.”
Id. at 1331
(quoting Bristol Steel & Iron Works, Inc. v. Bethlehem Steel Corp.,
41 F.3d 182, 186 (4th Cir. 1994)).
totality
of
the
circumstances,
The court must consider “the
including
‘the
nature
of
the
comments, their frequency, their possible relevancy to the real
issues before the jury, the manner in which the parties and the
63
court treated the comments, the strength of the case (e.g., whether
it is a close case), and the verdict itself.’”
Id. at 1334–35
(quoting Arnold, 681 F.2d at 197).
B.
Analysis
PFG moves for a new trial on the grounds that Tietex’s
counsel: (1) violated the court’s order by criticizing Dr. Bhat’s
testing of SV-X41 on an aluminum pan substrate; (2) attempted to
add limitations to the court’s claim construction; (3) improperly
injected evidence of silica rayon fabric into the case in violation
of the court’s order; and (4) relied on irrelevant and prejudicial
evidence regarding PFG’s alleged motive for bringing the suit.
(Doc. 373 at 22-27.)
The court will address each of these claims
in turn.
1.
PFG
Testimony Regarding Dr. Bhat’s Aluminum Pan
Testing
contends
that
Dr.
Horrocks
repeatedly
violated
the
court’s in limine ruling prohibiting him from testifying about the
general reactivity of aluminum, which led the court to threaten to
hold him in contempt.
(Doc. 373 at 23.)
PFG argues that Dr.
Horrocks continued to “blur the line” between aluminum and aluminum
foil even after the court expressly warned Tietex’s counsel.
(Id.
at 23-24 (citing Tr. at 1196, 1206, 1210–11).)
It contends that
Tietex’s
citing
counsel
encouraged
this
misconduct,
references to “aluminum” rather than “aluminum foil.”
64
repeated
(Id. at 24
(citing Tr. at 677, 679, 682–683).)
Tietex responds that Dr.
Horrocks was entitled to testify as to the reactivity of aluminum
and properly limited his testimony to the reactivity of the
aluminum foil substrate.
(Doc. 377 at 10-11.)
It further
contends that counsel respected the court’s order in its cross
examination of Dr. Bhat.
(Id. at 8.)
Finally, Tietex argues,
there is no indication that the jury was improperly influenced by
any allegedly improper testimony because the verdict did not hinge
on the jury inferring that the aluminum pans were inert.
(Id. at
11-12.)
Prior to trial, the court granted PFG’s motion in limine in
part to exclude Dr. Horrocks’s testimony regarding the reactivity
of the aluminum pan substrate that was used in Dr. Bhat’s testing.
(Doc. 318 at 36.)
The court did so, not because it was unreliable
under Daubert, but because it was disclosed only in a subsequent
deposition by Dr. Horrocks that was limited to criticisms of Dr.
Bhat’s last round of testing that was performed on aluminum foil.
(Id. at 31.)
The court held that any criticisms of the aluminum
foil used in the last round of testing was timely, but that any
criticism of “aluminum” used in the aluminum pans in the previous
rounds of testing was untimely.
The court “directed [the parties]
to instruct their witnesses in conformance with this court’s
order.”
(Id. at 52.)
At trial, during cross examination of Dr. Bhat with respect
65
to his testing of SV-X41 on an aluminum foil substrate, Tietex’s
counsel questioned him several times regarding the reactivity of
“aluminum,” without specifically
(Tr. at 677-83.)
referencing “aluminum foil.”
At no point during this examination did PFG
object to any of the statements it now challenges as improper.
(Id.)
At the conclusion of this questioning, Tietex’s counsel
then posed the following question:
Q:
Okay. So the question was, So do you believe
that aluminum is one of the most reactive metals in
existence? I'm talking about the element aluminum. What
was your answer?”
(Id. at 683.)
Despite PFG’s failure to lodge any objection, the
court intervened, called the parties to the sidebar, and raised
its concern that the question was not limited to aluminum in
aluminum foil. (Id. at 683-86.) During the sidebar, PFG’s counsel
stated that “I’m not sure it’s over the line yet.”
(Id. at 684.)
Had PFG concluded that any of this questioning was improper and
unfairly prejudicial, it should have raised an objection at trial.
See Verizon, 602 F.3d at 1335 (holding district court did not abuse
its discretion in denying plaintiff’s motion for a new trial based
on allegedly improper arguments regarding the claim construction
during the defendant’s closing argument, noting that plaintiff
failed to object to any of the allegedly improper statements or
attempt to rebut them in its own closing argument).
Moreover, any
claim of prejudice is suspect, as PFG conceded at trial that the
66
element of aluminum is reactive.
(Tr. at 684 (“And that’s true
and we’d admit that.”).)
PFG also objects to statements Dr. Horrocks made during his
direct examination.
