Acantha LLC v. DePuy Orthopaedics Inc et al
Filing
340
DECISION AND ORDER signed by Chief Judge William C Griesbach on 8/5/2019 Granting-in-Part and Denying-in-Part 316 Motion for Judgment, Granting-in-Part and Denying-in-Part 318 Motion for Enhanced Damages and Other Post-Trial Relief and Granting 332 Motion for Leave to File Sur-Reply. Once the court receives the parties' supplemental damages calculation, it will enter an Amended Judgment. (cc: all counsel) (Griesbach, William)
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
ACANTHA LLC,
Plaintiff,
v.
Case No. 15-C-1257
DEPUY SYNTHES SALES INC. and
DEPUY SYNTHES PRODUCTS INC.,
Defendants.
DECISION AND ORDER
Plaintiff Acantha LLC brought this suit in 2015 against Defendants DePuy Synthes Sales
Inc. and DePuy Synthes Products Inc., alleging Defendants’ Vectra and Zero-P VA products
infringe various claims of its patent, U.S. Reissued Patent No. RE43,008 (the ‘008 Patent). After
a seven day trial, the jury returned a verdict finding that Defendants’ products infringe the ‘008
Patent. The jury did not specify whether it found literal infringement or infringement under the
doctrine of equivalents. In addition, the jury found that the infringement was willful and awarded
damages in the amount of $8,248,560.00.
During the trial, Defendants filed a timely motion for judgment as a matter of law under
Federal Rule of Civil Procedure 50(a), asserting that they do not infringe any of the asserted claims
of the ‘008 Patent and that the Campbell ‘089 Patent is prior art. The court took those motions
under advisement. Defendants now renew their motion for judgment as a matter of law pursuant
to Rule 50(b) and move to amend the judgment pursuant to Rule 59(e). Acantha, for its part, moves
for enhanced damages and other post-trial legal and equitable relief pursuant to Rule 59. For the
following reasons, both motions are partially granted.
BACKGROUND
Acantha is the owner of U.S. Patent No. 6,261,291, which was issued on July 17, 2001.
That patent was later reissued as U.S. Patent No. RE43,008 on December 6, 2011. The ‘008 Patent,
entitled “Orthopedic Implant Assembly,” describes an orthopedic implant used for joining bone
segments, for instance, in the treatment of broken bones, spinal disorders, or the fusion of vertebrae
following the removal of a spinal disk. Acantha asserts claims 3, 9, 21, 36, 37, 59, 63, 72, 79, and
85 of the ‘008 Patent. The asserted claims are directed to an orthopedic implant that includes a
stabilizing member (such as a bone plate) with at least one hole through the plate, a securing
member (such as a bone screw), and a stopping member (such as a snap-ring or integral collar) that
sits in a groove in the bore and prevents the screw from backing out of the assembly, as shown
below:
‘008 Patent at 2, Dkt. No. 1-3. As the screw is turned and recedes into the bore, its head expands
the snap-ring into the groove. Once the head of the screw passes through the snap-ring, the snapring elastically returns to its original shape. The snap-ring then prevents the screw from backing
out of the assembly. This orthopedic implant assembly can be durably attached to a patient’s bone
and prevents a screw from loosening or backing out of the bone.
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Acantha claims Defendants’ Vectra and Zero-P VA products infringe. The Vectra line
consists of three different anterior cervical plating products: Vectra, Vectra-T, and Vectra-One.
These products can be distinguished by their anterior cervical plates.
Dkt. No. 159-2 at 6–7. A surgeon attaches the Vectra to the surface of a vertebrae of the cervical
spine. The Vectra designs cover two intervertebral disc spaces, as shown below.
Id. at 4.
The Zero-P VA is a member of the Zero-P family of products. Unlike the Vectra line, the
Zero-P VA is a standalone intervertebral product to be used in the anterior cervical spine. The
product is comprised of a spacer, a plate portion, and bone screws. The Zero-P VA includes a
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spring-loaded “snapper” mechanism designed to prevent screw back out. The snapper mechanism
consists of a cylindrical catch (or pin), a spring, and a set screw.
Dkt. No. 159-9 at 24. During implantation, the surgeon inserts the spacer/plate portion of the ZeroP VA into an intervertebral disc space, rather than place the product on the surface of the anterior
cervical spine. The Zero-P VA’s contralateral stops rest on the surface of the spine, as shown
below.
Dkt. No. 159-3 at 2, 5. In the snapper mechanism’s resting state, the spring applies a force on the
catch, which positions a portion of the catch in the path of the bone screw. As the bone screw is
inserted into the plate, the screw hits the catch and pushes it further into the plate portion,
compressing the spring. After the screw passes the protruding portion of the catch, the spring
pushes the catch outward into its original position. The catch prevents the screw from backing out
of the bone.
