Whirlpool Corporation v. TST Water, LLC

Filing 202

MEMORANDUM OPINION AND ORDER. Signed by District Judge Rodney Gilstrap on 3/29/2018. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
WHIRLPOOL CORPORATION,
Plaintiff,
v.
TST WATER, LLC,
Defendant.

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CIVIL ACTION NO. 2:15-CV-01528-JRG

MEMORANDUM OPINION AND ORDER
Before the Court is Defendant TST Water, LLC’s (“TST”) Motion for Judgment as a
Matter of Law (Dkt. No. 171) (“the Motion”). In the Motion, TST moves for judgment as a matter
of law of no infringement of the ’894 patent and that Whirlpool is not entitled to damages. (Dkt.
No. 171). Having considered the Motion and the relevant authorities, the Court is of the opinion
that, for the reasons below, the Motion should be DENIED.
I.

Background
Whirlpool Corporation (“Whirlpool”) filed suit against TST on September 15, 2015,

alleging infringement of United States Patent No. 7,000,894 (“the ’894 Patent”) by replacement
water filters sold by TST, specifically replacement filters compatible with Whirlpool’s Filter 3
filter design. (Dkt. No. 1). A jury trial was conducted from March 6, 2017, through March 10,
2017. (See Dkt. Nos. 149, 150, 151, 152, 153). The jury rendered its verdict on March 10, 2017,
finding all claims of the ’894 Patent asserted at trial to be willfully infringed and not invalid. The
jury awarded Whirlpool damaged in the amount of $7,600,000. (Dkt. No. 148). Following trial,
the Parties jointly moved, and the Court ordered, a post-trial briefing schedule. (Dkt. Nos. 170,

182). All briefing has been completed and the motions, including the instant Motion, are ripe for
disposition.
II.

Applicable Law
Judgment as a matter of law is appropriate if “the court finds that a reasonable jury would

not have a legally sufficient evidentiary basis to find for [a] party” on an issue. Fed. R. Civ. P.
50(a)(1). “The grant or denial of a motion for judgment as a matter of law is a procedural issue not
unique to patent law, reviewed under the law of the regional circuit in which the appeal from the
district court would usually lie.” Finisar Corp. v. DirectTV Group, Inc., 523 F.3d 1323, 1332 (Fed.
Cir. 2008). The Fifth Circuit “uses the same standard to review the verdict that the district court
used in first passing on the motion.” Hiltgen v. Sumrall, 47 F.3d 695, 699 (5th Cir. 1995). Thus, a
jury verdict must be upheld, and judgment as a matter of law may not be granted, unless “there is
no legally sufficient evidentiary basis for a reasonable jury to find as the jury did.” Id. at 700. The
jury’s verdict must be supported by “substantial evidence” in support of each element of the claims.
Am. Home Assurance Co. v. United Space Alliance, 378 F.3d 482, 487 (5th Cir. 2004).
Under Fifth Circuit law, a court is to be “especially deferential” to a jury’s verdict, and
must not reverse the jury’s findings unless they are not supported by substantial evidence. Baisden
v. I’m Ready Prods., Inc., 693 F.3d 491, 499 (5th Cir. 2012). “Substantial evidence is defined as
evidence of such quality and weight that reasonable and fair-minded men in the exercise of
impartial judgment might reach different conclusions.” Threlkeld v. Total Petroleum, Inc., 211
F.3d 887, 891 (5th Cir. 2000). The moving party is entitled to judgment as a matter of law, “only
if the evidence points so strongly and so overwhelmingly in favor of the nonmoving party that no
reasonable juror could return a contrary verdict.” Int’l Ins. Co. v. RSR Corp., 426 F.3d 281, 296
(5th Cir. 2005). However, “[t]here must be more than a mere scintilla of evidence in the record to

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prevent judgment as a matter of law in favor of the movant.” Arismendez v. Nightingale Home
Health Care, Inc., 493 F.3d 602, 606 (5th Cir. 2007).
In evaluating a motion for judgment as a matter of law, a court must “draw all reasonable
inferences in the light most favorable to the verdict and cannot substitute other inferences that [the
court] might regard as more reasonable.” E.E.O.C. v. Boh Bros. Const. Co., L.L.C., 731 F.3d 444,
451 (5th Cir. 2013) (citation omitted). However, a court may not make credibility determinations
or weigh the evidence, as those are solely functions of the jury. See Ellis v. Weasler Eng’g Inc.,
258 F.3d 326, 337 (5th Cir. 2001) (citing Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S.
133, 150–51 (2000)). “[T]he court should give credence to the evidence favoring the nonmovant
as well as that ‘evidence supporting the moving party that is uncontradicted and unimpeached, at
least to the extent that that evidence comes from disinterested witnesses.’” Id. at 151 (citation
omitted).
III.

Discussion
In addressing TST’s Motion for Judgment as a Matter of Law (Dkt. No. 171), the Court

first considers infringement of the ’894 Patent. The Court will then address whether a reasonable
jury would have had a sufficient evidentiary basis to award Whirlpool damages as set forth within
the verdict.
A) Judgment as a Matter of Law of No Literal Infringement
At trial, Whirlpool asserted the ’894 Patent, specifically independent Claim 1, its dependent
Claims 10 and 15, independent Claim 4, and its dependent Claims 17, 20, and 27 (“the Asserted
Claims”). All asserted claims recite an end piece wall and a protrusion, with “said protrusion
extend[ing] from said endpiece wall.” (’894 Patent at Claim 1, 4). Following the close of
evidence, the jury returned a verdict that “Whirlpool prove[d] by a preponderance of the evidence

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that TST Water directly infringes” the Asserted Claims “either literally or under the doctrine of
equivalents.” (Dkt. No. 148 at 2). TST argues that the record lacks substantial evidence that the
protrusion on the W-5 filter literally “extends from” the end piece wall. (Dkt. No 171 at 3).
Accordingly, TST concludes that a reasonable jury would not have had a legally sufficient
evidentiary basis to support a finding of direct literal infringement.
TST’s W-5 filter, the Accused Product, was found by the Jury to infringe the ’894 Patent.
The W-5 filter has a protrusion (blue) and an end piece wall (red) as depicted below:

(Dkt. No. 171 at 2). During trial Whirlpool’s technical expert conceded that the protrusion on the
W-5 does not directly contact the end piece wall. (Dkt. No. 159, March 7, 2017 A.M. Tr. at
118:10–16 (Q: “TST's . . . protrusion [does not] actually contact[] the end piece wall, correct?” A.
“[It’s] not in direct contact with the end piece wall, yes.”)). However, Whirlpool nonetheless
maintained its position at trial that the protrusion on the W-5 “extends from” the end piece wall,
even if the connection is, as TST characterizes it, “indirect.” (Id. at 3). This position, TST argues,
was improper. Specifically, TST argues that “Whirlpool never advanced a special definition of
‘extending from said end piece wall,’ and the Court never adopted one.” (Id. at 4). Therefore,
according to TST, “this limitation fell within the Court’s general instruction that the plain meaning
applies to terms that the Court did not construe.” (Id.) Although Whirlpool’s technical expert Dr.

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Joseph Beaman testified that, “these [protrusions] don’t have to be directly attached to the end
piece wall, they just have to be connected in some sense,” (Dkt. No. 159, March 7, 2017 A.M. Tr.
at 40:14–41:2), TST argues that this opinion amounts to an improper alternative construction.
(Dkt. No. 171 at 4). Further, TST argues that such construction is unsupported or contradicted by
the ’894 Patent’s intrinsic evidence, including the specification, file history, and cited prior art.
(Id.) As such, the testimony offered by Dr. Beaman “is not probative and must be disregarded in
assessing whether the jury’s presumed finding of literal infringement was supported by substantial
evidence.” (Id. at 5).
Whirlpool, in response, points out that “[a]t no point before the jury’s verdict, including
during the Markman process and trial, did TST ask the Court to construe ‘extend,’” and that,
accordingly, “the Court properly instructed the jury that it should ‘use the plain and ordinary
meaning of that term as understood by one of ordinary skill in the art.’” (Dkt. No. 181 at 2 (quoting
Dkt. No. 166, Mar. 10, 2017 A.M./P.M Tr. at 15:22–16:2)).1
The Court agrees. Whether the W-5 filter’s protrusion “extended” from its end piece wall
(or not) was a question of fact for the jury. See Inventio AG v. ThyssenKrupp Elevator Corp., No.
08-cv-874, 2014 WL 468897, at *4 (D. Del. Feb. 3, 2014) (where defendant did not ask the court
to construe “connected,” whether “connect[ion]” could be “satisfied by an indirect connection”