(Doc. 373 at 23.)
Tietex’s counsel asked
whether he agreed with Dr. Bhat that aluminum foil is inert.
at 1144.)
(Tr.
Dr. Horrocks responded:
Well, aluminum, as we use it in pots and pans, and
aluminum foil, we use in every day life, gives the
impression of being extremely unreactive, otherwise we
wouldn't be using it to our cooking utensils. But once
you expose it to higher temperatures and certain
chemicals, the small oxide layer, which is protecting
the metal aluminum underneath there, is attacked.
For instance, steam, when you boil water in your pan,
that's having no effects on the aluminum pan at all. But
if you expose the oxide layer to high pressure steam,
high temperature steam from 120, 130, 140-degrees, it
goes straight through the aluminum oxide coating into
the aluminum and attacks the aluminum. And the products
are more aluminum oxide plus hydrogen gas. So efficient
is that reaction, that currently researchers on fuel
gas, on hydrogen gas production for the automobile are
looking at steam on molten aluminum as a way of producing
hydrogen very cheaply. It's such an efficient reaction.
And that occurs as soon as you put steam as opposed to
water into contact with the aluminum or aluminum foil.
And when we heat the SV-X41 —
(Id. at 1144-45 (emphasis added).)
Tietex contends that this
response did not violate the court’s order, but this contention
strains
credulity
as
Dr.
Horrocks
went
well
beyond
merely
discussing the reactivity of elemental aluminum and explicitly
referenced aluminum pots or pans on several occasions.
court
noted
in
sustaining
PFG’s
67
objection,
Dr.
As the
Horrocks’s
testimony ignored the court’s order.
(Id. at 1145 (“I'm going to
hold him in contempt if he doesn't stop.
in limine order.
He's violating my motion
He's talked about aluminum pans and pans on
stoves and his answer would suggest that steel pans is a problem.
And I'm not happy with him.
of the jury.”).)
I'm going to say it out loud in front
Contrary to PFG’s assertion, however, any other
blurring of the lines between aluminum and aluminum foil provides
little evidence of trial misconduct, particularly where PFG failed
to object or otherwise move to strike all but one of the challenged
statements.
(Id. at 1196, 1206, 1210, 1211.)
When PFG did object
to one of these challenged statements at trial, the court sustained
its objection.
(Id. at 1211.)
Despite Horrocks’s violation of this court’s order, the court
does not find that this instance of trial misconduct warrants a
new trial.
See Waddington N. Am., Inc. v. Sabert Corp., No. 09-
4883 GEB, 2011 WL 3444150, at *5 (D.N.J. Aug. 5, 2011) (“Generally,
individual elements of misconduct of counsel are insufficient to
justify a new trial where they are not objected to or where the
Court gives a curative instruction upon the request of counsel.”).
When Tietex’s counsel walked Dr. Horrocks through his criticisms
of Dr. Bhat’s testing, there was no mention of aluminum as a
criticism as to any of the testing conducted on aluminum pans.
(Tr.
at
1142-43.)
Rather,
Dr.
Horrocks
offered
independent
criticisms of the testing conducted on the aluminum pans based on
68
the
thickness
of
the
coating
and
Dr.
Bhat’s
failure
to
use
experimental error. (Id.) Dr. Horrocks’s exhibits outlining those
criticisms also carefully omitted any reference to aluminum. (Id.)
Moreover, Dr. Horrocks offered no opinion as to the quantum of
swelling associated with any potential reaction between SV-X41 and
any
aluminum
substrate.
(Id.
at
1152.)
PFG
previously
acknowledged as much (Doc. 373 at 13), just as it acknowledged at
trial that aluminum is reactive (Tr. at 684).
Under these circumstances, the court does not find that “there
is
a
reasonable
probability
that
the
jury
was
improperly
influenced” by any trial misconduct arising from the testimony
regarding Dr. Bhat’s aluminum pan testing.
Bilenky, 115 F. Supp.
3d at 677.
2.
Testimony Regarding the Court’s Claim
Construction
PFG also contends that Tietex offered evidence and arguments
that contradicted the court’s claim construction in contravention
of the court’s prior ruling. (Doc. 373 at 24-26); see (Doc. 318 at
37; Doc. 331 (text order).)
PFG argues that “despite numerous
objections by PFG throughout trial, Tietex repeatedly asserted
that
literal
‘swelling.’”
infringement
(Doc. 373 at 5.)
required
something
more
than
In support of its motion for a new
trial, PFG cites a host of examples of representative statements
that it alleges contradicted the court’s claim construction. (Doc.
69
373 at 25-26; Doc. 380 at 6-7.)
PFG claims that it did object
frequently at trial, noting that the parties spent nearly three
hours in sidebars with the court and even more time outside the
presence of the jury.
(Doc. 380 at 5.)