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D
Dkt. No. 159-9 at 33, 35.
ANALYSIS
I. Defendants’ Rule 50(b) Renewed Motion for Judgment as a Matter of Law
The court will first address Defendants’ motion for judgment as a matter of law pursuant to
Rule 50(b) and to amend the judgment under Rule 59(e). Rule 50 “allows a district court to enter
judgment against a party who has been fully heard on an issue during a jury trial if ‘a reasonable jury
would not have a legally sufficient evidentiary basis to find for the party on that issue.’” Passananti
v. Cook Cty., 689 F.3d 655, 659 (7th Cir. 2012) (citation omitted). The court is to decide “whether
a highly charitable assessment of the evidence supports the jury’s verdict or if, instead, the jury was
irrational to reach its conclusion.” Thorne v. Member Select Ins. Co., 882 F.3d 642, 644 (7th Cir.
2018) (internal quotation marks omitted). The court must view the evidence presented at trial in
the light most favorable to the party that prevailed before the jury and draw all reasonable inferences
in that party’s favor. Martin v. Milwaukee Cty., 904 F.3d 544, 550 (7th Cir. 2018). The court may
not weigh the evidence or make credibility determinations. Martinez v. City of Chicago, 900 F.3d
838, 844 (7th Cir. 2018). Although the court reviews the entire record, “it must disregard all
evidence favorable to the moving party that the jury [was] not required to believe.” Reeves v.
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Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150–51 (2000); Tart v. Ill. Power Co., 366 F.3d
461, 478 (7th Cir. 2004). Overturning a jury verdict is not something that courts do lightly. Massey
v. Blue Cross–Blue Shield of Ill., 226 F.3d 922, 925 (7th Cir. 2000). A jury verdict will be
overturned only if “the moving party can show that no rational jury could have brought in a verdict
against it.” Hossack v. Floor Covering Assocs. of Joliet, Inc., 492 F.3d 853, 859 (7th Cir. 2007)
(internal citations and quotation marks omitted).
Defendants raise a number of arguments in their renewed motion for judgment as a matter
of law: (1) the Zero-P VA does not infringe; (2) the Vectra does not literally infringe and a finding
of equivalence is barred as a matter of law; (3) the jury’s finding of willfulness should be vacated;
(4) Acantha did not prove induced infringement; (5) Campbell is prior art to the ‘008 Patent; (6) the
court should vacate or amend the damages award to account for non-infringement; and (7) the court
should amend the judgment in favor of the six dismissed-claims defendants. The court will address
each in turn.
A. Infringement
Defendants assert that they are entitled to judgment as a matter of law of no literal
infringement with respect to the Zero-P VA and Vectra products. Defendants also argue, in the
alternative, that a finding of equivalence is barred as a matter of law. Because the court finds
insufficient evidence to support a finding that the Zero-P VA product infringed, but that substantial
evidence supports a finding of literal infringement by the Vectra products, the court will not address
Defendants’ equivalency arguments.
“To establish literal infringement, every limitation set forth in a claim must be found in an
accused product, exactly.” Southwall Techs., Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir.
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1995). “[T]he burden remains with the patentee to prove infringement, not on the defendant to
disprove it.” Welker Bearing Co. v. PHD, Inc., 550 F.3d 1090, 1095 (Fed. Cir. 2008). Whether
Defendants’ products meet all the claim limitations is a question of fact for the jury to decide. See
Akzo Nobel Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1339 (Fed. Cir. 2016) (citing Absolute
Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1129–30 (Fed. Cir. 2011)). Judgment as a
matter of law of no literal infringement is nevertheless “appropriate if no reasonable fact finder
could determine that the accused devices meet every limitation of the properly construed claims.”
Riles v. Shell Exploration & Prod. Co., 298 F.3d 1302, 1308 (Fed. Cir. 2002) (quoting Elkay Mfg.
v. EBCO Mfg., 192 F.3d 973, 980 (Fed. Cir. 1999)).