The Court agrees with the Federal Circuit’s instruction that “where the parties and the district court elect to provide
the jury only with the claim language itself, and do not provide an interpretation of the language in the light of the
specification and the prosecution history, it is too late at the JMOL stage to argue for or adopt a new and more detailed
interpretation of the claim language and test the jury verdict by that new and more detailed interpretation.” HewlettPackard Co. v. Mustek Sys., 340 F.3d 1314, 1320–21 (Fed. Cir. 2003); accord Broadcom Corp. v. Qualcomm, Inc.,
543 F.3d 683, 694 (Fed. Cir. 2008) (holding a party’s reliance on O2 Micro is “misplaced” where it makes a post-trial
“eleventh-hour attempt to litigate a newly minted claim construction controversy” having “never requested that the
district court construe any terms in [the relevant claim] and never offered a construction of [that claim],” but rather
“[o]nly after the presentation of all of the evidence to the jury . . . even suggest[ed] that claim construction might be
helpful to determine the proper scope of the claimed invention”) (quotations omitted). TST cannot now “proffer[] a
claim construction argument regarding [its] meaning . . . in the guise of a challenge to the sufficiency of the evidence.”
Comcast IP Holdings I LLC v. Sprint Commc’ns Co., L.P., 850 F.3d 1302, 1311 (Fed. Cir. 2017). Accordingly, the
Court will not second guess the Jury’s understanding of the plain and ordinary meaning of “extend,” and properly
limits its inquiry to the sufficiency of the evidence to support the Jury’s ultimate conclusion.
1

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was a “question of fact for the jury”); accord 1 Annotated Patent Digest § 4:58, Jury’s
Determination of the Actual Precision of the Claim (“[A]fter the court has defined the claim with
whatever specificity and precision is warranted by the language of the claim and the evidence
bearing on the proper construction, the task of determining whether the construed claim reads on
the accused product is for the finder of fact.”) (quoting PPG Indus. v. Guardian Indus. Corp., 156
F.3d 1351, 1355, 48 U.S.P.Q.2d 1351 (Fed. Cir. 1998)); Acumed LLC v. Stryker Corp., 483 F.3d
800, 806 (Fed. Cir. 2007) (“[A] sound claim construction need not always purge every shred of
ambiguity. The resolution of some line-drawing problems . . . is properly left to the trier of fact.”).
Whirlpool points to substantial evidence which supports the jury’s conclusion that TST
literally infringed, including:


After identifying the “end piece wall” as the “flat wall section” at the top of the W-5, Dr.
Beaman showed that the inlet and outlet fittings and protrusion “extend[ed]” from it. (Dkt.
No. 159, Mar. 7, 2017 A.M. Tr. at 34:5–10; 36:4–12).



Dr. Beaman explained that the W-5’s protrusion connects to and extends from the end piece
wall via a “support.” (Id. at 40:14–23, 118:10–25 (protrusion not in “direct contact,” but
still extends from the W-5’s end piece wall)).



TST’s internal drawings revealed that, when developing the W-5, TST effectively “carved
away” the Filter 3’s end piece wall, resulting in a different appearance. (Id. at 27:8–29:2).
But its protrusion stayed in the same place and still extended from the end piece wall. (Id.)



Whirlpool offered into evidence drawings, photographs, and physical exhibits confirming
that TST’s design process involved carving around the protrusion, but leaving its location
and extension from the end piece wall intact. (Dkt. Nos. 175-18, 175-38; Dkt. No. 181,
Exs. 9–12). For example:

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(Dkt. No. 181 at 3). The Court finds that the strength and sufficiency of record evidence, as
illustrated above, more than adequately supports the jury’s verdict of direct infringement.
In addition, TST argues that Whirlpool’s position “leads to an absurd result” because, in
TST’s view, “Whirlpool’s theory permits any feature of the claimed cartridge to extend from the
end-piece wall, even the cap on the opposite end of the filter.” (Dkt. No. 171 at 6–7). As a result,
TST contends that adopting Whirlpool’s position would preclude the “protrusion extending from”
limitation from “limit[ing] the claim in any meaningful way.” (Id. at 7). TST concludes that this
holding renders Whirlpool’s theory incorrect as a matter of law. (Id.) Finally, TST argues that
Whirlpool improperly attempted to prove a structural limitation by showing that the accused
product performs a function, specifically, that the W-5 filter’s protrusion extends out to go into the
head assembly and interact with the head assembly. (Id. at 7). This type of “functional evidence,”
in TST’s view, should not be considered. (Id.) Accordingly, TST submits that, in view of all of
these arguments, Whirlpool “failed to introduce substantial evidence from which a reasonable jury
could conclude that the W-5 filter literally satisfies the ‘protrusion extend[ing] from said end piece
wall’ limitation.” (Id. at 8).
In response, with respect to the functional evidence argument raised by TST, Whirlpool
submits that the “extending” limitation is structural. At trial, “TST’s expert agreed that structures
that are entirely unconnected to the end piece wall do not ‘extend from it,’” thus the “extending”
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limitation does serve as a structural limitation, specifically requiring connection, be it direct or
indirect, of the protrusion to the end piece wall. (Dkt. No. 181 at 7). Whirlpool points to TST’s
expert, Mr. Stein, who testified regarding TST’s primary reference, Knuth, which “has a
protrusion,” but not one that “extend[s] from the end piece wall.” (Dkt. No. 165, Mar. 9, 2017
P.M. Tr. at 10:6–13; accord Dkt. No. 164, Mar. 9, 2017 A.M. Tr. at 100:6–13 (explaining that
Knuth’s “protrusion” extend[s] from the head assembly,” “not . . . the end piece wall”)).
Whirlpool also submits that TST’s end cap hypothetical is a strawman argument whose asserted
“absurdity” arises from the fact that the end cap is not on the same side of the end piece wall as
the inlet and outlet fittings. It has nothing to do with whether the end cap extends from the end
piece wall via an intervening structure. Whirlpool notes that TST offered no response to this
rebuttal. (Dkt. No. 189 at 4 (“Other limitations constrain the position of the protrusion, and neither
party disputes that the protrusion should be on the same side as the inlet and outlet fittings to
engage the head assembly. TST offers no response.”)).
The Court is not persuaded by either of TST’s arguments. The “extending” limitation is a
structural limitation which requires the claimed “protrusion” to possess a specific structural form.
This specific structural form is supported not only by the claim language itself (“said protrusion
extend[s] from said end piece wall [and] is positioned between said inlet and outlet fittings”) but
also the specification. For example, the specification shows the “protrusion” (33) “extending”
from the end piece wall (12):

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PX1 at Fig. 2B. “[T]he solid protrusion 33 may have a cylindrical end 41 (preferably having a
length from about 0.1 cm, about 0.3 cm, about 0.5 cm to about 1 cm, about 1.5 cm, about 2 cm,
and preferably having a diameter from about 0.1 cm, about 0.2 cm, about 0.3 cm to about 0.5 cm,
about 0.7 cm, about 1 cm) extends from near the edge of the end piece wall 12, adjacent to the
connection of the end piece 10 and cartridge 20.” (Id. at 5:23–30). In addition to the intrinsic
evidence, Dr. Beaman supplied testimony on how the “extending” limitation was met by the
accused product:
Q. Now, the claim next requires that the inlet fitting, the outlet fitting, and the
protrusion all extend from the end piece wall. Do you see that?
A. Yes, I do.
Q. And how is this limitation satisfied?
A. Well, here’s the end piece wall right here. And you’ll notice the protrusion is
extending from it. The inlet fitting is extending from it. And the outlet fitting are
extending from the end piece wall.