Within this context, PFG
argues that its failure to object to some of the statements should
not prevent any finding of prejudice.
Tietex
responds
that
the
(Id. at 6.)
challenged
statements
do
not
represent violations of the court’s order when properly considered
in the context in which they were made.
(Doc. 377 at 12-17.)
Tietex acknowledges that Dr. Horrocks did contradict the court’s
claim construction when he stated, “[a]n intumescent is a material
which swells and chars to form a thermal barrier once it’s been
exposed to heat or flame.”
(Id. at 16 (citing Tr. at 1083).)
However, it notes that the court sustained PFG’s objection and
immediately instructed the jury regarding the proper definition of
intumescent.
(Id.)
Moreover, PFG’s own expert, Dr. Bhat, himself
stated virtually the same thing earlier in the case.
(Tr. at 615
(“Q: And what is the result of the claimed intumescent? A: The
result is a thermal barrier.”), 660-661 (stating that for literal
infringement, the issue “is whether the coating swells and acts as
a thermal barrier — swells and chars and acts as a thermal barrier
or not”).)
In light of the court’s curative instruction and the
court’s instructions to the jury at the conclusion of the case,
Tietex contends, there is no basis for finding that the jury
70
applied
an
inappropriate
deliberations.
definition
of
“intumescent”
in
its
(Doc. 377 at 17.)
As Tietex correctly notes, many of these statements were in
fact admissible for another purpose or did not in fact contradict
the court’s claim construction.
For example, PFG relies on the
fact that “Tietex contended repeatedly that the coating had to
swell and char at a specific thickness,” citing to Dr. Horrocks’s
testimony regarding the importance of testing the coating using
the thickness applied to the accused fabrics.
(citing Tr. at 1118).)
(Doc. 373 at 25
PFG similarly relies on the statement by
Tietex’s counsel during his closing argument that “there’s also no
evidence that this thickness [Dr. Bhat tested] was consistent with
the
requirements
of
the
claim
in
the
patent.”
(Id.
at
26
(alteration in original) (citing Tr. at 1383).) PFG did not object
to either of these statements at trial.
As previously discussed,
this testimony does not add a limitation to the claim, but rather
raises a factual dispute regarding the proper method of testing.
As the court addressed extensively before trial, it was permissible
for the competing experts to testify to the proper conditions for
testing for swelling without impermissibly limiting the claim
construction.
(Doc. 333 at 4-12 (citing cases).)
PFG also cites Dr. Horrocks’s testimony that he did not
believe SV-X41 would swell because its chemical composition did
not contain a “swelling agent.”
71
(Doc. 373 at 25 (citing Tr. at
1154).)
PFG did not object to this testimony at trial, nor can
the court discern why it should not be considered as to the issue
of literal infringement.
PFG also challenges Dr. Horrocks’s
testimony that a coating using barrier chemistry “swells and chars
and it promotes that char formation, but in doing so, swells and
puts a barrier on the surface of whatever it’s covering.”
(Id.
(citing
this
Tr.
at
1158).)
Again,
PFG
did
not
object
to
statement, and its expert, Dr. Bhat, said virtually the same thing.
Moreover, it is relevant to the issue of infringement under the
doctrine of equivalents.
PFG also challenges Tietex’s counsel’s use of the phrases
“significant swelling” and “scientifically significant swelling”
when questioning Dr. Horrocks.
(Id. (citing Tr. at 1136).)
as Tietex points out, PFG cannot claim prejudice.
But,
These phrases
use the exact same language that PFG used during its opening
statement.
(Doc. 377 at 15–16 (citing Tr. at 103).)
Moreover,
the phrasing “scientifically significant” or “significant” related
to whether any observed expansion of the coating was outside the
range of experimental error Dr. Horrocks calculated.
In addition,
PFG’s objections to both of these questions were sustained and
thus, pursuant to the pretrial charge, the jury was instructed to
ignore these questions.
(Id. at 75, 77.)
Similarly, PFG takes
issue with statements by Tietex’s counsel that PFG’s coating
“swells to form a thermal barrier” and “swells and chars to form
72
a thermal barrier.”
(Doc. 373 at 25 (citing Tr. at 135, 428).)
As Tietex correctly points out, not only is the discussion of a
thermal barrier relevant to PFG’s claim of infringement under the
doctrine
of
equivalents,
but
PFG’s
counsel
and
witnesses
themselves repeatedly discussed a “thermal barrier” or “insulating
barrier.”
(Doc. 377 at 14 (citing Tr. at 83–84, 89, 96, 116, 118,
119, 128, 203, 205, 239, 247, 249, 250, 252, 253, 298, 308, 326,
615, 813).)