1. Zero-P VA
Defendants argue that Acantha did not present sufficient evidence at trial to support findings
of literal infringement as to the Zero-P VA. First, Defendants contend that Acantha did not meet
its burden of proof with respect to infringement because it failed to establish that the Zero-P VA has
an “anterior” surface or a “posterior” surface required by the asserted claims. The ‘008 Patent
involves an orthopedic implant assembly that has a stabilizing element with anterior and posterior
surfaces. By way of example, Claim 59 reads in relevant part:
An orthopedic attachment assembly, comprising:
a) an elongated securing element having an enlarged integral portion with a length,
an anterior surface, a posterior surface and a transverse dimension;
b) an attachment element which has an anterior surface and a posterior surface and
which has at least one bore extending through the attachment element from the
anterior surface to the posterior surface and is configured to receive the securing
element, the bore having an anterior bore portion, and a posterior bore portion, the
posterior bore portion having at least one transverse dimension smaller than the
transverse dimension of the enlarged integral portion of the securing element to
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facilitate retention of the enlarged integral portion of the securing member with the
posterior bore portion; and
c) a biased stopping member which has a posterior stopping surface, a first
configuration which extends within the bore that is elastically deformed to a second
configuration as the enlarged portion of the securing member passes into the
posterior bore portion, the biased stopping member returning to the first
configuration upon passage of the enlarged integral portion into the posterior bore
portion, the posterior surface of the biased stopping member configured to engage
with the anterior surface of the enlarged integral portion of the securing member
facilitating retention of the enlarged portion of the securing member within the
posterior bore portion of the attachment member.
‘008 Patent col. 14 ll. 53–67, col. 15 ll. 1–13.
In its claim construction order, the court determined that the terms “anterior” and “posterior”
have their plain and ordinary meanings, noting that the ‘008 Patent’s specification unequivocally
reveals that “[t]he term posterior should be understood to mean an inner portion of the assembly
closer to the bone to which the assembly is attached, and the term anterior should be understood to
mean an outer portion of the assembly farther away from the bone.” See March 13, 2017 Decision
and Order on Claim Construction (Claim Construction Order) at 5, Dkt. No. 64 (quoting ‘008 Patent
col. 1 ll. 44–48). The court explained that “the patent’s use of the terms ‘anterior’ and ‘posterior’
in this context is relative, not spatially specific.” Id. Defendants seek judgment as a matter of law
of non-infringement, asserting that no reasonable jury could have found that the Zero-P VA meets
the limitations of “anterior surface” and “posterior surface” as construed by the court.
The court initially concluded during the summary judgment proceedings that the Zero-P VA
did not infringe the ‘008 Patent. The court noted that, unlike the traditional anterior cervical plating
systems, which are attached to the outer surface of the patient’s cervical spine by a surgeon, the
Zero-P VA is embedded within the intervertebral disc space, or the space between the bone.
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Defendants asserted that the Zero-P VA does not infringe the ‘008 Patent because the surfaces of
the Zero-P VA products that would be defined as anterior or posterior are either equidistant to the
bone or the anterior surface is closer to the bone. Acantha countered that the terms “anterior” and
“posterior” merely identify the “front/back, leading/trailing, inward-/outward-facing surfaces of the
claimed plate assembly.” Dkt. No. 213 at 17 (quoting Dkt. No. 159-11 at 41). Acantha suggested
that the anterior/posterior limitations merely provide, from the surgeon’s perspective, an indication
as to which surface is which, and “when a surgeon first orients the plate and approaches the spine
for implantation, there can be no doubt which side is further away from the bone (the trailing side
facing the surgeon) and which is closer to the bone (the leading side facing the spine).” Id. (quoting
Dkt. No. 180 at 19). The court concluded that Acantha’s construction of “anterior” and “posterior”
read “closer to/farther from the bone” out of the plain and ordinary meaning of these terms. It
concluded that the operation of the Zero-P VA is significantly different than what is envisioned by
the ‘008 Patent and found that, under the plain meanings of “anterior/posterior surface,” the Zero-P
VA product does not infringe because the anterior surface of the product is at least equidistant (if
not closer) to the bone, than its posterior surface.
On May 19, 2018, the court partially granted Acantha’s motion for reconsideration. Dkt.
No. 253. Acantha claimed that the court erred in granting summary judgment with respect to the
Zero-P VA because a person of ordinary skill in the art at the time of the invention would not
understand “‘anterior surface’ or ‘posterior surface’ to have any bearing on the manner in which the
attachment element is situated on the spine or between vertebra” but would rather understand “that
the inventors were merely describing the surfaces of the attachment element in relation to the screw
trajectory through a bore.” Id. at 8 (quoting Dkt. No. 224 at 14–15). The court agreed that the facts
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were not clear at the time of the summary judgment proceedings and, in an abundance of caution,
allowed the issue to proceed to trial. After the trial, the court now finds that its original conclusion
that the Zero-P VA is a different device than the patented invention was correct.
