SynQor, Inc. v. Artesyn Technologies, Inc. et al

Filing 1264

MEMORANDUM OPINION and ORDER - The Court DENIES Defendants motions for JMOL on the issues related to the invalidity of the patents-in-suit because the Court concludes that sufficient evidence supports the jurys verdict on these issues. Signed by Judge T. John Ward on 8/17/11. (ehs, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
SYNQOR, INC,
v.
ARTESYN TECHNOLOGIES, INC., et al.

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§ CASE NO: 2:07-CV-497-TJW-CE
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MEMORANDUM OPINION AND ORDER
I.

INTRODUCTION
Pending before the Court are Defendants‟ Delta Electronics, Inc., Delta Products Corp.,

Murata Electronics North America, Inc., Murata Manufacturing Co., Ltd., Murata Power
Solutions, Inc., and Power-One, Inc. (collectively the “Fish Defendants”) motions for judgment
as a matter of law (“JMOL”) on the issues relating to the validity of the patents-in-suit1 (Dkt.
Nos. 846 and 959). Also pending before the Court are Defendants‟ Astec America, Inc., Artesyn
Technologies, Inc., Cherokee International Corp. and Lineage Power Corp. motions for JMOL
on the issues relating to the validity of the patents-in-suit (Dkt. Nos. 867, 961, 962, and 964).
Also pending before the Court is Defendant‟s Bel Fuse, Inc., motion for JMOL on the issues
relating to the validity of the patents-in-suit (Dkt. No. 975). Because the Court has only entered
a partial judgment on the verdict, the Court considers all of these pending motions as motions for
judgment as a matter of law pursuant to Fed. R. Civ. P. 50(a). Having carefully considered the
parties‟ submissions, the record, and the applicable law, the Court finds that the motions should
be DENIED.

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U.S. Patent Nos. 7,072,190 (“the „190 patent”) (PTX1), 7,269,034 (“the „034 patent”) (PTX2),
7,272,021 (“the „021 patent”) (PTX3), 7,558,083 (“the „083 patent”) (PTX5), 7,564,702 (“the
„702 patent”) (PTX4).
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II.

FACTUAL AND PROCEDURAL BACKGROUND
Near the close of Plaintiff‟s case-in-chief, the Court inquired on whether the parties were

willing to stipulate to filing their JMOLs in writing before the close of trial. (See 12/16 PM Tr.
at 53:24-54:21.) The parties agreed to stipulate that any JMOL filed by close of business on
December 21, 2010, would be considered timely filed. (See 12/20 AM Tr. at 163:23-167:9.) The
Court then instructed the parties that they were to file their JMOLs in writing by close of
business on December 21, 2010. (See id.) The Court allowed this stipulation to preserve the
parties right to file a post-trial Rule 50(b) motion. Taylor Pub. Co. v. Jostens, Inc., 216 F.3d 465,
471 (5th Cir. 2000). The Court then overruled all JMOLs made by the parties with respect to
sufficiency of the evidence or lack of the evidence, and informed the parties that they could
renew their JMOLs after the verdict if they wished. (See 12/20 9:30 PM Tr. at 3:22-4:4; 12/21
A.M. Tr. at 11:12-13:18.)
On December 21, 2010, the jury reached a verdict finding that Defendants Artesyn
Technologies, Inc. and Astec America Inc. (collectively “Astec”); Bel Fuse, Inc. (“Bel Fuse”);
Cherokee International Corp. and Lineage Power Corporation (collectively “Lineage”); Delta
Electronics, Inc. and Delta Products Corp. (collectively “Delta”); Murata Electronics North
America, Inc. and Murata Manufacturing Co., Ltd. (collectively “Murata”); Murata Power
Solutions, Inc. (“MPS”); and Power-One, Inc. (“Power-One”)(collectively “the Fish
Defendants”) infringe various claims of the patents-in-suit. (See Dkt. No. 889, Jury Verdict).
The jury failed to find invalidity of any of the patents-in-suit.
III.