In addition, PFG relies on several statements from Wildeman
and Holland regarding intumescent coatings, (Doc. 373 at 25 (citing
Tr. at 1053); Doc. 380 at 6–7 (citing Tr. at 1000, 1020, 1040,
1051, 1054)), as well as statements by Tietex’s counsel during its
closing argument characterizing some of this testimony.
at 25–26 (citing Tr. at 1387, 1392).)
(Doc. 373
At the outset, it bears
noting that the admission of many if not all of these statements
was a direct result of PFG’s litigation strategy to pursue a claim
of willful infringement at trial and its own failure to object.
See Verizon, 602 F.3d at 1334 (noting one relevant factor for
consideration is “the manner in which the parties and the court
treated the comments”);
(finding
that,
based
see also Bilenky, 115 F. Supp. 3d at 677
on
the
totality
of
the
circumstances,
including the court’s sua sponte admonitions, counsel’s conduct
did not rise to the level that would merit granting a new trial).
Indeed, PFG failed to object at trial to all but two of these
73
challenged statements.
Notably, one of the challenged statements
by Wildeman was elicited during PFG’s own cross examination of the
witness, and PFG failed to move to strike the testimony.
(Tr. at
1020.)
For purposes of proving willful infringement, PFG presented
deposition
testimony
from
Wallace
that
Royal
Adhesives,
the
manufacturer of SV-X41, informed the company on the day the lawsuit
was filed that the coating “behaves as an intumescent.”
at 965.)
See (Id.
The court instructed the jury to consider this testimony
on the limited issue of PFG’s claim of willful infringement.
at 434.)
(Id.
Tietex offered testimony from Wildeman, which the court
deemed admissible for the limited purpose of rebutting PFG’s claim
of willful infringement.
See (Id. at 1032.)
PFG now challenges
Wildeman’s testimony regarding his observation of tests Tietex
performed on intumescent coatings, claiming that it contradicted
the court’s claim construction.
(Doc. 380 at 7 (citing Tr. at
1000, 1020).) 34
However, the jury was repeatedly instructed as
to
claim
the
court’s
construction,
34
and
this
testimony
was
PFG argues that Wildeman’s testimony should have been excluded as
“significantly prejudicial,” relying on the Federal Circuit’s decision
in SSL Servs., LLC v. Citrix Sys., Inc. (Doc. 379 at 14–15); SSL Servs.,
LLC v. Citrix Sys., Inc., 769 F.3d 1073, 1092–93 (Fed. Cir. 2014)
(holding that district court did not err in excluding testimony regarding
good faith belief as to issue of willfulness by Chief Engineer who was
a lay person without the benefit of the court’s claim construction).
This case is distinguishable, as Wildeman had extensive experience with
patents (holding over 30 patents personally (Tr. 1004)), and the court
made repeated efforts to instruct the jury that his testimony was limited
to the issue of willfulness.
74
admissible as to the limited issue of willfulness, not to proof of
whether SV-X41 was in fact an intumescent.
See (Doc. 318 at 40-
41); Adrea, LLC v. Barnes & Noble, Inc., 227 F. Supp. 3d 303, 312
(S.D.N.Y. 2017); Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S.
Ct. 1923, 1935 (2016).
During its cross examination of Wildeman, PFG also questioned
him regarding his prior investigation into whether the accused
fabrics infringed PFG’s patents.
(Tr. at 1018-29, 1034-36.)
Over
Tietex’s objection, PFG introduced the August 6, 2013 email from
Holland of Royal Adhesives to Wallace of Tietex.
34; Doc. 373-10.)
(Id. at 1027-
The document contained a detailed description
of the four-component definition of an intumescent, which this
court rejected during its claim construction.
see Doc. 57 at 11.)
(Doc. 373-10 at 2;
In the email, Holland states that “[o]ur
system behaves as an intumescent but does not exactly follow the
definition
below,”
while
noting
that
“[o]ur
system
forms
an
intumescent char” and “works by forming a thermal insulation
barrier.”
(Doc. 373-10 at 2.)
PFG cross examined Wildeman
regarding both the contents of the letter and his knowledge of the
coating at the time of Tietex’s alleged infringement.
(Tr. at
1027-34.)
During the course of its cross examination of Wildeman, PFG’s
counsel repeatedly elicited otherwise inadmissible testimony for
the purpose of establishing literal infringement.
75
Indeed, one of
the challenged statements identified by PFG was elicited during
PFG’s own cross examination of the witness, and PFG failed to move
to strike the testimony.
Acting
on
its
own
(Doc. 380 at 7 (citing Tr. at 1020).)
initiative,
the
court
not
once
but
twice
sustained objections to the testimony proffered during PFG’s cross
examination of Wildeman to ensure that the jury was instructed
that the evidence was limited to the issue of willfulness.
at 1021-22.) 35
(Tr.