Acantha identifies three categories of evidence supporting the jury verdict of literal
infringement and establishing that the anterior/posterior surface limitations are met by the Zero-P
VA product: the testimony of Dr. Sachs, Defendants’ technical documents, and the models of the
product. At trial, Dr. Sachs summarized the court’s construction of the terms “anterior” and
“posterior,” see Trial Transcript (Tr.) 484:19–23, Dkt. No. 302 at 241, then described his application
of the court’s claim construction to the products at issue. Dr. Sachs testified:
The anterior surface of the plate is the surface that’s closest to the surgeon and
farthest away from where the screw will actually go into the bone. And the posterior
surface is described as the lower surface of the plate, which is also the closest area
to the bone where the screw will then enter the bone.
Tr. 483:14–19, Dkt. No. 302 at 240. Dr. Sachs explained that, with respect to the Zero-P VA, the
screw goes into the opening on the plate’s anterior surface and goes out of the opening on the
posterior surface where it then enters the bone.
Defendants assert that the court should disregard Dr. Sachs’ testimony because it was based
on an improper understanding of the court’s claim construction. Acantha claims that Dr. Sachs
accepted the court’s construction of the terms “anterior” and “posterior” and applied the terms in
their relative, directional way, using the bore as the reference point. The court agrees with
Defendants that Dr. Sachs’ testimony was based on an erroneous interpretation of the court’s claim
construction and should be disregarded. Acantha maintains that how a person of ordinary skill in
the art would understand “anterior” and “posterior” and whether the Zero-P VA had anterior and
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posterior surfaces are questions of fact to be resolved by the jury. While an expert can offer an
opinion on how a court’s claim construction should be applied to the facts of the case, the expert
cannot offer an opinion that contradicts or disregards the court’s claim construction rulings. See
Ravo v. Covidien LP, 55 F. Supp. 3d 766, 769 (W.D. Penn. 2014); Cordis Corp. v. Boston Sci.
Corp., 658 F.3d 1347 (Fed. Cir. 2011).
In this case, Dr. Sachs’ opinion was based on an erroneous understanding of the court’s
claim construction. Under the court’s construction, the Zero-P VA can infringe the ‘008 Patent only
if it has an anterior surface that is farther from the bone and a posterior surface that is closer to the
bone to which it is attached. The Zero-P VA employs an intervertebral plate as opposed to the
traditional anterior cervical plate that the invention calls for and the Vectra has. When an
intervertebral device such as the Zero-P VA is placed between vertebrae, the surfaces through which
the bore runs are equidistant to the vertebrae.
Rather than base his construction of the
anterior/posterior surface limitations on the proximity of the surfaces to the bone as construed by
the court, Dr. Sachs based his construction and analysis on screw trajectory and the surfaces’
relationship to the point where the screw enters the bone. In accordance with this construction, Dr.
Sachs described how the Zero-P VA has anterior and posterior surfaces, even though it sits between
two vertebrae:
[I]f the disc was taken away this (indicating) becomes the surface of the bone where
the screw goes in. So if a plate is sitting against that surface and the screw can pass
through the plate into this (indicating), then that becomes the posterior surface of
where the plate sits. And the anterior surface is farther away, which is where the
screw would enter up in here.
Tr. 502:15–503:10, Dkt. No. 302 at 260. The anterior/posterior surface limitations have specific
meanings, irrespective of screw trajectory, however. The patentee did not define anterior/posterior
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by reference to the screw trajectory, and Acantha cannot escape the language actually used in the
‘008 Patent. See Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1380 (Fed. Cir.
2009) (“When a patentee explicitly defines a claim term in the patent specification, the patentee’s
definition controls.”); Abbott Labs. v. Sandoz, Inc., 566 F.3d 1282, 1288 (Fed. Cir. 2009) (“[C]laims
cannot ‘enlarge what is patented beyond what the inventor has described as the invention.’” (quoting
Biogen, Inc. v. Berlex Labs., Inc., 318 F.3d 1132, 1140 (Fed. Cir. 2003))). Under Dr. Sachs’
construction, every plate with a hole through it will have a side where the screw enters and one
where the screw exits. Dr. Sachs’ explanation of the anterior/posterior limitations effectively reads
“closer to/farther from the bone” out of the plain and ordinary meaning of these phrases. In sum,
the court will disregard Dr. Sachs’ testimony, as it is inconsistent with the court’s claim
construction.
Without Dr. Sachs’ testimony regarding “anterior” and “posterior” limitations, there is little
evidence to support the jury’s verdict that the Zero-P VA infringed the ‘008 Patent. “Substantial
evidence, as required to support the jury’s verdict, demands more than a mere scintilla.” Cordis
Corp., 658 F.3d at 1358 (citing Johnson v. Campbell, 332 F.3d 199, 204 (3d Cir. 2003)). In short,
no reasonable jury would have a legally sufficient evidentiary basis to find that the Zero-P VA meets
the anterior/posterior surface limitations of the ‘008 Patent.
