WCM Industries, Inc. v. IPS Corporation et al

Filing 593

ORDER denying 521 Sealed Motion; denying 522 Sealed Motion; denying 524 Sealed Motion. Signed by Judge Jon Phipps McCalla on 5/11/2016. (McCalla, Jon)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TENNESSEE
WESTERN DIVISION

WCM INDUSTRIES, INC.,
Plaintiff,
v.
IPS CORPORATION,
Defendant.

)
)
) CIVIL ACTION NO.: 2:13-cv-02019-JPM-tmp
)
)
)
Jury Trial Demanded
)
)
)

ORDER DENYING MOTION FOR JUDGMENT AS A MATTER OF LAW OF LITERAL
INFRINGEMENT; DENYING RENEWED MOTION FOR JUDGMENT AS A MATTER OF
LAW OF NO LITERAL INFRINGEMENT, NO INDUCED INFRINGEMENT, AND NO
CONTRIBUTORY INFRINGEMENT; AND DENYING RENEWED MOTION FOR
JUDGMENT AS A MATTER OF LAW OF INVALIDITY

Before the Court are the following motions:
1.

Plaintiff WCM Industries, Inc.’s (“WCM”) Motion for
Judgment as a Matter of Law of Literal Infringement (ECF
No. 521), filed January 4, 2016;

2.

Defendant IPS Corporation’s (“IPS”) Renewed Motion for
Judgment as a Matter of Law of No Literal Infringement, No
Induced Infringement, and No Contributory Infringement (ECF
No. 522), filed January 4, 2016; and

3.

IPS’s Renewed Motion for Judgment as a Matter of Law of
Invalidity (ECF No. 524), filed January 4, 2016.
For the reasons that follow, the Court DENIES the instant

motions.

I.

BACKGROUND
Plaintiff WCM brought claims for patent infringement

against Defendant IPS, alleging that IPS infringed claims in
three of WCM’s patents. 1
424.)

(Joint Pretrial Order at 2, ECF No.

IPS denied that it infringed the patents and also

asserted claims that WCM’s patents were invalid.

(Id.)

A jury trial was held over ten days between October 13,
2015, and October 27, 2015.
444, 447, 451, 453.)

(ECF Nos. 430, 432-434, 439, 441,

On October 27, 2015, the jury returned a

verdict for WCM, finding that IPS had willfully infringed the
asserted claims and that the asserted claims were not invalid.
(See Jury Verdict Form, ECF No. 454.)
On December 4, 2015, the Court granted in part and denied
in part IPS’s motions for judgment as a matter of law.
477.)

(ECF No.

The Court granted judgment as a matter of law of

noninfringement under the doctrine of equivalents and granted
judgment as a matter of law of no willfulness as to the ’272
Patent, which was issued after the filing of the complaint in
this case.

(See id. at 6-8, 9, 11-12.)

judgment on December 4, 2015.

The Court entered a

(ECF No. 478.)

1

The three patents at issue are U.S. Patent No. 8,302,220 (“the ’220
Patent”); U.S. Patent No. 8,321,970 (“the ’970 Patent”); and U.S. Patent No.
8,584,272 (“the ’272 Patent”). (Joint Pretrial Order at 2, ECF No. 424.)
The IPS products that WCM alleges infringe WCM’s patents (“the Accused
Products”) include the Original Classic line and the Revised Classic line of
bathtub overflow and drain assemblies. (See id. at 3-4.)

2

On January 4, 2016, WCM filed a motion for judgment as a
matter of law of literal infringement.

(ECF No. 521.)

responded in opposition on January 22, 2016.

IPS

(ECF No. 535.)

With leave of Court, WCM filed a reply brief on February 8,
2016.

(ECF No. 580.)

2016.

IPS filed a sur-reply on February 16,

(ECF No. 586.)

On January 4, 2016, IPS filed a renewed motion for judgment
as a matter of law of no literal infringement, no induced
infringement, and no contributory infringement.

(ECF No. 522.)

WCM responded in opposition on January 22, 2016.

(ECF No. 539.)

With leave of Court, IPS filed a reply brief on February 8,
2016.

(ECF No. 574.)

On January 4, 2016, IPS filed a renewed motion for judgment
as a matter of law of invalidity.
in opposition on January 22, 2016.

(ECF No. 524.)
(ECF No. 540.)

WCM responded

of Court, IPS filed a reply on February 8, 2016.