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(Dkt. No. 159, Mar. 7, 2017, A.M. Tr. at 36:4–12). Further, his testimony, Dr. Beaman concluded
that the “extending” limitation was satisfied by the accused product. (Id. at 44:16–19). Finally,
Dr. Beaman directly addressed TST’s indirect extension argument during his testimony:
Q. Now, Dr. Beaman, have you reviewed reports and testimony by Dr. –– by Mr.
Stein in this case?
A. Yes, I have.
Q. And do you understand that you have certain disagreements with him on his
opinions regarding infringement here?
A. I think we do, yes.
Q. What are the –– at a high level the areas of disagreement?
A. He disagrees with my understanding of extend from, what an longitudinal axis
is, and also what we mean by about 2 centimeters.
Q. Dr. Beaman, let's go to the first area of disagreements. Literal infringement and
extend from. Why do you disagree, and can you explain why you believe your
theory –– your understanding to be correct?
A. Yes. So it just has to extend from the end piece wall. And so what's happening
here, here's the end piece wall, and this is just a –– a support and kind of –– you
know, as they kind of multi-carve things away, these things all have to extend out
because they have to interact with the head assembly. And, in my opinion, these
don't have to be directly attached to the end piece wall, they just have to be
connected in some sense. So these extend from, so they lineup and go into the head
assembly.
(Id. at 40:2–41:2). Dr. Beaman and his testimony, including his expert opinions, were subjected
to robust cross-examination by TST. The jury was entitled to credit and rely upon Dr. Beaman’s
testimony and expert opinions in reaching its verdict of literal infringement. See Apple Inc. v.
Motorola, Inc., 757 F.3d 1286, 1326 (Fed. Cir. 2014) (“With the aid of [] cross-examination and
expert testimony, the jury is capable of assigning the appropriate weight to [an expert’s] testimony
based upon their judgment of her credibility, factual analysis, and conclusions.”). Whirlpool did
not improperly attempt to prove a structural limitation by showing that the accused product
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performs a function, but rather provided specific evidence upon which the Jury was able to
properly rely, discussed above, that the structural limitation required by “extends from” claimed
by the Asserted Claims was present in the Accused Products.
Finally, the Court disagrees with TST’s “absurd result” argument that the jury’s Verdict is
unsupportable as a matter of law. (Dkt. No. 171 at 6–7). TST’s argument that “it is so glaringly
obvious that the W-5 filter’s protrusion extends from the bridge that no reasonable juror could
possibly think that it extends from the end-piece wall,” (Dkt. No. 171 at 7), is contradicted by the
same record evidence identified with respect to the “extends from” limitation, above, upon which
the jury’s Verdict is properly supported. (See also supra at 7 (discussing Knuth’s protrusion)).
In conducting this analysis, the Court was careful to draw all reasonable inferences in favor
of the Verdict and not make credibility determinations or reweigh the evidence. Boh Bros., 731
F.3d at 451 (a court must “draw all reasonable inferences in the light most favorable to the verdict
and cannot substitute other inferences that [the court] might regard as more reasonable.”) (citation
omitted). The Court has finds that the verdict is supported by substantial evidence presented a
trial. Accordingly, the Court DENIES TST’s Motion for Judgement as a Matter of Law of No
Literal Infringement. Hiltgen, 47 F.3d at 700 (5th Cir. 1995) (judgment as a matter of law may
not be granted unless “there is no legally sufficient evidentiary basis for a reasonable jury to find
as the jury did.”).
B) Judgment as a Matter of Law of No Infringement Under the Doctrine of
Equivalents
TST argues, generally, that “[b]ecause Whirlpool relied on the ‘protrusion extend[ing]
from said end piece wall’ limitation to overcome a PTO rejection based on prior art, prosecution
history estoppel applies and bars the application of the doctrine of equivalents to the protrusion
limitation. Further, even if the doctrine were not barred by prosecution history estoppel, Whirlpool
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failed to present substantial evidence from which a reasonable jury could conclude that extending
from a bridge between the fittings is equivalent to extending from the end-piece wall.” (Dkt. No.
171 at 8).
i)

Prosecution History Estoppel

As to TST’s argument regarding prosecution history estoppel, the Court notes that the
argument and authorities presented to the Court during trial in support of TST’s Rule 50(a) motion
are relied upon and incorporated by reference in the instant Motion (Id. (incorporating Dkt. No.
140 by reference)). After briefing and argument, the Court denied TST’s Rule 50(a) motion and
allowed the jury to decide whether TST’s Accused Products infringed Whirlpool’s Asserted
Claims under the doctrine of equivalents. (Dkt. No. 165, Mar. 9, 2017 P.M. Tr. at 66:17–20).
TST argues now in its renewed Motion that the prosecution history of the “protrusion
extend[ing] from” limitation estops any claim of infringement under the doctrine of equivalents as
a matter of law.
Generally, “The doctrine of equivalents allows the patentee to claim those insubstantial
alterations that were not captured in drafting the original patent claim but which could be created
through trivial changes.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722,
733 (2002) (“Festo I”). An element in the accused device is equivalent to a claim limitation if the
only differences between the two are insubstantial. Eagle Comtronics, Inc. v. Arrow Commun.
Labs., Inc., 305 F.3d 1303, 1315 (Fed. Cir. 2002) (citation omitted). However, prosecution history
estoppel may bar the patentee from asserting equivalents if the scope of the claims has been
narrowed by amendment during prosecution. Festo I, 535 U.S. at 733-34.
The Federal Circuit instructed in Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.,
344 F.3d 1359, 1366–67 (Fed. Cir. 2003) (“Festo II”), that a court must conduct various inquiries

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into the prosecution history in order to ascertain whether prosecution history estoppel applies.
Specifically, courts must determine (1) whether there was a narrowing amendment during
prosecution that surrendered subject matter; (2) whether that narrowing amendment was made for
reasons related to patentability; (3) whether the alleged equivalent is within the scope of the
surrendered subject matter, taking into account the presumption of total surrender for the
limitation; and (4) Whether the presumption of total surrender can be rebutted under any of the
three exceptions to the estoppel, specifically: (i) the equivalent was unforeseeable at the time of
the application; (ii) the rationale underlying the amendment bears no more than a tangential
relation to the equivalent in question; or (iii) other reasons suggesting that the patentee could not
reasonably be expected to have described the insubstantial substitute in question. Festo II, 344
F.3d at 1366–67.
“Estoppel arises when an amendment is made to secure the patent and the amendment
narrows the patent's scope.” Festo I, 535 U.S. at 736. “A presumption of surrender therefore
arises if rewriting the dependent claims into independent form, along with canceling the original
independent claims, constitutes a narrowing amendment.” Honeywell Int’l , Inc. v. Hamilton
Sundstrand Corp., 370 F.3d 1131, 1141 (Fed. Cir. 2004). “Under such circumstances, the
surrendered subject matter is defined by the cancellation of independent claims that do not include
a particular limitation and the rewriting into independent form of dependent claims that do include
that limitation.” Id. at 370 F.3d at 1144. “[W]hen a claim is rewritten from dependent into
independent form and the original independent claim is cancelled, ‘the correct focus is on whether
[the] amendment surrendered subject matter.’” Id. (citations omitted).
During prosecution of the ’894 Patent, the Examiner rejected the original independent
claim 1 in the ‘894 patent application. (Dkt. No. 140, Ex. 2, May 23, 2005 Office Action at 2–3).

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The Examiner also rejected claims 14, 15, and 16. (Id.) The Examiner objected to original
dependent Claim 17 as being dependent on a rejected base claim but indicated that Claim 17
“would be allowable if rewritten in independent form.” (Id. at 7).
At the time of the rejection, the relevant Claims submitted for Examination were as
follows:2
1. [Original] An end piece for operatively engaging a head assembly, the head assembly
comprising one or more valves, for the treatment and control of fluid passing through the
head assembly, said end piece comprising:
A. an end piece wall;
B. an inlet fitting having a cam surface, said inlet fitting having a longitudinal axis; and
C. an outlet fitting[,]
wherein said inlet fitting and said outlet fitting extend from said end piece wall, and
wherein at least a portion of said cam surface is vectored from said longitudinal axis of
said inlet fitting.
14. [Original] The end piece of claim 1, further comprising a protrusion having a
longitudinal axis, said protrusion extending from said end piece wall.
15. [Original] The end piece of claim 14, wherein said protrusion is position
between said inlet and outlet fittings.
16. [Original] The end piece of claim 15, wherein the distance from said
longitudinal axis of said inlet to said longitudinal axis of said outlet is less than
the distance from said longitudinal axis of said inlet to said longitudinal axis of
said protrusion, and wherein the distance from said inlet to said longitudinal
axis of said protrusion is greater than the distance from said longitudinal axis
of said outlet to said longitudinal axis of said protrusion.
17. [Original] The end piece of claim 16, wherein the distance from said
longitudinal axis of said inlet to said longitudinal axis of said outlet is about
2 cm, and wherein the distance from said inlet to said longitudinal axis of
said protrusion is about 2 cm, and wherein the distance from said
longitudinal axis of said inlet to said longitudinal axis of said outlet is about
2 cm.
(Dkt. No. 140-3, Apr. 25, 2003 Claims at 32-34). Following the non-final Office Action,
Whirlpool submitted new application Claim 29 which is former Claim 17 rewritten in independent
form. Claim 29 read:
29. [New] An end piece for operatively engaging a head assembly, the head
assembly comprising one or more valves, for the treatment and control of fluid
passing through the head assembly, said end piece comprising:
2

The claims are presented with nesting provided for clarity of dependency.