In addition, the snapper mechanism is significantly different than the biased stopping
member that the patent calls for. The court construed “stopping member” to mean a “mechanical
component that prevents the screw from backing out of the stabilizing member” and “bias” to mean
the “tendency of a structure or component to return to a certain position or shape absent external
force.” Claim Construction Order at 7, 13, Dkt. No. 64. The stopping member as described and
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as reflected in the specification is a mechanical element that prevents the screw from backing out.
The stopping mechanism in the Zero-P VA is a multi-part component that accomplishes the goal
in a significantly different way. For these reasons, Defendants are entitled to judgment as a matter
of law of no literal infringement as to the Zero-P VA.
2. Vectra
Defendants assert that they are entitled to judgment as a matter of law of no literal
infringement with respect to the Vectra products because the Vectra does not have a screw head that
is retained below the stopping member in the posterior bore portion, as required by all of the
asserted claims of the ‘008 Patent. In particular, Defendants contend that the jury could not have
reasonably found that the Vectra literally meets the limitations contained in the ‘008 Patent because
the Vectra screw head extends throughout the bore and therefore cannot be retained below the
stopping member in the posterior bore portion.
Defs.’ Br. at 33, Dkt. No. 317.
The court adopted the parties’ agreed construction of the term “head” to mean “portion of
the securing member anterior to the elongated body.” Claim Construction Order at 4. Acantha
argues that the head of the screw does not include the drive mechanism that guides the screw into
the stabilizing member and sits above the stopping member. It maintains instead that the widest
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portion of the screw is its head. In Acantha’s view, because the drive mechanism is separate and
distinct from the screw head, the screw head is retained in the posterior bore portion, thereby
satisfying the parties’ claim construction of the term “head” and meeting the claim limitations.
The jury had substantial evidence to determine that only the widest portion of the screw,
without the drive mechanism, constitutes the “head.” For instance, Dr. Sachs testified that, in his
expert opinion, the spherical, widest portion of the screw is the “head” of the Vectra screw. Tr. at
489:16–490:16, Dkt. No. 302 at 246. Dr. Sachs’ opinion was supported by Defendants’ own
documents, which confirmed that the driving mechanism was separate and distinct from the screw
head. One document described the Vectra clip as covering both sides of the head. Although
Defendants’ expert, Mr. Sherman, testified that the head necessarily included the drive mechanism,
it is the jury’s “role to evaluate the weight to be given to the testimony of dueling qualified experts.”
Uniloc USA, Inc. v Microsoft Corp., 632 F.3d 1292, 1306 (Fed. Cir. 2011) (citing i4i Ltd. P’ship
v. Microsoft Corp., 598 F.3d 831, 856 (Fed. Cir. 2010)). Based on a review of the record as a
whole, the court cannot conclude that there was not substantial evidence to support the jury’s
finding of infringement. As a result, Defendants are not entitled to judgment as a matter of law of
no literal infringement as to the Vectra products.
B. Willfulness
Defendants also challenge the jury’s finding of willfulness as unsupported by substantial
evidence. A party seeking a willfulness finding must prove by a preponderance of the evidence that
“the risk of infringement was either known or so obvious that it should have been known” to the
alleged infringer. Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1930 (2016) (internal
quotation marks and citation omitted). A determination of willfulness is a “highly fact-based
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endeavor.” Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co., 240 F. Supp. 3d 605, 618 (E.D.
Tex. 2017); Sociedad Espanola De Electromedicina Y Calidad, S.A. v. Blue Ridge X-Ray Co., Inc.,
No. 1:10-cv-00159-MR, 2016 WL 3661784, at *2 (W.D.N.C. July 8, 2016) (explaining that the
issue of willfulness is “solely a factual issue which can be readily addressed by a jury”). It turns,
in particular, “on the subjective belief of the accused infringer, measured at the time of the
challenged conduct.” Velocity Patent LLC v. FCA US LLC, 319 F. Supp. 3d 950, 971 (N.D. Ill.
2018) (citing Halo, 136 S. Ct. at 1933 (“The subjective willfulness of a patent infringer, intentional
or knowing, may warrant enhanced damages, without regard to whether his infringement was
objectively reckless.”)); see also Arctic Cat Inc. v. Bombardier Recreational Prods. Inc., 876 F.3d
1350, 1370–72 (Fed. Cir. 2017) (noting that the subjective willfulness standard was not altered by
Halo). The infringer’s knowledge of the asserted patent, without more, is insufficient to support
a willfulness finding. See Ajinomoto Co., Inc. v. Archer–Daniels–Midland Co., 228 F.3d 1338,
1351–52 (Fed. Cir. 2000). “The patentee must present threshold evidence of culpable behavior.”
Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1332 (Fed. Cir. 2004). In support of its willfulness
argument, Acantha maintains that Defendants’ reliance on the opinions of counsel was unreasonable
and that Defendants copied the inventions covered by the ‘008 Patent. Viewing the record in the
light most favorable to Acantha and giving Acantha the benefit of all reasonable inferences, the
court concludes that Acantha provided sufficient evidence for a reasonable jury to have found
Defendants’ infringement was willful.
Defendants maintain that Acantha failed to meet its burden of proving the opinions of
counsel Defendants relied on were incompetent and failed to show that the opinions were so
deficient that it was unreasonable to rely on them. Defendants assert that they reasonably relied on
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two opinions from independent outside counsel to form a good-faith belief in non-infringement or
invalidity of the ‘008 Patent. The opinion letters comprise approximately seventy pages of analysis
and opinion and conclude that the accused products did not infringe a valid claim of the ‘008 Patent.
Acantha contends that the competency of these opinion letters is only relevant if Defendants
reasonably relied on them, however, and that it presented evidence that Defendants did not rely on
the letters.
Although Defendants’ witnesses testified that it was standard practice to obtain and rely on
opinions of counsel before launching a product, none of Defendants’ witnesses who were employed
in Defendants’ engineering or product development departments actually read the opinions or could
testify to the contents of the opinions they claimed the company relied on. One can easily argue that
the engineers and developers would not have read the opinion letters because they believed in-house
counsel would review and analyze them. But Defendants did not present any evidence or testimony
from their in-house counsel or other individuals who may have read the opinions. Based on the
evidence presented at trial and the lack of testimony from an individual who actually read the letters,
the jury could have reasonably concluded that Defendants did not reasonably rely on those opinions
or that the letters were merely intended to perform the function of insulating Defendants from
liability rather than ensure that Defendants acted lawfully. This is a sufficient basis for the jury to
find willfulness.
Acantha also submitted sufficient evidence that Defendants copied Acantha’s patent,
Stryker’s licensed Reflex product, or both. The record contains evidence that David Talaber, one
of the inventors of the ‘008 Patent, first informed Defendants of Acantha’s patent via letter in March
2002, over three years before the release of the Vectra product. The letter was sent to Nisra
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Thongpreda, who worked with Lan Ahn Duong and Sean Suh on the ACCS product, the
predecessor to the Vectra product. The evidence revealed that weeks after Talaber sent the letter
to Thongpreda, Duong and the development team began developing a design that was similar to the
preferred embodiment in Acantha’s patent. In addition, Stryker, the licensee of the ‘008 Patent, was
one of Defendants’ primary competitors, and Defendants’ engineers knew about the Stryker Reflex,
the licensed product, during the development of the ACCS and Vectra. In fact, Vectra was designed
to “go head to head with . . . Stryker’s Reflex Hybrid . . . to reclaim the leadership position in
[anterior plating].” Pl.’s Br. at 16, Dkt. No. 313 (quoting PX359-3). Acantha also argues that the
Zero-P VA originated from and was inspired by the copycat Vectra. Defendants contend that Duong
and their other developers independently developed the design for the screw back-out prevention
mechanism in the products at issue. While Duong gave a plausible explanation of independent
conception and development, the jury was not required to accept this testimony.
Though the evidence presented by Acantha is circumstantial, it is sufficient to support the
jury’s verdict. Construing the evidence in the light most favorable to Acantha, which the court must
do at this stage, Defendants were aware of and had access to Acantha’s patent and the Stryker
Reflex and shortly thereafter developed a very similar product. Acantha has therefore presented
sufficient evidence of copying. This evidence also supports the jury’s willfulness finding. Although
Acantha’s evidence of willfulness is not overwhelming, the court will not overturn the jury’s finding
of willfulness.
C. Induced Infringement
Defendants assert that no reasonable jury could have found induced infringement because
Acantha did not present evidence to show that Defendants induced others to directly infringe the
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‘008 Patent. To establish induced infringement, a patentee must prove by a preponderance of the
evidence that “(1) there was underlying direct infringement; and (2) the accused infringer knowingly
induced infringement and possessed specific intent to encourage another’s infringement.” Barry
v. Medtronic, Inc., 230 F. Supp. 3d 630, 640 (E.D. Tex. 2017) (citing Limelight Networks, Inc. v.