LEGAL STANDARD
A motion for JMOL is a procedural issue not unique to patent law; thus, such motions are

reviewed under the law of the regional circuit. Summit Tech., Inc. v. Nidek Co., 363 F.3d 1219,

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1223 (Fed. Cir. 2004). In the Fifth Circuit, JMOL may only be granted if “there is no legally
sufficient evidentiary basis for a reasonable jury to find as the jury did.” Hiltgen v. Sumrall, 47
F.3d 695, 700 (5th Cir. 1995) (internal citation omitted); see also Fed. R. Civ. P. 50(a)(1) (stating
that JMOL may be granted only if “the court finds that a reasonable jury would not have a
legally sufficient evidentiary basis to find for the party on [an] issue.”). In ruling on a motion for
JMOL, the court reviews all the evidence in the record and must draw all reasonable inferences
in favor of the nonmoving party. See Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133,
150-51 (2000). The court, however, may not make credibility determinations or weigh the
evidence, as those are solely functions of the jury. Id. That is, the court grants “great deference
to a jury‟s verdict” and it should be overturned “only if, when viewing the evidence in the light
most favorable to the verdict, the evidence points so strongly and overwhelmingly in favor of
one party that the court believes that reasonable jurors could not arrive at any contrary
conclusion.” Dresser-Rand Co. v. Virtual Automation Inc., 361 F.3d 831, 838 (5th Cir. 2004).
IV.

DISCUSSION
A. Anticipation
A patent claim is anticipated if “the invention was known or used by others in this

country, or patented or described in a printed publication in this or a foreign country, before the
invention thereof by the applicant for patent.” 35 U.S.C. § 102(a) (2006). Anticipation under §
102(a) requires the presence in the prior art of each and every limitation of the claimed
invention. Amgen Inc. v. F-Hoffman-La Roche Ltd., 580 F.3d 1340, 1366 (Fed. Cir. 2009);
Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000). Applying
this legal standard to the record in this case, the Court concludes that the jury had a legally
sufficient evidentiary basis for finding the asserted claims of the patents-in-suit are not invalid

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due to anticipation.
Defendants argue that a reasonable jury would not have a sufficient evidentiary basis to
fail to find for Defendants on the issue of anticipation. Specifically, Defendants make the
following arguments:
(1)

Claims 2, 8, 10, and 19 of the „190 patent are anticipated by the Mweene Thesis.

(2)

Claims 21 and 30 of the „021 patent are anticipated by the Mweene Thesis.

(3)

Claim 1 of the „083 patent is anticipated by the Mweene Thesis.

(4)

Claims 56 and 71 of the „702 patent are anticipated by the Mweene Thesis.

(5)

Claim 9 of the „034 patent is anticipated by the Arduini reference.

(6)

The „034 patent is anticipated by the trial testimony of the inventor, Marty

Schlecht, and SynQor‟s expert witness admissions.
(7)

The „034 patent is also invalid as anticipated by the Abe reference.

(8)

The „034 patent is invalid as anticipated by the Arduini reference.

Having carefully considered the record, and the parties‟ arguments, the Court concludes
that the jury had a legally sufficient evidentiary basis for failing to find the asserted claims of the
patents-in-suit invalid due to anticipation. Accordingly, the Court DENIES Defendants‟ motion
for JMOL as they relate to the validity issue of anticipation of the patents-in-suit.
B. Obviousness
A patent is invalid for obviousness “if the differences between the subject matter sought
to be patented and the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill in the art to which
said subject matter pertains.” 35 U.S.C. § 103(a)(2006). Obviousness is a question of law based
on underlying findings of fact. In re Kubin, 561 F.3d 1351, 1355 (Fed. Cir. 2009). “An analysis

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of obviousness must be based on several factual inquiries: (1) the scope and content of the prior
art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill
in the art at the time the invention was made; and (4) objective evidence of nonobviousness, if
any.” Id.; see also Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). The teachings of a
prior art reference are underlying factual questions in the obviousness inquiry. Id. Applying this
legal standard to the record in this case, the Court concludes that the jury had a legally sufficient
evidentiary basis for finding the asserted claims of the patents-in-suit are not invalid due to
obviousness.
Defendants‟ argue that a reasonable jury would not have a sufficient evidentiary basis to
fail to find for Defendants on the issue of obviousness. Specifically, Defendants make the
following arguments:
(1)

Claims 2, 8, 10, and 19 of the „190 patent are obvious based on the Mweene

Thesis in light of the knowledge of one of ordinary skill in the art, the Mammano Reference,
and/or the Boschert materials and the Boschert devices.
(2)