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A. an end piece wall;
B. an inlet fitting having a cam surface, said inlet fitting having a
longitudinal axis; and
C. an outlet fitting; and
D. a protrusion having a longitudinal axis;
[w]herein said inlet fitting, said outlet fitting, and said protrusion extend from said
end piece wall, wherein said protrusion is positioned between said inlet and said
outlet fittings,
wherein the distance from said longitudinal axis of said inlet to said longitudinal
axis of said outlet is less than the distance form said longitudinal axis of said inlet
to said longitudinal axis of said protrusion, and
wherein the distance from said inlet to said longitudinal axis of said protrusion is
greater than the distance from said longitudinal axis of said outlet to said
longitudinal axis of said protrusion,
wherein the distance from said longitudinal axis of said inlet to said longitudinal
axis of said outlet is about 2 cm, and wherein the distance from said inlet to said
longitudinal axis of said protrusion is about 2 cm, and wherein the distance from
said longitudinal axis of said outlet to said longitudinal axis of said protrusion is
about 2 cm, and wherein at least a portion of said cam surface is vectored from said
longitudinal axis of said inlet fitting.
(Aug. 23, 2005 Response (Dkt. 140-4) at 3–4). Whirlpool simultaneously submitted new
application Claims 30–32 and canceled all other pending application claims, including Claim 17.
Application Claims 29, 30, 31, and 32 issued as ’894 Patent Claims 1, 2, 3, and 4, respectively.
There is no dispute between the Parties that, as a result of this prosecution history,
prosecution history estoppel applies under Honeywell. Specifically, a dependent claim was
rewritten in independent form and the claims upon which the previously dependent claim depended
upon were cancelled, resulting in a narrowing amendment. Honeywell, 370 F.3d at 1141. The
dispute between the Parties, each relying on Honeywell in support of their positions, rests on the
appropriate scope of the prosecution history estoppel.
TST argues that the application of Honeywell is straightforward: the difference in scope
between the new Claim 29 (the rewritten Claim 17) and the original independent application
Claim 1 defines the scope of the surrender proffered by the patentee in prosecution of the
application. (Dkt. No. 171 at 9). However, Whirlpool argues that TST’s argument focuses on the
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wrong claim. Specifically, “Application claim 16 depended on 15, which depended on 14, which
depended on 1. After the lone Office Action, all four claims stood rejected. However, Examiner
indicated that claim 17, which depended on 16, was allowable if rewritten in independent form,
and Whirlpool complied.” (Dkt. No. 143 at 6). Accordingly, “[b]ecause claim 16 [was] the
narrowest claim that lacked the ‘about 2 cm’ limitation, was rejected but claim 17 was allowed,
the appropriate inquiry focuses on the differences between these claims.” (Id.)
At its core, the Parties’ dispute is whether the Honeywell inquiry is performed between the
dependent claim rewritten in independent form, here application Claim 17, and either the
independent from which Claim 17 depends, here application Claim 1, or the claim from which
claim 17 immediately depends, here application Claim 16.
This difference between application Claims 1 and 16 is important in this analysis because
it determines whether Whirlpool was permitted to assert that the W-5 met the “protrusion
extend[ing] from” claim limitation under the doctrine of equivalents.

In TST’s view, the

“protrusion extend[ing] from” limitation was not present in the original independent Claim 1 and
so is deprived of the equivalent reach due to prosecution history estoppel. If Whirlpool is correct,
however, the “protrusion extend[ing] from” limitation, being present in intermediate dependent
Claim 14, was not surrendered by the cancellation of Claims 1, 14, 15, and 16 and the rewriting of
Claim 17, since only the difference in limitation between Claims 16 and 17 determine the scope
of the estoppel, and thus the bar to the doctrine. Accordingly, under this view, the estoppel to
prevents equivalency to only the “about 2 cm” limitation which Claim 17 introduced.
As such, TST argues that the focus of the Honeywell inquiry in determining the proper
estoppel scope treats only the independent claim as the “patent scope originally requested by the
patentee.” (Dkt. No. 171 at 8–9 (“Dependent application claim 16 did not define the original patent

16

scope requested by the patentee; independent application claim 1 defined the patent scope
originally requested by the patentee.”)). Accordingly, the surrender resulting from the patentee’s
rewriting of Claim 17 in independent form “is defined by every limitation added to application
claim 1—not just the limitations added from application claim 17—and triggered a presumption
of estoppel for every one of these added limitations.” (Id. at 9). Whirlpool argues that as the
limitation that led to allowance—and thus defined the scope of surrender—was the “about 2 cm”
requirement from application Claim 17, application Claim 14’s “protrusion extending from”
limitation “could not have been the basis for allowance, as the Examiner had already found that
the Stevens reference disclosed this.” (Dkt. No. 181 at 8). Since Honeywell held that the scope of
surrendered subject matter is “defined by the cancellation of independent claims that do not include
a particular limitation and the rewriting into independent form of dependent claims that do include
that limitation,” the limitation at issue in this case is the limitation which application Claim 17
adds, as determined by comparing application Claim 17 to application Claim 16, from which it
depends.
The Court has undertaken a survey of cases relying on and applying the Federal Circuit’s
holding in Honeywell. The Court has not been directed to, nor has it found, any case following
Honeywell where it is clear that intermediate dependent claims existed between the original
independent claim and the dependent claim which was ultimately rewritten in an independent
form. Even so, Whirlpool’s view better accords with the precedent of Honeywell. Where an
independent claim, alone, is cancelled and a dependent claim from that independent claim is
rewritten into independent form, it is appropriate to apply prosecution history estoppel to the
difference in scope between the independent and dependent claims. Similarly, where there are, as
here, gradations of specificity due to nested intermediate dependent claims with each intermediate

17

dependent claim introducing additional limitations, it is equally appropriate to look only at the
difference in scope between the most specific disallowed intermediate dependent claim and the
ultimately rewritten dependent claim to determine the scope of the patentee’s surrender. This
makes sense, since “[e]ach claim must be considered as defining a separate invention.” Jones v.
Hardy, 727 F.2d 1524, 1528 (Fed. Cir. 1984). Accord see Pall Corp. v. Micron Separations, Inc.,
66 F.3d 1211, 1220 (Fed. Cir. 1993) (“Each claim is a separate statement of the patented
invention”).
The purpose of the rule of Honeywell is to ensure equivalency of scope between the
prosecution estoppel applied to limitations of a patent claim that are added by a patentee to
overcome a rejection and a patentee who discards broader claims and accepts the allowance of a
dependent claim with a specific limitation which renders the claim allowable.3 The focus of this
inquiry, thus, must be on the specific limitation which the examiner found rendered the claim
allowable and, accordingly, confines the estoppel effect to only that specific limitation.
It is true that, generally, where multiple limitations from multiple dependent claims are
rolled into a single rewritten independent claim, it may be difficult, or even impossible, for a court
to determine what specific limitation, if any, was the ultimate basis for allowance. In such a case,
it is appropriate that a court give prosecution history estoppel a sweeping reach, since “[w]here no
explanation is established, . . . the court should presume that the patent applicant had a substantial
reason related to patentability for including the limiting element added by amendment.” WarnerJenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 33 (1997). Here, however, the Court,
See Biagro Western Sales, Inc. v. Grow More, Inc., 423 F.3d 1296, 1305 (Fed. Cir. 2005) (“If the narrowing
amendment was the addition of a new claim limitation, . . . equivalents are presumptively not available with respect
to that limitation.”) (citing Honeywell, 370 F.3d at 1141) (emphasis added); accord. 5A Chisum on Patents § 18.05
(2018) (“The classic occasion for application of file wrapper (prosecution history) estoppel is when the patent
examiner rejects a broad claim as unpatentable over the prior art and in response the applicant cancels or amends
claims in order to narrow the scope of the claimed subject matter and thereby to secure issuance of a patent.”)
(emphasis added).
3