Akamai Techs., Inc., 134 S. Ct. 2111, 2117 (2014)). Defendants assert that the mere fact that they
sell the products and publish surgical guides is insufficient to prove that Defendants specifically
intended anyone to infringe the ‘008 Patent. But circumstantial evidence of inducement is
sufficient, and the “requisite intent to induce infringement may be inferred from all of the
circumstances.” Warsaw Orthopedic, Inc. v. NuVasive, Inc., 824 F.3d 1344, 1347 (Fed. Cir. 2016)
(quoting Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 699 (Fed. Cir. 2008)). Based on the
evidence presented at trial, the jury could have inferred that Defendants had knowledge of their
customers’ infringement of the ‘008 Patent. The surgical technique guides are in fact evidence of
inducement, as they instruct surgeons how to use Defendants’ infringing products. The jury also
heard evidence that Defendants sell specially-designed instruments to use with their products and
supply the instruments to the surgeon at the time of the surgery. Tr. 657:9–17, Dkt. No. 303 at 44.
The court concludes that substantial evidence supported the jury’s verdict of inducement.
D. Prior Art
Defendants also request that the court find as a matter of law that Campbell is prior art to
the ‘008 Patent because the question is relevant to the issue of ensnarement. Because the court
found that substantial evidence supported literal infringement and was not required to address
Defendants’ ensnarement arguments, this issue is moot.
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E. Amend Damages and Amend Judgment
Defendants request that the court vacate or amend the damage award to account for noninfringement. Because Defendants are entitled to judgment as a matter of law of no literal
infringement as to the Zero-P VA, the court will amend the damage award to account for noninfringement of the Zero-P VA. In this case, there is no dispute as to the amount of the royalty base
attributable to the Zero-P VA or the royalty rate to be applied. The judgment will therefore be
amended to $4,320,136.00 for infringement by the Vectra alone.
Defendants also request that the court alter or amend the judgment in favor of the dismissedclaims defendants, DePuy Synthes, Inc.; Synthes, Inc.; Synthes USA, LLC; DePuy Orthopaedics,
Inc.; DePuy Spine, LLC; and Johnson & Johnson, Inc., and against Acantha on all of Acantha’s
claims. A judgment is not required, however, in cases where the parties stipulate under Federal
Rule of Civil Procedure 41(a)(1)(A)(ii) to dismiss certain parties with prejudice. Accordingly, the
court will not amend the judgment in favor of the six dismissed-claimed defendants.
II. Acantha’s Rule 59 Motion
A. Enhanced Damages
Acantha requests an award of double damages pursuant to 35 U.S.C. § 284. Section 284
provides that “the court may increase the damages up to three times the amount found or assessed.”
35 U.S.C. § 284. The jury’s role in determining willfulness and the judge’s role in determining
enhancement of damages are distinct. Indeed, the jury’s finding of willful infringement “does not
mandate that damages be enhanced, much less mandate treble damages.” Read Corp. v. Portec,
Inc., 970 F.2d 816, 826 (Fed. Cir. 1992). While the judge “cannot substitute his or her factual
determination for a jury’s willfulness finding,” Advanced Cardiovascular Systems, Inc. v.
19
Medtronic, Inc., 265 F.3d 1294, 1310 (Fed. Cir. 2001), the district court has discretion to determine
whether the defendant’s conduct is “sufficiently egregious to warrant enhanced damages.” Presidio
Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369, 1382 (Fed. Cir. 2017) (citing Halo,
136 S. Ct. at 1933). In guiding district courts in the exercise of this discretion, the Supreme Court
recently explained in Halo Electrics, Inc. v. Pulse Electrics, Inc., 136 S. Ct. 1923 (2016), that
[a]wards of enhanced damages under the Patent Act over the past 180 years establish
that they are not to be meted out in a typical infringement case, but are instead
designed as a “punitive” or “vindictive” sanction for egregious infringement
behavior. The sort of conduct warranting enhanced damages has been variously
described in our cases as willful, malicious, bad-faith, deliberate, consciously
wrongful, flagrant, or—indeed—characteristic of a pirate. District courts enjoy
discretion in deciding whether to award enhanced damages, and in what amount.
But through nearly two centuries of discretionary awards and review by appellate
tribunals, the channel of discretion has narrowed so that such damages are generally
reserved for egregious cases of culpable behavior.
Id. at 1932. The court must also account for “the particular circumstances of each case.” Id. at
1933. Enhanced damages are to be determined based on a preponderance of the evidence standard.
Id. at 1934.