With leave
(ECF No. 577.)

On March 1, 2016, the Court held a hearing on several
motions, including the instant motions.

(Min. Entry, ECF No.

589.)
II.

LEGAL STANDARD
Rule 50 of the Federal Rules of Civil Procedure provides

that a court may grant a motion for judgment as a matter of law
when “a party has been fully heard on an issue during a jury
trial and the court finds that a reasonable jury would not have

3

a legally sufficient evidentiary basis to find for the party on
that issue.”

Fed. R. Civ. P. 50(a)(1); accord Interactive

Pictures Corp. v. Infinite Pictures, Inc., 274 F.3d 1371, 1375
(Fed. Cir. 2001) (quoting Fed. R. Civ. P. 50(a)).
Judgment as a matter of law may only be granted if, when
viewing the evidence in a light most favorable to the
non-moving party, giving that party the benefit of all
reasonable inferences, there is no genuine issue of
material fact for the jury, and reasonable minds could
come to but one conclusion in favor of the moving party.
Barnes v. City of Cincinnati, 401 F.3d 729, 736 (6th Cir. 2005),
cert. denied, 546 U.S. 1003 (2005).

After trial, a party may

file a renewed motion for judgment as a matter of law if the
court did not grant the earlier Rule 50(a) motion.
P. 50(b).

Fed. R. Civ.

“A motion under Rule 50(b) is not allowed unless the

movant sought relief on similar grounds under Rule 50(a) before
the case was submitted to the jury.”

Exxon Shipping Co. v.

Baker, 554 U.S. 471, 485 n.5 (2008) (quoting 11 Charles Alan
Wright & Arthur R. Miller, Federal Practice and Procedure
§ 2810.1 pp. 127-128 (2d ed. 1995)).
III. ANALYSIS
A.

Motion for Judgment as a Matter of Law of Literal
Infringement

WCM asserts that it presented substantial evidence at trial
that IPS’s Classic products infringed the asserted claims.
No. 521 at 8.)

(ECF

IPS responds on the merits but also argues that

WCM has waived its ability to move for judgment as a matter of

4

law on any infringement theory.

(ECF No. 535 at 1, 5-7.)

The

Court agrees with IPS and need not reach the merits of WCM’s
motion because the motion is procedurally barred.
WCM moved for judgment as a matter of law of literal
infringement for the first time post-verdict.

WCM waived its

right to bring this motion by failing to move for judgment as a
matter of law during trial.
n.5.

See Exxon Shipping, 554 U.S. at 485

WCM supports its position on the procedural issue with

cases that involve motions distinguishable from the instant
motion.

WCM asserts in its reply and asserted at the motion

hearing that failing to move for judgment as a matter of law
under Rule 50(a) is not fatal.

(See ECF No. 580 at 1-2 (citing

Riverview Invs., Inc. v. Ottawa Cmty. Improvement Corp., 899
F.2d 474, 477 (6th Cir. 1990)).)

In Riverview and Boynton v.

TRW, Inc., 858 F.2d 1178 (6th Cir. 1988) (en banc), two cases
cited by WCM, the moving parties’ noncompliance with Rule 50
arose from failure to renew the motions for directed verdict 2 at
the close of all proof.

See 899 F.2d at 477; 858 F.2d at 1185.

The instant case is not analogous to Riverview or Boynton
because while the moving parties in those cases had moved for
directed verdict at some point during trial, WCM failed to move
2
At the time of Boynton and Riverview, motions for judgment as a matter
of law were known as motions for a directed verdict. See DXS, Inc. v.
Siemens Med. Sys., Inc., 100 F.3d 462, 468 n.4 (6th Cir. 1996) (explaining
that “a motion for directed verdict is now referred to as a motion for
judgment as a matter of law”).

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for judgment as a matter of law of literal infringement until
its post-verdict filing.

Accordingly, WCM’s motion for judgment

as a matter of law of literal infringement is DENIED.
B.

Renewed Motion for Judgment as a Matter of Law of No
Literal Infringement, No Induced Infringement, and No
Contributory Infringement

IPS again asserts in its renewed motion for judgment as a
matter of law of noninfringement that insufficient evidence was
presented at trial to support findings of direct infringement as
to IPS’s Original Classic products and indirect infringement as
to IPS’s Original and Revised Classic Rough-In Products.
ECF No. 522.)