Outside the presence of the jury, the court later
noted:
I allowed [Wildeman] to continue to testify because
there was no objection to some of his answers. But some
of the answers, in my view, went solely to the issue of
willfulness, particularly his testing and what he claims
35
The
relevant
portion
of
the
transcript
is
as
follows:
Q: Is it true that the only testing that Tietex has done,
Tietex itself has done of the SV-X41 is on the fabric substrate?
A: That's correct. However, we also have had Dr. Horrocks
since that time conduct testing on the coating alone.
And the
results of that testing in my opinion are extremely convincing.
THE COURT: Sustained. Please move on.
[. . .]
Q: Did you take any measurements of the coated fabric to
assess intumescent swelling?
A: No, I didn't. I did look under a microscope and I saw no
visible swelling of the coating.
But no, I didn't take any
measurements because, quite frankly, I didn't see any swelling to
measure.
THE COURT: Ladies and gentlemen, I said sustained.
This
testimony is directed to the issue of willfulness in the case as
with my other instruction to you. All right.
(Tr. at 1021-22 (emphasis added).)
76
he did by way of testing.
[. . .]
In my view, those answers go solely to the issue of
willfulness. I have a fine line between controlling the
evidence in the case in light of my motions in limine,
in which case I will act on my own. And I did on some
instances involving the non-infringing alternative
because I've ruled on that. But I'm not going to jump
in and decide what evidence is proper or improper if
there's no objection.
So I just caution both sides about that because
we're going to keep moving forward. And there's been a
dispute about who ought to be able to say what in this
case.
And don't assume I'm going to be sitting here
deciding what's proper and improper sua sponte. It's
not necessarily my role. My role is to try to make sure
there's no error in the case. Sometimes that's invited
by the parties. So I just caution you about that because
I don't intend to — let me put it this way, if you're
expecting me to rule on things when there's no objection,
it's unlikely to happen.
(Id. at 1032–33 (emphasis added).)
Tietex next called Holland as a witness.
The court limited
his lay testimony to his opinions based on his perceptions, and
PFG did not dispute his ability to testify as a lay witness.
at 1044-46); see Fed. R. Evid. 701.
(Id.
However, the court held that
PFG had opened the door to permitting him to testify regarding the
contents of the email. (Tr. at 1046, 1056.)
Over PFG’s objection,
the
regarding
court
permitted
Holland
to
testify
component definition listed in the email.
the
four-
(Id. at 1052-53.)
During a side bar, the court acknowledged the risk of confusing
the jury regarding the court’s claim construction as a result of
77
PFG’s introduction of the email and counselled the parties as
follows:
My understanding is the plaintiffs put this
document into evidence because it was some evidence of
willfulness. That was the plaintiff's decision. When
they did that, the door's open. I agree. And you can
examine him and that's why you examined him on the
document. However, it needs to be clear whether he's
giving his opinion about whether his product meets his
definition that he gave there or whether he meets some
other definition. And it needs to be clear that he's
not telling the jury something inconsistent with the
Court's instruction as to what an intumescent is.
I
leave it to you all as to how far he can go with all
these opinions. And I'll take it question by question.
But my concern is confusing the jury between the Court's
instruction and some other testing, even if it's an
email. It wasn't clear from the question what test he
was applying.
(Id. at 1056-57.)
evidence,
PFG
now
Despite having introduced the email into
challenges
several
regarding the contents of that email.
statements
from
Holland
(Id. at 1051, 1052, 1054.)
However, the court sustained PFG’s objections to other testimony,
including
Holland
one
was
infringement.
of
the
offering
challenged
testimony
as
statements,
to
the
which
ultimate
suggested
issue
of
(Id. at 1040 (“[T]here’s four requirements for an
intumescent coating.” (Holland)); “Can you tell us what is meant
by the term intumescent coatings?” (Tietex’s counsel)).)
These
statements cannot serve as a proper basis for granting a new trial
where the proffered testimony was admissible for purposes of
establishing willful infringement and PFG, not Tietex, bore the
primary responsibility for its admission.
78
See Verizon, 602 F.3d
at 1335.
PFG correctly notes that Tietex did make arguments and pursue
lines of questioning that called the court’s claim construction
into question.
See, e.g., (Tr. at 1083 (“An intumescent is a
material which swells and chars to form a thermal barrier once
it's been exposed to heat or flame.”), 1136 ("Would one of ordinary
skill in the art have seen any scientifically significant swelling
in those results?”).) Furthermore, Tietex’s counsel also made
statements and posed questions that were less than clear as to the
line
between
literal
infringement
doctrine of equivalents.
and
infringement
under
the
See, e.g., (Tr. at 127 (“Ladies and
gentlemen, as I just mentioned, this case comes down to whether
the coating Tietex uses on its fabric swells or not.
will show that the coating does not swell.
does not swell, there is no infringement.