18

through the unique posture of the prosecution history presented, is able to properly limit the sweep
of the prosecution history estoppel to only the limitations added by Claim 17 when compared to
Claim 16.
Accordingly, prosecution history estoppel does not bar application of the doctrine of
equivalents to the “protrusion extend[ing] from” limitation.
ii)

Sufficiency of the Evidence

TST argues that Whirlpool failed to present substantial evidence that the W-5 filter satisfies
the “protrusion extend[ing] from” limitation under the doctrine of equivalents. (Dkt. No. 171 at
11). Whirlpool first responds by reminding the Court that “TST never moved pre-verdict that
substantial evidence did not support Whirlpool’s [doctrine of equivalents] theory for ‘extend.’”
(Dkt. No. 181 at 8). Even so, Whirlpool does acknowledge that TST properly preserved its
argument that (i) the Asserted Claims were only entitled to a narrow scope in applying the doctrine
of equivalents analysis due to the narrowness of the claims and (ii) that the doctrine of equivalents
was improperly applied and eliminated the “protrusion extend[ing] from” limitation from the
claims.
With respect to the issue of waiver under Rule 50, “[i]t is well-settled in this circuit that a
motion for judgment as a matter of law filed post-verdict cannot assert a ground that was not
included in the motion for judgment as a matter of law made at the close of the evidence.” Morante
v. Am. Gen. Fin. Ctr., 157 F.3d 1006, 1010 (5th Cir. 1998). “If a party fails to move for judgment
as a matter of law under Federal Rule of Civil Procedure 50(a) on an issue at the conclusion of all
of the evidence, that party waives both its right to file a renewed post-verdict Rule 50(b) motion
and also its right to challenge the sufficiency of the evidence on that issue on appeal.” Flowers v.
S. Reg’l Physician Servs., Inc., 247 F.3d 229, 238 (5th Cir. 2001).

19

Of course, strict adherence to Rule 50 is not required “in situations in which the purposes
of the rule are satisfied.” Scottish Heritable Trust, PLC v. Peat Marwick Main & Co., 81 F.3d
606, 610 (5th Cir. 1996). The purposes of Rule 50 “are met when the court and the plaintiff are
alerted to the grounds on which the defendant contends the evidence is insufficient prior to the
submission of the case to the jury.” Taylor Pub. Co. v. Jostens, Inc., 216 F.3d 465, 472 (5th Cir.
2000).
TST contends that it properly made a Rule 50(a) motion regarding the doctrine of
equivalents since “Rule 50 only requires a motion ‘that a reasonable jury would not have a legally
sufficient evidentiary basis to find for [Whirlpool] on that issue,’” as opposed to requiring that
individual attacks within an issue be identified.

(Dkt. No. 185 at 5 (emphasis original)).

“Whirlpool has identified no authority that TST was obligated to do more than identify the issue
of infringement under the doctrine of equivalents, consistent with the text of Rule 50.” (Id.)
Indeed, the case law marshaled by Whirlpool supports TST’s position, not Whirlpool’s. (Dkt. No.
189 at 5). Only unraised defenses are waived. However, there is no requirement to raise every
possible argument in support of a defense in the initial 50(a). This is seen in each of the cases
cited by Whirlpool which show separate defenses are found to be waived by raising other defenses
but not, as Whirlpool argues, waiver of different arguments about why a specific defense is
appropriate. See, e.g., Texas Instruments, Inc. v. Cypress Semiconductor Corp., No. 3:90-cv-1590,
1995 WL 811944, at *1 (N.D. Tex. Aug. 28, 1995) (finding the validity defense of indefiniteness
to be waived, because “[a]lthough Defendants did move for a judgment as a matter of law on a
host of validity defenses in their JMOL I, [] they notably did not include indefiniteness as an
asserted ground”); cf. Kinzenbaw v. Deere & Co., 741 F.2d 383, 387–88 (Fed. Cir. 1984) (finding
the issues of public knowledge or use waived where “[i]n a motion for a directed verdict, Deere

20

raised a number of specific issues it urged the court not to submit to the jury. It also included a
general request for a directed verdict on Kinze's invalidity defenses, including the claim of
obviousness based upon prior art not cited to the examiner. Deere, however, did not specifically
refer in that motion to the prior public knowledge or use issue.”); i4i Ltd. P’ship v. Microsoft Corp.,
598 F.3d 831, 845 (Fed. Cir. 2010), aff’d, 564 U.S. 91 (2011) (finding the validity defense of
obviousness waived where “[b]efore the case was submitted to the jury, Microsoft moved for
JMOL on invalidity, arguing that i4i's sale of S4 violated the on-sale bar under § 102(b)[, but] did
not move for pre-verdict JMOL on obviousness or with regard to other prior art.”); Golden Hour
Data Sys., Inc. v. emsCharts, Inc., No. 2:06-cv-381-JRG, 2014 WL 8708239, at *2 (E.D. Tex. Mar.
31, 2014) (finding the issues of willful infringement or invalidity waived where “emsCharts filed
its Motion for Judgment as a Matter of Law [] under F.R. Civ. P. 50(a), arguing that it was entitled
to a judgment as a matter of law on the issues of direct infringement, joint infringement, induced
infringement and damages, based on insufficiency of the evidence[, but] did not raise the issues of
willful infringement or invalidity in its Rule 50(a) motion.”).
Accordingly, the Court holds that TST properly raised the issue of non-infringement under
the doctrine of equivalents in its original Rule 50(a) motion and has not waived its ability to now
seek judgement as a matter of law under Rule 50(b).
Turning to the merits, TST urges, generally, that Whirlpool failed to present substantial
evidence that the W-5 filter satisfies the “protrusion extend[ing] from” limitation under the
doctrine of equivalents for three separate reasons: (1) whirlpool failed to present evidence of
equivalence on a limitation-by limitation basis when it argued that the W-5 filter infringes because
the filter fits, (2) Whirlpool’s “way” analysis did not even mention the alleged equivalent structure

21

in the accused W-5 product, and (3) Whirlpool’s burden to provide probative evidence of
equivalence was especially high in view of the specificity of the claims. (Dkt. No. 171 at 11–15).
TST points to various pieces of testimony and argument which, in its view, demonstrate
that “Whirlpool argued at trial that the accused W-5 infringes the ’894 Patent because it ‘fits’ in
Whirlpool’s Filter 3 refrigerators, making ‘fit’ a proxy for infringement.” (Id. at 11–12).4 Such
an argument is foreclosed, in TST’s view, because “the doctrine of equivalents must be applied to
individual elements of the claim, not to the invention as a whole,” Warner-Jenkinson, 520 U.S. at
29, and evidence regarding the doctrine of equivalents “must be presented on a limitation bylimitation basis. Generalized testimony as to the overall similarity between the claims and the
accused infringer’s product or process will not suffice.” Texas Instruments Inc. v. Cypress
Semiconductor Corp., 90 F.3d 1558, 1567 (Fed. Cir. 1996). Specifically, TST argues that this “fit”
argument improperly subsumed the limitation-by-limitation inquiry, especially regarding the
protrusion limitation. (Dkt. No. 171 at 13 (“Moreover, in seeking to prove infringement by
showing that the W-5 fits in the Filter 3 refrigerator, Whirlpool renders the disputed limitations –
including the protrusion limitation – redundant of the ‘for operatively engaging a head assembly’
limitation and deprives those limitations of all force and effect.”)).
The Court agrees that “Whirlpool certainly presented significant and unrebutted evidence
that the W-5 filter, with its end piece and protrusion, was ‘guaranteed to fit’ into the same head
assembly as the patented invention.” (Dkt. No. 181 at 14–15). That evidence “confirmed the
substantial evidence that the W-5 filter’s protrusion also actuated the bypass valve in the head
(See, e.g., Dkt. No. 171 at 11 (quoting Dkt. No. 158, Mar. 6, 2017 P.M. Tr. at 36:17–19 (opening statement) (“So
how are we going to prove infringement? One way is with their documents and what they say outside of the courtroom.
Guaranteed to fit.”); quoting Dkt. No. 159, Mar. 7, 2017 A.M. Tr. at 43:16–44:19 (testimony) (“The filters are
guaranteed to fit. The filter fits in place of -- and you'll see here the Filter 3, which we know practices the patent”;
“The filter fits in place of the Whirlpool Filter 3.”); quoting Dkt. No. 158, Mar. 10, 2017 A.M./P.M. Tr. at 42:24–43:9
(closing argument) (“Infringement. Remember what they tell us outside of the courtroom. Outside of the courtroom
they guarantee the W-5 filter to fit. Guaranteed to fit.”)).
4