(See

WCM contends that sufficient evidence of both

direct and indirect infringement was presented and also that
certain arguments in IPS’s motion were waived by IPS by raising
them post-verdict.

(See ECF No. 539.)

The Court finds that

there was legally sufficient evidence to support a finding of
literal infringement, induced infringement, and contributory
infringement, and that any new arguments raised by IPS in its
renewed motion have been waived.

Thus, the Court denies the

motion.
First, IPS argues that it is entitled to judgment as a
matter of law of no indirect infringement as to the Revised
Classic Rough-In products because the Revised Classic products,
which differ only in that they contain a decorative cap while
the Rough-In products do not, have been found not to infringe.

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(ECF No. 522 at 5-7.)

The Court addresses IPS’s flawed

reasoning in the analysis of IPS’s motion to amend judgment (see
ECF No. 592 at 5-7 & n.4) and reiterates that the finding that
the Revised Classic and Revised Classic Rough-In products do not
directly infringe applies only to IPS and not to others.

Thus,

IPS is not entitled to judgment as a matter of law of no
indirect infringement as to the Revised Classic Rough-In
products.
Second, IPS argues that the jury’s finding of literal
direct infringement as to the Original Classic products is not
supported because WCM did not present sufficient evidence that
the products contained the “lugs” required by the asserted
claims.

(ECF No. 522 at 7-12.)

WCM not only asserts that the

testimony at trial was sufficient evidence to support the
verdict of literal infringement, but also that the jurors had
physical samples of the products, which they could assemble and
disassemble in their evaluation of the claims, available to them
in evidence.

(ECF No. 539 at 4-6.)

The Court agrees with WCM

that the jury’s finding of literal infringement is supported by
sufficient evidence.

The Court has found that there was

sufficient evidence from which the jury could infer that lugs
were present on the locknuts of the Accused Products.

(See ECF

No. 477 at 5-6 (concluding that “high points” could be
reasonably inferred to be lugs that detachably frictionally

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engage with a cap).)

Since reasonable inferences based on the

evidence at trial are sufficient to uphold a determination of
infringement, see Nordock, Inc. v. Sys. Inc., 803 F.3d 1344,
1362 (Fed. Cir. 2015), petition for cert. filed, 2016 WL 386728
(U.S. Jan. 28, 2016) (No. 15-978), to overturn the jury’s
verdict would be unjustified.

Further, to the extent that there

was conflicting testimony presented at trial, 3 the Court cannot
substitute its judgment for the jury’s.

Connell v. Sears,

Roebuck & Co., 722 F.2d 1542, 1546 (Fed. Cir. 1983) (“The court
should not be guided by its view of which side has the better
case or by what it would have done had it been serving on the
jury.”).

Thus, IPS is not entitled to judgment as a matter of

law of no literal direct infringement as to the Original Classic
products.
Third, IPS argues that the jury’s finding of literal direct
infringement as to the Original Classic Rough-In products and
the Press-In Trim kits is not supported because of the absence
of a requisite cap from such products.

(ECF No. 522 at 12-13.)

The Court need not address the substance of this argument
because IPS failed to raise this ground for judgment as a matter

3

IPS cites to testimony that the “high points” did not engage with the
cap (ECF No. 522 at 9 (citing Trial Tr. 1184:23-1185:1, Oct. 19, 2015, ECF
No. 467; Trial Tr. 1279:16-1280:6, Oct. 20, 2015, ECF No. 468).) WCM argues
that IPS has provided excerpts of the testimony out of context and ignores
testimony by the same witnesses that contradict IPS’s conclusions. (ECF No.
539 at 7-9.)

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of law of no literal infringement in its earlier Rule 50(a)
motion.

(See ECF No. 435.)

Since “[a] post-trial motion for

judgment can be granted only on grounds advanced in the
pre-verdict motion,” IPS is not entitled to judgment as a matter
of law of no literal direct infringement as to the Original
Classic Rough-In products or the Press-In Trim Kits.

Am. &

Foreign Ins. Co. v. Bolt, 106 F.3d 155, 160 (6th Cir. 1997)
(quoting Fed. R. Civ. P. 50(b) advisory committee’s note to 1991
amendment).
Lastly,

IPS

argues

that

the

jury’s

finding

of

indirect

infringement, both induced and contributory, is not supported
because there is no direct infringement on which a finding of
indirect infringement necessarily depends and because there was no
belief or intent to infringe on IPS’s part.
13-15.)