The evidence
And if the coating
It's that simple.”),
639 (“And can we agree, Dr. Bhat, that if Dr. Horrocks is right
and there's no swelling, then there is no infringement?
Can we
agree on that?”).) 36
Despite its contentions that Tietex frequently “stepped over
36
Prior to trial, the court rejected Tietex’s theory that SV-X41 must
swell in order to infringe under the doctrine of equivalents, precluding
Tietex from offering evidence in support of this argument. (Doc. 318
at 49.)
Notably, PFG did not object or otherwise seek a limiting
instruction to address the statement by Tietex’s counsel in his opening
argument that “if the coating does not swell, there is no infringement.”
(Tr. at 127.)
79
[the] line” with respect to the court’s claim construction, (Doc.
373 at 25), PFG failed to object or otherwise seek a curative
instruction at trial to the majority of the challenged statements
it identified.
(Tr. at 135, 1020, 1051, 1054, 1118, 1154, 1158,
1383, 1387, 1392.) For the statements to which PFG did object, the
court sustained all but two objections.
1083, 1136, 1205.) 37
(Tr. at 1000, 1040, 1052,
Furthermore, the court went to great lengths
to ensure the jury was informed of the proper claim construction.
In response to Dr. Horrocks’s statement that “[a]n intumescent is
a material which swells and chars to form a thermal barrier once
it’s been exposed to heat or flame,” the court not only sustained
PFG’s objection, but provided the following limiting instruction
to the jury: “Ladies and gentlemen, I'll remind you that [for]
purposes of this lawsuit, the Court's defined the term intumescent
as I've previously instructed you as a substance that swells and
chars upon exposure to heat or flame.”
its
closing
charge,
the
court
(Id. at 1083-84.)
repeatedly
informed
During
the
jury
regarding the proper definition of intumescent (id. at 1414, 1415,
1417, 1420-1421), and twice instructed the jury that it must apply
the court’s definition of an intumescent rather than any other
definition (id. at 1415, 1420).
The court specifically instructed
37
While not addressed within the parties’ briefing, the court also
sustained PFG’s objections to statements or testimony which suggested
that a coating must swell in order to infringe under the doctrine of
equivalents. See, e.g., (Tr. at 647, 655-60.)
80
the jury that it was not to consider the four-component chemistry
definition
of
infringement.
concerning
an
intumescent
(Id.
Tietex's
at
1440
reliance
for
purposes
of
(“You
may
heard
on
four-component
a
have
determining
evidence
chemistry
definition of intumescent during this case that the Court rejected.
That evidence is not to be considered by you in determining
infringement, but is only to be considered with regard to whether
Tietex reasonably believed it did not infringe the PFG patents.”).)
Under these circumstances, the court finds that PFG has failed
to
demonstrate
a
reasonable
probability
that
any
potential
misconduct arising from Tietex’s representations regarding the
court’s claim construction improperly influenced the jury.
See
Nichols v. Ashland Hosp. Corp., 251 F.3d 496, 501 (4th Cir. 2001)
(“‘[W]hile it may not always be simple for the members of a jury
to obey’ a curative instruction, there is an ‘almost invariable
assumption of the law that jurors follow their instructions.’”
(quoting Richardson v. Marsh, 481 U.S. 200, 206–07 (1987))); cf.
Waddington, 2011 WL 3444150, at *5.
3.
Testimony
Regarding
Alternatives
Alleged
Non-Infringing
PFG contends that a new trial is warranted because Tietex
attempted to introduce evidence that it developed a silica rayon
fabric, a potential non-infringing alternative, even though the
court had ordered such evidence excluded as a result of PFG’s
81
pretrial motion in limine.
(Doc. 373 at 26.)
evidence
rayon
of
the
silica
fabric
The court precluded
as
a
non-infringing
alternative, which could have reduced potential damages, on the
ground that Tietex failed to timely disclose it.
24.)
(Doc. 318 at 23-
However, the court permitted Tietex to present evidence
regarding
the
willfulness.
fabric
as
it
related
to
the
limited
issue
of
(Tr. at 551-56.)
PFG argues that Tietex violated the court’s order in limine
as to evidence of the silica rayon fabric during Wildeman’s
testimony.
Tietex
(Doc. 373 at 26 (citing Tr. at 1007-09).)
correctly
points
out,
the
record
However, as
contains
no
contemporaneous objection during that portion of the testimony,
only a subsequent request for an instruction that such testimony
was limited to the issue of willfulness which, as noted below, the
court subsequently gave. (Doc. 377 at 20–21 (citing Tr. at 1008).)
In response to further questioning from Tietex regarding this
topic, the court intervened sua sponte, even though PFG’s counsel
did
not
object.
(Tr.
at
1013-14.)
Thereafter,
the
court
instructed the jury that this evidence was being allowed for the
limited purpose of PFG’s claim of willfulness.