Claims 21 and 30 of the „021 patent are obvious based on the Mweene Thesis in

light of the knowledge of one of ordinary skill in the art, the Mammano Reference, and/or the
Boschert materials and the Boschert devices.
(3)

Claim 1 of the „083 patent is rendered obvious by the Mweene Thesis, in light of

the knowledge of one of ordinary skill in the art, and in light of the Severns & Bloom and/or the
Cobos references, and/or further in combination with the Mammano Reference, and/or the
Boschert materials and the Boschert devices.
(4)

Claim 56 of the „702 patent is rendered obvious by the Mweene Thesis, in light of

the knowledge of one of ordinary skill in the art, and in light of the Severns & Bloom and/or the

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Cobos references, and/or further in combination with the Mammano Reference, and/or the
Boschert materials and the Boschert devices.
(5)

Claim 71 of the „702 patent is rendered obvious by the Mweene Thesis, in light of

the knowledge of one of ordinary skill in the art, and/or the Mammano Reference, and/or the
Boschert materials and the Boschert devices.
(6)

The „034 patent is invalid as obvious over the Abe reference in light of Schlecht

testimony and expert admissions.
(7)

The „034 patent is invalid as obvious over the Abe reference in light of the state of

the art as of 2006 as exemplified by, for example, the Narveson reference, the Mammano
reference, Schlecht testimony, and/or expert admissions.
(8)

The „034 patent is obvious over the Arduini reference in light of the Mammano

reference.
(9)

The „034 patent is invalid as obvious over the Arduini reference in light of the

Mammano reference and in light of Schlecht testimony and/or expert admissions.
(10)

The „034 patent is invalid as obvious over the Arduini reference in light of

Schlecht testimony and/or expert admissions.
(11)

The „034 patent is invalid as obvious over the Arduini reference in light of the

Mammano reference and in light of the Narveson reference.
(12)

The „034 patent is invalid as obvious over the Arduini reference in light of the

Mammano reference and in light of the Narveson reference and in light of Schlecht testimony
and expert admissions.
(13)

Each asserted claim of each patent is invalid as anticipated and/or rendered

obvious by a combination of one or more of the following references: Mweene Thesis, Severns

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& Bloom, Cobos, Mammano, the Boschert Materials, the Boschert Devices, and/or what was
well known to one of ordinary skill in the art at the time of the alleged invention.
Having carefully considered the record, and the parties‟ arguments, the Court concludes
that the jury had a legally sufficient evidentiary basis for failing to find the asserted claims of the
patents-in-suit invalid due to obviousness. Accordingly, the Court DENIES Defendants‟ motion
for JMOL as they relate to the validity issue of obviousness of the patents-in-suit.
C. Written Description
For a claim to be entitled to the filing date of an earlier application, the earlier application
must comply with the written description requirement for the claimed invention under 35 U.S.C.
§ 112, ¶ 1. New Railhead Mfg. v. Vermeer Mfg., 298 F.3d 1290, 1294 (Fed. Cir. 2002). A
determination of whether an earlier priority application complies with the written description
requirement is a question of fact. See, e.g., Waldemar Link v. Osteonics Corp., 32 F.3d 556, 558
(Fed. Cir. 1994). As the Federal Circuit recently affirmed in Ariad Pharmaceuticals, Inc. v. Eli
Lily & Co., 598 F.3d 1336 (Fed. Cir. 2010), “the test for sufficiency [of the written description]
is whether the disclosure of the application relied upon reasonably conveys to those skilled in the
art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad,
598 F.3d at 1351.

“[T]he test requires an objective inquiry into the four corners of the

specification from the perspective of a person of ordinary skill in the art. Based on that inquiry,
the specification must describe an invention understandable to that skilled artisan and show that
the inventor actually invented the invention claimed.” Id. Defendants bore the burden of proof
by clear and convincing evidence that the claims of the patents-in-suit are invalid for a lack of
written description. Id. at 1354. Applying this legal standard to the record in this case, the Court
concludes that the jury had a legally sufficient evidentiary basis for failing to find the asserted

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claims of the patents-in-suit invalid for lack of written description.
Defendants‟ argue that a reasonable jury would not have a sufficient evidentiary basis to
fail to find for Defendant on the issue of written description. Specifically, Defendants make the
following arguments:
(1)