(ECF No. 522 at

The Court has found that there was sufficient evidence to

support the jury verdict of induced and contributory infringement.
(See ECF No. 592 at 5-7; see also ECF No. 477 at 8-9.)

As to the

absence of a belief or intent to infringe, such argument was not
raised in IPS’s Rule 50(a) motion (see ECF No. 435 at 13), and
thus, IPS is not entitled to judgment as a matter of law of no
induced or contributory infringement.

See Bolt, 106 F.3d at 160.

Accordingly, because there was legally sufficient evidence
presented at trial to support the findings of infringement, and
because IPS’s new literal and indirect infringement arguments

9

were waived when not raised in its initial Rule 50(a) motion,
the Court DENIES the renewed motion for judgment as a matter of
law of no literal infringement, no induced infringement, and no
contributory infringement.
C.

Renewed Motion for Judgment as a Matter of Law of
Invalidity

IPS asserts in its renewed motion for judgment as a matter
of law of invalidity that WCM failed to present sufficient
evidence at trial that the asserted claims were not invalid or
not obvious.

(ECF No. 524.)

IPS further asserts that the jury

instructions on anticipation and the on-sale bar were erroneous
and prejudicial to IPS.

(Id. at 13-14.)

WCM argues that IPS

mischaracterizes the testimony at trial and that IPS was
precluded from raising the on-sale bar issue at trial and waived
the objections it is now asserting.

(ECF No. 540 at 4-5, 8.)

The Court finds that there was legally sufficient evidence with
which to support a finding of validity and non-obviousness and
that the jury instructions were not erroneous or prejudicial to
IPS.

Thus, the Court denies the motion.
1.

Sufficient Evidence of Invalidity

IPS continues to argue that the on-sale bar pursuant to 35
U.S.C. § 102(b) renders the asserted claims invalid.
524 at 10.) 4
4

(ECF No.

The on-sale bar issue is one that the Court already

IPS argues that WCM presented testimony at trial that advertising and

(cont.)

10

determined IPS could not raise at trial.

(See ECF No. 389 at

22-24 (denying summary judgment because IPS was procedurally
barred from raising a § 102(b) defense).)

It cannot now serve

as the basis for judgment as a matter of law.
IPS also argues that WCM failed to present sufficient
evidence that the asserted claims were entitled to an earlier
priority date than a year before the filing of the
continuations-in-part that gave rise to the asserted claims.
(ECF No. 524 at 11.)

Since a patent is presumed valid, the

party challenging validity must establish by clear and
convincing evidence that the asserted patent is invalid.
PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305
(Fed. Cir. 2008).

Once the prima facie case of invalidity is

shown, the party relying on validity is then obligated to prove
that it is “entitled to claim priority to the filing date of the
Original Application.”

Id. at 1303-05.

IPS’s argument for a

prima facie case of invalidity rests on WCM’s evidence of sales
and marketing of the Innovator product, also referred to as the
Eliminator product, in August 2001.

(See ECF No. 524 at 2-3.)

As noted above, however, the defense of invalidity based on a
§ 102(b) is not one IPS was permitted to raise.

In addition,

the burden is on IPS to establish a prima facie case of
sales of the Innovator product began in August 2001, which was more than one
year before even the earliest priority date of the asserted claims. (ECF No.
524 at 10.)

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obviousness.

To do so “based on a combination of elements in

the prior art, the law requires a motivation [of a person of
ordinary skill in the art] to select the references and to
combine them in the particular claimed manner to reach the
claimed invention.”

Eli Lilly & Co. v. Zenith Goldline Pharms.,

471 F.3d 1369, 1379-80 (Fed. Cir. 2006).

IPS’s opinion witness,

James Paschal, stated several times that a person of ordinary
skill in the art would be motivated to combine prior art
references simply because the references “cover the same type of
subject matter.”

(Trial Tr. 1422:2-11, 1422:22-1423:22, Oct.

20, 2015, ECF No. 469.)

Without an explanation of “the specific

understanding or principle within the knowledge of a skilled
artisan that would motivate one . . . to make the combination,”
however, IPS cannot rely on the opinion testimony to establish
obviousness.
1998).

In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir.

The witness also admitted during cross-examination that

elements of the asserted patents were not present in the prior
art references uses to form his opinion.

(See, e.g., Trial Tr.