22

assembly, and thus was insubstantially different.” (Id.) To this end, “Dr. Beaman, Mr. Stein, and
Mr. Baird [] provided ample testimony and evidence from which the jury could have found that
the W-5’s protrusion is insubstantially different from the claimed invention.” (Id. at 13).
Specifically, “Dr. Beaman explained that, despite being on a support bridge indirectly
connected to the end piece wall, the protrusion did ‘not move,’” and instead “remained in a fixed
location so that it could ‘fit into the bypass valve.’” (Id. (citing Dkt. No. 159, Mar. 7, 2017 A.M.
Tr. at 28:16–21.) Dr. Beaman testified about the patented invention’s requirement that “the inlet
and outlet and protrusion have to line up to get into the head assembly,” (Id. at 41:18–22), and that
the protrusion must be “out from the end piece wall” to “operatively engage the[] valves” in the
head assembly, (Id. at 41:22-24). Dr. Beaman also testified the W-5 filter’s protrusion must “line
up to get into the Whirlpool head,” (Id. at 30:4–6), and, once in the head assembly, the protrusion
must “line up well and hit the bypass valve.” (Id. at 47:7–13; see also id. at 43:9–15 (installation
video confirms that W-5 “actually fits and functions the same way”)).
Mr. Stein testified that the W-5 filter’s protrusion, though held by an arm, “fits into the
same place, and [] actuates the [head assembly’s] valve,” just like the claimed invention. (Dkt.
No. 164, Mar. 9, 2017 A.M. Tr. at 121:5–8). Mr. Baird testified that the location of the protrusion
could not be moved, as compared to the patented design, because “compatibility is important” and
agreed that the W-5 needed to “have the same dimensions as . . . the head inside the refrigerator or
it won’t work.” (Dkt. No. 163, Mar. 8, 2017 P.M. Tr. at 41:5–9).
This evidence demonstrates that Whirlpool did present substantial evidence and argument
inviting the jury to directly consider the alleged infringement of TST’s W-5 with respect to the
“protrusion extend[ing] from” limitation. The Court finds that Whirlpool presented “significant
and unrebutted evidence that the W-5 filter, with its end piece and protrusion, was ‘guaranteed to

23

fit’ into the same head assembly as the patented invention. That evidence confirmed the substantial
evidence that the W-5’s protrusion also actuated the bypass valve in the head assembly, and thus
was insubstantially different.” (Dkt. No. 181 at 14–15).
TST also argues that Whirlpool’s “way” analysis5 did not mention the alleged equivalent
structure in the accused W-5 product. Specifically, TST argues that Dr. Beaman never mentioned
a protrusion extending from a bridge between the fittings or explained how that structure performs
the function in substantially the same “way” as a protrusion that extends from the end-piece wall.
In support, TST points to the following testimony:
Q. And, Dr. Beaman, let’s look at the next –– next part of the test. Substantially the
same way. How does the W-5 perform the claimed feature in substantially the same
way?
A. Yeah, so these -- the longitudinal axes of these all have –– there has to be some
platform –– platform for them to come off of. And that has to be from the end piece
wall, which is this flat portion. And so substantially the same way is the end piece
wall provides that platform for these things to extend from.
(Dkt. No. 159, Mar. 7, 2017 A.M. Tr. at 40:14–15, 41:3–6, 42:2–10). In other words, in TST’s
opinion, “Dr. Beaman never mentioned the allegedly equivalent structure in applying the ‘way’
prong.” (Dkt. No. 171 at 14).
Whirlpool submits that “Dr. Beaman explained that the W-5’s protrusion performs
‘substantially the same function,’ in ‘substantially the same way,’ to achieve the ‘substantially the
same result’ as the claimed ‘protrusion extend[ing] from [the] end piece wall.’” (Dkt. No. 181 at
11). Whirlpool argues that “Dr. Beaman testified that the W-5’s protrusion perform[s] the same

5

The function-way-result test ensures that infringement under the doctrine of equivalents is only found where a
claimed invention and an accused device perform substantially the same function, substantially the same way, to attain
substantially the same result. “That a claimed invention and an accused device may perform substantially the same
function and may achieve the same result will not make the latter an infringement under the doctrine of equivalents
where it performs the function and achieves the result in a substantially different way.” Advanced Steel, 808 F.3d at
1320 (quoting Perkin–Elmer Corp. v. Westinghouse Elec. Corp., 822 F.2d 1528, 1532 n. 6 (Fed. Cir. 1987)). However,
the Court ultimately seeks to determine “whether the accused product or process contain elements identical or
equivalent to each claimed element of the patented invention[.]” Warner-Jenkinson, 520 U.S. 17, 21 (1997).

24

function as the claimed function as it extends from the end piece wall to allow it ‘to line up to get
into the head assembly,’” and that the “W-5 achieves the same result as the claimed invention: its
protrusion can enter the head assembly, thereby enabling the flow of water.” (Dkt. No. 181 at 11–
12 (citing Dkt. No. 159, Mar. 7, 2017 A.M. Tr. at 42:19–21 (“So the result is basically the filter
goes into the head assembly. And the end of the day, water flows and you get filtered water.”); Id.
at 28:16-21 (noting that W-5 protrusion still “fit[s] into the bypass valve.”))). Additionally, TST’s
installation video shows that the W-5 filter’s protrusion engages the head assembly. (Dkt. No. 17539 (the W-5 filter “has been engineered to fit and function properly in your refrigerator.”)). This
evidence was confirmed by both TST’s technical expert, Mr. Stein, and TST’s President, Michael
Baird. Both witnesses agreed that the W-5 product performs the same function and achieves the
same result as the claimed invention. (Dkt. No. 165, Mar. 9, 2017 P.M. Tr. at 30:21–24 (Mr. Stein
disagreeing only “with respect to the ‘way’ aspect of the function-way-result test”); Dkt. No. 164,
Mar. 9, 2017 A.M. Tr. at 121:5–8 (Mr. Stein agreeing that the W-5 “fits into the same place [and]
actuates the valve”); Dkt. No. 163, Mar. 8, 2017 P.M. Tr. at 51:22–52:11 (Baird agreeing that the
W-5’s protrusion performs “the same function of actuating the bypass valve” and that “the result
is the same”)).
As to the “way” in which this same function reaches the same result, Whirlpool points to
Dr. Beaman’s testimony with respect to the W-5’s “end piece wall.” Dr. Beaman identified the
“end piece wall” as the “flat portion” of the filter which forms a “platform” for the protrusion (and
the inlet and outlet fittings) to extend from. (Dkt. No. 159, Mar. 7, 2017 A.M. Tr. at 42:5–10
(explaining that “the longitudinal axes of these all have—there has to be some platform—platform
for them to come off of. And that has to be from the end piece wall, which is this flat portion”); id.
at 42:9–10 (“the end piece wall provides that platform for [the fittings and protrusion] to extend

25

from”)). Dr. Beaman also described how TST effectively “carved away” the area around the
protrusion to form the “bridge” of the W-5 during development. (Id. at 28:16–19 (“[T]his
protrusion, this will not move. And what’s going to happen is they kind of carved away or at least
sunk it down, the material.”); id. at 30:4–9 (explaining that “the protrusion now is sitting out
here”)). It is this protrusion in the Whirlpool filter which Dr. Beaman stated must be “out from
the end piece wall” to operatively engage the valves in the head assembly. (Id. at 41:23–24). He
also noted that the W-5 does the same, as its protrusion is structured to “line up” to get into the
head (id. at 30:4-6) and “hit the bypass valve.” (Id. at 47:7–14). Dr. Beaman explained that no
part of the W-5’s “platform” for the protrusion “enter[s] the bypass valve,” just as in the patented
invention. (Id. at 138:7–10; see id. at 21:23–22:8 (claimed protrusion, not end piece wall, can
“activate[] [the] . . . bypass valve” “to help prevent . . . leaks”)).
This evidence is more than substantial. A reasonable jury could have relied upon it in
reaching a verdict of infringement.
Further, TST argues that the above analyses must be limited to “only a narrow scope of
equivalents” due to “the specificity of the claims.” (Dkt. No. 171 at 15).
It is true that “[a] claim that contains a detailed recitation of structure is properly accorded
correspondingly limited recourse to the doctrine of equivalents.” Bicon, Inc. v. Straumann Co.,
441 F.3d 945, 955 (Fed. Cir. 2006). “If it were otherwise, then claims would be reduced to
functional abstracts, devoid of meaningful structural limitations on which the public could rely.”
Sage Prod., Inc. v. Devon Indus., Inc., 126 F.3d 1420, 1424 (Fed. Cir. 1997).
In TST’s view, “the claims at issue define a relatively simple structural device,” limited to
“a protrusion, [] one that extends from the end-piece wall, is positioned between the inlet and outlet
fittings, and lies about 2 cm from the inlet fitting and about 2 cm from the outlet fitting.” (Dkt.