(Id. at 1016
(“Ladies and gentlemen, before we go any further, let me instruct
you that I'm allowing this testimony as to Tietex and the silica
rayon product for the limited question of your determination of
the plaintiff's claim that any alleged infringement was willful.
82
And it is not to be considered by you in any manner as to the
merits of the underlying infringement claim or as to any damage
issue.
All right?”).)
In its closing charge, the court similarly
instructed the jury that Tietex did not have a non-infringing
alternative for purposes of calculating damages.
(Id. at 1428.)
Therefore, PFG fails to demonstrate that any prejudice it
claims to have suffered from the disclosure of evidence of Tietex’s
silica rayon fabric warrants a new trial.
See Nichols, 251 F.3d
at 501; cf. Waddington, 2011 WL 3444150, at *5.
4.
Reliance on Inadmissible Evidence
PFG also argues that a new trial is warranted because Tietex
offered irrelevant evidence concerning PFG’s motivations to bring
this lawsuit.
(Doc. 373 at 27.)
PFG contends that evidence of
its motive for bringing suit was irrelevant to the issue of
infringement and that Tietex’s repeated efforts to introduce such
evidence were prejudicial and rendered the trial unfair.
(Doc.
380 at 8-11.)
Tietex
contends
that
such
evidence
was
relevant,
as
it
demonstrated PFG’s motive to bring the instant lawsuit and that
PFG lacked a good-faith belief that Tietex was infringing its
patents.
(Doc. 377 at 22-23.)
While acknowledging that the court
disagreed with its arguments at trial, Tietex notes that federal
courts have recognized that a party’s motive can be relevant in
determining credibility and further claims that motive is relevant
83
to the determination of attorneys’ fees to the prevailing party
under 35 U.S.C. § 285.
(Id.).
Nevertheless, Tietex notes that
the court largely sustained PFG’s objections to the introduction
of such evidence at trial and maintains that this evidence was not
in fact presented to the jury.
Within
the
context
of
(Id. at 24.)
a
patent
infringement
action,
“a
plaintiff's motive for bringing suit is irrelevant, except in the
face of certain equitable defenses, bad faith, or questions of
witness bias.”
Samsung Elecs. Co., Ltd. v. NVIDIA Corp., No.
3:14CV757,
WL
2016
754547,
at
*2
(E.D.
Va.
Feb.
24,
2016).
Contrary to Tietex’s assertion, evidence of PFG’s motive for
bringing an infringement action is irrelevant to the liability
issue in the case – whether Tietex infringed PFG’s patents.
Id. 38
To the extent that such evidence may be relevant to the issue of
witness credibility, the probative value of such evidence is
substantially outweighed by the risk of prejudice to PFG.
Fed. R. Evid. 403.
See
As one district court noted,
[A]s in non-patent law, motive for bringing suit is
irrelevant to the trial of a patent infringement suit,
absent circumstances not present here. Moreover, as is
true generally, motive evidence can be quite a
complicated topic. Therefore, admitting motive evidence
would of necessity open the door to countervailing
evidence that would necessarily detract from the real
issues, that would cause delay and waste of time, and
that would confuse the jury.
All of that would be
38
While Tietex did file counterclaims against PFG alleging abuse of
process and unfair and deceptive trade practices, it withdrew those
claims prior to the court’s ruling on PFG’s motion for summary judgment.
(Doc. 147.)
84
unfairly prejudicial and would substantially outweigh
any marginal relevance of the motive evidence offered
here.
Samsung, 2016 WL 754547, at *4 (citations omitted).
Evidence of
PFG’s motive may be relevant to the issue of whether to award
Tietex attorneys’ fees as the prevailing party.
See 35 U.S.C.
§ 285 (providing that the court may award reasonable attorney fees
to the prevailing party in “exceptional cases”); Octane Fitness,
LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 n.6 (2014)
(suggesting
determining
that
a
court
whether
a
may
case
consider
is
several
factors
“exceptional”
in
including
“frivolousness, motivation, objective unreasonableness (both in
the factual and legal components of the case) and the need in
particular circumstances to advance considerations of compensation
and deterrence.”); Lumen View Tech., LLC v. Findthebest.com, Inc.,
24
F.
Supp.
3d
329,
336
(S.D.N.Y.
2014)
(noting
that
the
plaintiff’s motivations in the litigation weigh in favor of a
finding of an “exceptional case”), aff'd, 811 F.3d 479 (Fed. Cir.
2016).
However, this determination is left to the discretion of
the district court and is not a matter for the jury to decide.
See
35
U.S.C.
§ 285
(providing
that
the
court
may
award
of
reasonable attorney’s fees to the prevailing party in “exceptional
cases”).