1466:20-1468:3, Oct. 20, 2015, ECF No. 469.)
Furthermore, even if IPS had established invalidity by
clear and convincing evidence, WCM met its burden to prove
entitlement to earlier priority dates.

“Priority . . . depends

upon conception and reduction to practice.

Priority, concept,

and reduction to practice are questions of law which are based

12

on subsidiary factual findings.”
1321, 1327 (Fed. Cir. 1998).

Cooper v. Goldfarb, 154 F.3d

“A reduction to practice can be

either a constructive reduction to practice, which occurs when a
patent application is filed,[ 5] or an actual reduction to
practice.”

Id.

WCM presented testimony from inventor William

Ball that he began developing the original engineering drawings
and prototypes in late 1999, even before the original patent
application from which the asserted patents resulted.
Tr. 301:21-330:10, Oct. 15, 2015, ECF No. 463.)

(Trial

The Court finds

that there was sufficient evidence presented to prove WCM’s
entitlement to the priority dates it asserted.
2.

Jury Instructions and Verdict Form

IPS asserts that the jury instructions and question 14(a)
of the jury verdict form allowed jurors to apply § 102(a) or
§ 102(b) to the prior art and use either the date of
conception/reduction to practice or the date of filing, which
was erroneous.

(ECF No. 524 at 13-14.)

Since WCM failed to

provide priority analysis at trial, IPS argues that it cannot
rely on any § 102(b) application except for the continuation-inpart applications.

(Id. at 14.)

5

While IPS is correct that the asserted patents issued from
continuations-in-part (ECF No. 577 at 3; see ECF Nos. 75-1, 75-4, 75-8), the
jury was only asked to choose, for each claim, either the date of
conception/reduction to practice or the date of its respective patent
application. (See ECF No. 454 at 24-25.) The jury was not instructed on
continuations-in-part for its priority determinations. (See ECF No. 446.)

13

As an initial matter, IPS was precluded from raising
§ 102(b) grounds at trial, which eliminates prejudice to IPS in
the jury instructions and jury verdict form.

Also, IPS is

incorrect that question 14(a) conflates § 102(a) and § 102(b),
since question 14(a) corresponds to § 102(a) and question 14(b)
corresponds to § 102(b).

During discussions with the Court

before the jury charge, IPS’s counsel agreed that question 14(b)
“track[ed] the statute [§ 102(b)]” and did not object to
question 14(a).

(Trial Tr. 1907:15-19, 1908:17-20, Oct. 22,

2015, ECF No. 472.)

Thus, since IPS did not “stat[e] distinctly

the matter objected to and the grounds for the objection,” IPS’s
objection must be waived.

Bonkowski v. Allstate Ins. Co., No.

08-15319, 2012 WL 3013747, at *7 (E.D. Mich. July 20, 2012),
aff’d 544 F. App’x 597, 608 (6th Cir. 2013) (quoting Fed. R.
Civ. P. 51(c)(1)); see also Motorola, Inc. v. Interdigital Tech.
Corp., 121 F.3d 1461, 1465 (Fed. Cir. 1997). 6
Accordingly, because there was legally sufficient evidence
as to validity and non-obviousness and because the jury
instructions were not erroneous or prejudicial to IPS, the Court

6

IPS asserts that it is either entitled to a new trial or a setting
aside of the jury verdict because of the erroneous jury instructions. (ECF
No. 524 at 13.) Pursuant to Rule 59(a), a new trial is only permitted when
there is a “seriously erroneous result.” Holmes v. City of Massillon, Ohio,
78 F.3d 1041, 1045-46 (providing that such result is “evidenced by: (1) the
verdict being against the weight of the evidence; (2) the damages being
excessive; or (3) the trial being unfair to the moving party in some
fashion”). As discussed above, the Court finds that there is no “seriously
erroneous result” that would justify a new trial.

14

DENIES the renewed motion for judgment as a matter of law of
invalidity.
IV.

CONCLUSION
For the foregoing reasons, WCM’s Motion for Judgment as a

Matter of Law of Literal Infringement; IPS’s Renewed Motion for
Judgment as a Matter of Law of No Literal Infringement, No
Induced Infringement, and No Contributory Infringement; and
IPS’s Renewed Motion for Judgment as a Matter of Law of
Invalidity are DENIED.
IT IS SO ORDERED, this 11th day of May, 2016.

/s/ Jon P. McCalla
JON P. McCALLA
UNITED STATES DISTRICT JUDGE

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