There is no written description for claims 2, 8, 10, and 19 of the „190 patent in the

original specification and therefore these claims are invalid for lack of written description.
(2)

There is no written description for claims 21 and 30 of the „021 patent in the

original specification and therefore these claims are invalid for lack of written description.
(3)

There is no written description for claim 1 of the „083 patent in the original

specification and therefore these claims are invalid for lack of written description.
(4)

There is no written description for claims 56 and 71 of the „702 patent in the

original specification and therefore these claims are invalid for lack of written description.
(5)

There is no written description for claim 9 of the „034 patent in the original

specification and therefore these claims are invalid for lack of written description.
(6)

There is no written description for the claims of the „021 patent claims in the

original specification and therefore they are not entitled to the 1997 or 1998 filing dates.
Having carefully considered the record, and the parties‟ arguments, the Court concludes
that the jury had a legally sufficient evidentiary basis for finding that Dr.Schlecht‟s 1997 and
1998 applications contain a written description that supports all of the limitations of the claims of
the patents-in-suit, and that the claims are not invalid. Likewise, the Court concludes that the
jury had a legally sufficient evidentiary basis for determining that the „021 patent and „034 patent
are entitled to the filing dates of Dr.Schlecht‟s 1997 and 1998 applications. Defendants bore the
burden of persuading the jury, by clear and convincing evidence, that claims of the „021 patent

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and „034 patent are not entitled to claim priority of the original applications and are therefore
invalid. Defendants failed to meet their burden, and they have provided no justification for
overturning the jury's verdict. Thus, SynQor sales of its commercial embodiment in 2002 does
not invalidate the claims of the „021 patent under the on-sale and public use bars. Similarly, the
commercial embodiment sold by some defendants more than a year before the filing date of the
„034 patent does not invalidate the claims of the „034 patent under the on-sale and public use
bars. Accordingly, the Court DENIES Defendants‟ motion for JMOL as they relate to the
validity issue of written description.
D. On-Sale and Public Use Bar
Regarding Defendants‟ motions for JMOL relating to the on-sale and public use bar.
Section 102(b) of title 35 provides that an inventor is not entitled to a patent if "the invention was
… in public use or on sale in this country, more than one year prior to the date of the application
for patent in the United States." The Supreme Court has established a two-part test for the onsale bar set forth in 35 U.S.C. § 102(b). Under this test, an inventor is barred from obtaining a
patent where the patent application is filed more than one year after (1) the product was sold or
offered for sale and (2) the invention is ready for patenting. Pfaff v. Wells Elecs., Inc., 525 U.S.
55, 67 (1998). For a public use statutory bar to apply, Defendants must similarly establish that
the device allegedly used met each of the limitations of a claim in at least one of the patents-insuit.
Defendants‟ argue that a reasonable jury would not have a sufficient evidentiary basis to
fail to find for Defendant on the issues of on-sale and public use bar. Specifically, Defendants
argue that the Mweene Thesis combined with the sales of the Boschert devices and the use of
those embodiments invalidates the claims of the „190 patent and the „021 patent under the on-

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sale and public use bars. The Court disagrees and finds that the jury could have reasonably
concluded that the Mweene Thesis and Boschert materials did not qualify as prior art.
Defendants also make arguments relating to the on-sale and public use bars that relate to the
factual findings related to Defendants‟ written description arguments. As discussed, Defendants
failed to meet their burden, and have provided no justification for overturning the jury's verdict.
Thus, SynQor‟s sales of its commercial embodiment in 2002 do not invalidate the claims of the
„021 patent under the on-sale and public use bars. Similarly, the commercial embodiment sold
by some defendants more than a year before the filing date of the „034 patent do not invalidate
the claims of the „034 patent under the on-sale and public use bars. Accordingly, the Court
DENIES Defendants‟ motion for JMOL as they relate to the validity issue of to the on-sale and
public use bar.
V.

CONCLUSION
The Court DENIES Defendants‟ motions for JMOL on the issues related to the invalidity

of the patents-in-suit because the Court concludes that sufficient evidence supports the jury‟s
verdict on these issues.
It is so ORDERED.
SIGNED this 17th day of August, 2011.

__________________________________________
T. JOHN WARD
UNITED STATES DISTRICT JUDGE

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