As PFG notes, none of the cases relied on by Tietex
supports the proposition that such evidence is relevant at trial
to the issue of infringement.
See (Doc. 380 at 10-11.)
85
To the
extent that such evidence may be relevant within this context, the
probative value of such evidence is substantially outweighed by
the risk of unfair prejudice to PFG.
See Fed. R. Evid. 403.
In support of its motion, PFG notes that Tietex: (1) attempted
to introduce evidence that PFG had previously sued Tietex in 2012;
(2) offered evidence and argument that “PFG filed this lawsuit
within hours of having the patent issued”; (3) forecasted evidence
in its opening statement that PFG did not test Tietex’s coating
for swelling before filing the lawsuit; (4) offered testimony that
PFG’s chief executive officer, Walt Jones, had promised Tietex’s
CEO that he would not sue without first attempting to personally
resolve the dispute and allegedly broke that promise by filing
this lawsuit; and (5) attempted to elicit testimony regarding tests
conducted on the accused fabrics at the direction of PFG prior to
bringing this lawsuit.
(Doc. 373 at 27.)
efforts
evidence
to
concerning,
introduce
the
court
of
sustained
While Tietex’s repeated
PFG’s
the
motive
vast
at
majority
trial
of
are
PFG’s
objections to the admission of evidence that properly should have
been excluded.
See,_e.g., (Tr. at 214, 410, 1329.)
PFG did not object to the statement offered during Tietex’s
opening
argument
forecasting
evidence
Tietex’s coating prior to filing suit.
that
PFG
did
(Id. at 127.)
not
test
Nor did
PFG object to Wildeman’s testimony regarding the promise PFG’s CEO
allegedly made to him that Jones would not sue without first
86
attempting to personally resolve the dispute.
(Id. at 985-986.)
Any prejudice resulting from the admission of that testimony is
further limited given that PFG subsequently put on testimony from
Jones in its rebuttal case disputing Wildeman’s testimony.
(Id.
at 1322.)
While the testimony that “PFG filed this lawsuit within
hours
having
of
the
patent
issued”
was
admitted
over
PFG’s
objection, (id. at 213-14), the court does not find that this
evidence
created
a
reasonable
probability
that
the
jury
was
improperly influenced, where the majority of such evidence was
admitted as a result of PFG’s own failure to object and PFG
introduced evidence at trial to mitigate any prejudicial effects.
5.
Consideration of Cumulative Effect of Evidence
Finally, PFG further argues that even if the individual acts
of misconduct do not warrant a new trial, Tietex’s conduct, when
viewed in the aggregate, was prejudicial to PFG and rendered the
trial unfair.
(Doc. 373 at 27–32.)
To be sure, the tactics of
Tietex at trial were aggressive and, on occasion, may have resulted
in the admission of evidence that was objectionable.
But in these
hotly-contested lawsuits, the court repeatedly warned the parties
that it was their duty to object and invoke the court’s remedies.
The court also repeatedly took steps to enforce its prior rulings
and
ensure
the
jury
was
properly
instructed
as
to
literal
infringement and infringement under the doctrine of equivalents.
See, e.g., (Tr. at 1083-84, 1414, 1415, 1417, 1420-1421, 1440);
87
see Nichols, 251 F.3d at 501.
On balance and considering the complete record, the court
concludes that PFG has failed to meet its burden of demonstrating
a “‘reasonable probability[ ]’ that improper arguments effectively
subverted ‘the jury's reason or [ ] its commitment to decide the
issues on the evidence received and the law as given it by the
trial court.’”
Verizon, 602 F.3d at 1335 (quoting Arnold, 681
F.2d at 197). 39
IV.
CONCLUSION
For the reasons stated above, therefore,
IT IS ORDERED that PFG’s motion for judgment as a matter of
law (Doc. 372) and its alternative motion for new trial (Doc. 372)
are DENIED.
A Judgment in accordance with these rulings will be entered
separately.
/s/
Thomas D. Schroeder
United States District Judge
March 8, 2019
39
While the court does not condone these tactics, they do not rise to
the level of having rendered the trial unfair. Cf. Waddington, 2011 WL
3444150, at *3 (granting motion for new trial by plaintiffs in patent
infringement action, where defendant’s counsel and witnesses “repeatedly
disregarded the orders and rulings set forth above, brought in improper
evidence, made numerous arguments that were contrary to the law,
denigrated the presumption of validity, and substituted leading
questions for the testimony of [defendant’s] witnesses.”); Lucent
Techs., Inc. v. Extreme Networks, Inc., 231 F.R.D. 453, 454 (D. Del.
2005) (denying defendant’s motion to reconsider court’s order granting
new trial in favor of plaintiff in patent case, where defendant’s counsel
repeatedly violated district court’s orders despite being forewarned
that the failure to adhere to such orders could result in a new trial).
88
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