26

No. 171 at 15; see, e.g., ’894 Patent Claim 1). This argument revisits the issue previously
addressed by the Court in Part A, supra, regarding the ability of the claimed “protrusion
extend[ing] from” limitation to be met by the protrusion in the Accused Product through the
indirect extension of the bridge from the end-piece wall. The Court is, again, not persuaded by
TST’s arguments on this issue. See, e.g., supra p. 11. Accordingly, no limitation of the doctrine of
equivalents to some narrower scope is appropriate.
Finally, TST argues that Whirlpool’s theory of equivalence effectively eliminates the
“protrusion extending from” limitation from the claims. (Dkt. No. 171 at 17).

The Court

disagrees. This argument attempts to unduly limit the scope of equivalents for “extend” to direct
contact with the wall, precluding any sort of indirect extension, such as in the Accused Product.
As discussed above and in Part A, supra, regarding the ability of the claimed “protrusion extending
from” limitation to be met by the protrusion in the Accused Product through the indirect extension
of the bridge from the end-piece wall, TST’s arguments remain unpersuasive.
In conclusion, the Court has found that (1) prosecution history estoppel does not bar the
application of the doctrine of equivalents to the “protrusion extending from” limitation; that (2)
TST properly preserved its attack on the sufficiency of the evidence on the issue of infringement
under the doctrine of equivalents; and that (3) on review of the merits of the sufficiency of said
evidence, there is substantial evidence upon which a reasonable jury could have relied to find that
the W-5 filter satisfies the “protrusion extending from” limitation under doctrine of equivalents.
In conducting this analysis, the Court was careful to draw all reasonable inferences in favor of the
Verdict and not make credibility determinations or reweigh the evidence. Boh Bros., 731 F.3d at
451 (a court must “draw all reasonable inferences in the light most favorable to the verdict and
cannot substitute other inferences that [the court] might regard as more reasonable.”) (citation

27

omitted). As the Court has not found the verdict to be unsupported by substantial evidence, the
Court DENIES TST’s Motion for Judgement as a Matter of Law of No Infringement Under the
Doctrine of Equivalents.
C) Judgment as a Matter of Law of No Damages
Prior to trial, “the parties agree[d] that the filter is the appropriate royalty base.” (Dkt. No.
144 at 6). TST argues that Whirlpool failed to prove a reasonable royalty based on the value
attributable to the patented technology. (Dkt. No. 171 at 18).
“When the accused technology does not make up the whole of the accused product,
apportionment is required.” Finjan, Inc. v. Blue Coat Sys., Inc., No. 2016-2520, 2018 WL 341882,
at *8 (Fed. Cir. Jan. 10, 2018). “[T]he ultimate combination of royalty base and royalty rate must
reflect the value attributable to the infringing features of the product, and no more.” Ericsson, Inc.
v. D–Link Sys., Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014). “In such cases, the patentee must ‘give
evidence tending to separate or apportion the [infringer]’s profits and the patentee’s damages
between the patented feature and the unpatented features, and such evidence must be reliable and
tangible, and not conjectural or speculative.’” Finjan, 2018 WL 141882 at *8 (quoting Garretson
v. Clark, 111 U.S. 120, 121 (1884)). Whirlpool, “as the present patent holder, had the burden of
proving damages by a preponderance of the evidence.” Id. at *8.
First, Whirlpool argues that TST’s challenge to apportionment is procedurally improper.
Whirlpool contends that this challenge is a “methodology challenge” that could only have been
properly brought as a Daubert motion. (Dkt. No. 181 at 17). Additionally, Whirlpool argues that
TST’s argument, if not a challenge to methodology, should be limited to an argument that
Whirlpool had not apportioned for “external factors,” and that TST’s argument that Whirlpool

28

failed to apportion for “unpatented features of the accused product” itself, “such as the carbon
block responsible for the filter’s filtering capability,” has been waived. (Dkt. No. 189 at 8).
For similar reasons as in Part II.B.2, supra, the Court finds that the argument was not
waived. TST brought a motion under Rule 50(a) “for no damages because the Plaintiffs failed to
present evidence apportioning the value of the patented technology.” (Dkt. No. 165, Mar. 9, 2017
P.M. Tr. at 52:22–24). The challenge TST has presented is that, in its view, the evidence presented
by Mr. McFarlane simply fails to provide the jury “with evidence from which the jury could
apportion those profits to isolate the value contributed by the patented technology, as distinct from
the value contributed by other, unpatented features of the accused product.” (Dkt. No. 185 at 11).
Turning to the substance of TST’s argument, first, the Court notes the issues upon which
the Parties agree: (1) that the filter is the appropriate royalty base, (Dkt. No. 144 at 6); (2) that the
filter is the smallest saleable patent-practicing unit in this case, (Dkt. No. 185 at 9); and (3) that
the parties compete for sales of the product, and thus Whirlpool stands to lose its entire profit on
its lost sales of those products. (Id.)
TST complains that Whirlpool’s damages expert Mr. McFarlane “testified that 100% of
TST’s profit and 100% of Whirlpool’s profit were attributable to the patented invention, without
providing any analysis of the value attributable to unpatented features of the accused product.
(Dkt. No. 171 at 21).

“Because Whirlpool failed to apportion the value of the patented

technology,” TST argues, “the jury’s award of reasonable-royalty damages award cannot stand.”
(Id. at 22). TST contends that “Whirlpool was required to establish the value of the patented
technology, as distinct from the other unpatented features of the accused product.” (Id.)
In response, Whirlpool argues that “Mr. McFarlane considered the parties’ profits in
selecting a starting point for his hypothetical negotiation analysis. He appropriately considered the

29

entire value of the filters because substantial evidence confirms that that value is attributable to
patented features. And his Georgia-Pacific analysis accounted for any factors that might impact
the royalty rate.” (Dkt. No. 181 at 18–19).
The evidence marshaled by Whirlpool in support of its position is substantial. Mr.
McFarlane testified that he had considered the profit that Whirlpool would lose and TST would
earn if Whirlpool granted TST a license. (Dkt. No. 160, Mar. 7, 2017 P.M. Tr. at 127:7–22,
124:19–125:5). He further testified that Whirlpool would lose all of its profit, (id. at 124:19–
125:5), and noted TST’s profits were an important factor to consider when calculating damages
because the “entirety of TST’s profits [were] contingent upon TST getting a license.” (Id. at 127:7–
22, 145:5–10; see also Dkt. No. 164, Mar. 9, 2017 A.M. Tr. at 25:15–17).
There is a large dispute between the Parties as to whether, how, and to what extent the
patented features drive demand for the filters. Specifically, Whirlpool submits that interoperability
with a Filter 3 head assembly (or “fit”) is a patented feature and is undisputed. (Dkt. No. 181 at
20). TST disputes this. (Dkt. No. 185 at 10 (“Interoperability Is Not A Patented Feature”)).
Even so, “[t]he parties agree that interoperability with Whirlpool’s refrigerator is a primary
driver of demand.” (Id.; see also Dkt. No. 159, Mar. 7, 2017 A.M. Tr. at 23:10–24 Dr. Beaman
testifying that interoperability is “an important benefit of the invention”); Dkt. 121-1 at 39 n. 73
(TST noting in its proposed Jury Instructions that the invention “is essential for interoperability”
and that “license is necessary to make a filter that interoperates with Whirlpool’s refrigerators”)).
However, in TST’s view, while “[t]he ’894 patent does cover specific distances and
arrangements of components, [] these claimed dimensions are not sufficient for the filter to fit
properly in the refrigerator. For example, merely satisfying the claim requirement that the fittings

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and protrusion be ‘about 2 cm’ from one another is not enough for a filter to fit properly.[6] The
dimensions of the filter need to match those of the refrigerator precisely if the filter is to engage
the Filter-3 refrigerator properly and without leaking. ([Dkt. No. 163, Mar. 8, 2017 P.M.] Tr. at
41:7–9). Thus ‘fit’ is not a claimed feature.” (Dkt. No. 171 at 1).
This argument is unpersuasive. First, the claim language explicitly requires that the filter
engage with a head assembly. (’894 Patent at Claim 1 (end piece “for operatively engaging a head
assembly”); see also Claims 4 and 15). If a filter does not properly fit, it cannot engage with the
head assembly. Further, it may be true that the specific distances and arrangements of components
are not sufficient for the filter to fit properly in the refrigerator, but the claimed configuration
requirements are necessary for the filter to fit. (Dkt. No. 159, Mar. 7, 2017 A.M. Tr. at 15:9–16:3,
36:13–38:2 (claimed dimensions and components allow for “fit”)).
This accords with the Court’s prior holding that the preambles of Claims 1 and 4 are limiting
by “set[ting] forth configuration requirements in relation to head assemblies” (even though they “do
not require the actual presence of head assemblies and valves”). (Dkt. No. 59 at 16.) Further, as TST

noted previously, “invention . . . is essential for interoperability,” such that a “license is necessary
to make a filter that interoperates with Whirlpool’s refrigerators.” (Dkt. 121-1 (TST’s proposed
Jury Instructions) at 39 n. 73).
TST further argues that interoperability is only one of many drivers of demand, drivers
which Mr. McFarlane did not consider in his analysis. (Dkt. No. 185 at 10). Specifically, “the
carbon block and its capacity to filter contaminants from the water” and “the existing base of
Whirlpool refrigerators” both also drive demand. (Id. (citations omitted)).

The Court notes this argument is contrary to TST’s prior position that the claims require a cartridge that actually
engages a head assembly. (Dkt. No. 46 at 9 (“Reading the claims to cover cartridges that do not engage a head
assembly . . . ‘would be divorced from reality’”)).
6

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Whirlpool submits, first, that evidence was presented that the existing base of Whirlpool
refrigerators is tied to interoperability because consumers demand filters that fit into their
refrigerators, meaning that more Filter 3 refrigerators in the market leads to higher demand for
practicing filters. (See Dkt. No. 160, Mar. 7, 2017, P.M. Tr. at 122:21–124:16 (“[W]hat motivates
owners of Filter 3 [refrigerators] to purchase . . . Filter 3 filters is because the filter fits in the
refrigerator.”); Dkt. No. 164, Mar. 9, 2017, A.M. Tr. at 14:11–13 (“[T]he demand for the filter
cartridges is driven off of the sales of the [Filter 3] refrigerators.”); Dkt. No. 165, Mar. 9, 2017,
P.M. Tr. at 60:23–61:17 (“existing base of Whirlpool refrigerators” “motivate[s] practicing the
patent”)). Second, Mr. McFarlane testified that he “accounted for the value of the carbon block in
[] [his] reasonable royalty analysis,” (Dkt. No. 162, Mar. 8, 2017, A.M. Tr. at 49:3–6). TST argues
that “Mr. McFarlane could only have meant that he considered apportioning some part of the
[P]arties’ profits to the carbon block, before deciding against it” since he decided “to attribute
100% of the profits from the parties’ products to the patented invention.” (Dkt. No. 185 at 11).
However, there is undisputed testimony that he did consider the carbon block in his analysis. (Dkt.
No. 161, Mar. 8, 2017, A.M. Tr. at 49:3–6 (“Q. Did you account for the value of the carbon block
in doing your reasonable royalty analysis? [Mr. McFarlane:] I believe that I did, yes.”)).
Additionally, there was evidence presented that the patent’s space savings feature allows for a
larger carbon block, which in turn improves contaminant reduction. (Dkt. No. 159, Mar. 7, 2017,
A.M. Tr. at 15:2–7 (Beaman discussing relationship); Dkt. No. 158, Mar. 6, 2017, P.M. Tr. at
128:13–22 (inventor Todd Rose discussing same); Dkt. No. 160, Mar. 7, 2017, P.M. Tr. at 142:24–
143:21 (McFarlane discussing space saving as a patented benefit)). Moreover, evidence was also
presented for ease of installation, tying it to the patented technology as well. (Dkt. No. 159, Mar.
7, 2017 A.M. Tr. at 16:7–21:9 (describing how patented design achieves this advantage); id.at

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12:12–17 (patented advantages include “ease of use”), Dkt. No. 160, Mar. 7, 2017 P.M. Tr. at
143:14–21 (same)).
Further, as Whirlpool points out, Mr. McFarlane used the midpoint of the Parties’ profits
only as the starting point for a hypothetical negotiation, further apportioning the rate through his
Georgia-Pacific analysis. (see, e.g., Dkt. No. 160, Mar. 7, 2017 P.M. Tr. at 130:14–15 (“a midpoint
was an appropriate starting point for the baseline royalty rate.”); 131:9–163:25 (discussing the
Georgia-Pacific factors) (“The $10.93 is the ending of Step 1. The baseline royalty rate analysis.
Now, I do Step 2. And that, as you recall, is the Georgia-Pacific factor analysis.”)). Indeed, and
as an example, in analyzing the 13th Georgia-Pacific factor, Mr. McFarlane testified he considered
“all of the things that . . . TST contribute[d] towards commercializing the accused products,”
including its efforts to “design,” “manufactur[e],” and “promote” the filters, (Id. at 146:2–147:8),
crediting TST’s “low price strategy [for] greatly expand[ing] the market for these filters.” (Id. at
147:9–21). He concluded that these efforts had a “very significant downward effect,” lowering the
royalty rate. (Id. at 147:22–148:5).
The Court finds that Mr. McFarlane did engage in the proper apportionment required by
the law, beginning with an appropriate rate.
Additionally, the jury heard significant evidence from Whirlpool’s and TST’s witnesses
regarding the filters’ patented and unpatented features and drivers of demand. (See, e.g., id. at
8:20-9:1, 9:11-11:9 (Beaman); id. at 121:17-124:8-18, 122:21-124:7, 124:11-16 (McFarlane); Dkt.
No. 162, Mar. 8, 2017 A.M. Tr. at 58:2–20 (Baird); Dkt. No. 164, Mar. 9, 2017 A.M. Tr. at 14:11–
13,14:23-15:2 (Hanson)). The jury was free to weigh the evidence as it saw fit. Micro Chem., Inc.
v. Lextron, Inc., 317 F.3d 1387, 1394 (Fed. Cir. 2003) (“The amount of damages based on a
reasonable royalty is an issue of fact.”).

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The jury’s $7.6 million award was less than Mr. McFarlane’s proposed damages of
$8,742,836. It is clear that the jury reached its own award within the confines of the law, as
presented in the Court’s charge, and appears to have apportioned damages beyond what Mr.
McFarlane opined. Accordingly, substantial evidence supports the jury verdict. See Energy
Transp. Grp., Inc. v. William Demant Holding A/S, 697 F.3d 1342, 1356-57 (Fed. Cir. 2012)
(affirming verdict despite improper use of “25% rule” because “[t]he jury did not adopt either
expert’s damages analysis wholesale,” and “record support[ed] the jury’s award”); Brocade
Commc’ns Sys., Inc. v. A10 Networks, Inc., No. 10-cv-3428, 2013 WL 831528, at *7 (N.D. Cal.
Jan. 10, 2013) (affirming jury award less than expert’s amount, despite argument that jury did not
apportion).
In conclusion, because substantial evidence supports the jury’s verdict as to damages in

.
this case, the Court DENIES TST’s Motion for Judgement as a Matter of Law for No Damages.
IV. Conclusion
The Court agrees with Whirlpool that while TST “may not like the jury verdict,” “it was
the result of a fair trial, fairly fought.” Micro Chem., 317 F.3d at 1394. For all of the reasons
provided above, the Court hereby DENIES Defendant TST’s Motion for Judgment as a Matter of
Law (Dkt. No. 171) in its entirety.

SIGNED this 19th day of December, 2011.
So ORDERED and SIGNED this 29th day of March, 2018.

____________________________________
RODNEY GILSTRAP
UNITED STATES DISTRICT JUDGE

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