The Federal Circuit has articulated a non-exclusive list of factors that can assist a district
court in evaluating the egregiousness of a defendant’s conduct. See Read, 970 F.2d at 826. Those
factors are (1) whether Defendants deliberately copied the ideas or design of another; (2) whether
Defendants, when they knew of the other’s patent protection, investigated the scope of the patent
and formed a good faith belief that it was invalid or that it was not infringed; (3) Defendants’
behavior as a party to the litigation; (4) Defendants’ size and financial condition; (5) the closeness
of the case; (6) the duration of Defendants’ misconduct; (7) the remedial action taken by
Defendants; (8) Defendants’ motivation to harm; and (9) whether Defendants attempted to conceal
20
their misconduct. Id. at 827–28. Although the jury agreed with Acantha that Defendants willfully
infringed, the court finds that, based on the Read factors and the totality of the circumstances, an
award of enhanced damages is not appropriate in this case.
1. Defendants’ copying
The first Read factor is “whether the infringer deliberately copied the ideas or design” of the
patentee. Id. at 827. While the jury was free to find that Defendants copied the ‘008 Patent, that
evidence was not overwhelming, as substantial evidence regarding copying was presented on both
sides. With respect to copying, Acantha presented evidence that Talaber sent a letter to Nisra
Thongpreda, one of Defendants’ employees, regarding the ‘008 Patent in March 2002, three years
before the release of the Vectra product. Acantha maintains that Duong and the development team
began developing a design that was similar to the preferred embodiment in the patent just weeks
after he sent the letter to Thongpreda, who had worked with Duong on the ACCS product. Yet
Defendants argued that Defendants, Acantha, and other market competitors worked in a crowded
field of visually and functionally similar products and that Duong and their other developers
independently designed the screw back-out prevention mechanism in the Vectra. Defendants
presented evidence that the patented back out prevention arrangement found in the Vectra products
was initially developed for use in the ACCS, a device that is functionally indistinguishable from the
Vectra but is not claimed to infringe the ‘008 Patent. Defendants also presented evidence that the
inventors of the ACCS were unaware of the Acantha patent at the time they created the ACCS
design. Based on the conflicting evidence of copying presented by the parties, this factor does not
strongly favor enhancement of damages.
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2. Defendants’ investigation of the scope of the patent and formation of a goodfaith belief that it was invalid and not infringed
The second factor assesses the extent of the infringer’s efforts to determine whether the
patent was valid and whether its product infringed upon it. Again, while the jury was free to find
that Defendants lacked a good faith belief in the invalidity of the ‘008 Patent, Defendants presented
evidence that they had a good-faith belief that the products at issue did not infringe the Acantha
patent. In this case, Defendants assert that they made deliberate and considerable efforts to avoid
infringement by relying on opinion letters from outside counsel. The Federal Circuit has
“repeatedly recognized that advice of counsel is relevant to induced infringement and willfulness.”
Omega Patents, LLC v. CalAmp Corp., 92 F.3d 1337, 1352 (Fed. Cir. 2019). “[A]n accused
infringer’s reliance on an opinion of counsel regarding noninfringement or invalidity of the asserted
patent remains relevant to the infringer’s state of mind post-Halo.” Id. at 1353.
Defendants presented evidence that it was their practice to involve patent attorneys early in
the product development process. David Gerber, Defendants’ corporate representative, explained
that Defendants take the product development process seriously as a company and that the process
is exhaustive in order to prevent litigation regarding their products. Tr. 745:6–8, Dkt. No. 303 at
222. Chris Roth, a director in the research and development organization for DePuy Synthes who
managed the company’s cervical fusion group, also testified that Defendants obtain opinions from
counsel to ensure that the design is unique and does not infringe anyone’s patent. Tr. 974:15–16,
Dkt. No. 304 at 197. He noted that, if counsel identifies a potential conflict, developers steer clear
of that conflict early on before the company invests time and resources in making a prototype. Tr.
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974:1–4. Roth explained that, in general, opinions from outside counsel are submitted to in-house
counsel, who review the opinions. Tr. 976:4–9, Dkt. No. 304 at 199.
With respect to the development of the Vectra, Roth testified that Defendants obtained an
outside infringement opinion, which was completed by Jones Day on October 25, 2006. He
explained that, although he did not review the opinion himself, he received a March 21, 2006
internal memo, prepared by in-house counsel, dated March 21, 2006, summarizing the clearance
opinion for the Vectra. Tr. 977:5–23, Dkt. No. 304 at 200. The memo, entitled “Noninfringement
Opinion For Proposed Vectra Plate System,” states that, based on the October 25, 2006 infringement
opinion and discussions held with product development as to any risks, “product development can
proceed with the development and sale of the device method as it was disclosed for the formation
of this noninfringement opinion.” See DTX1242. Defendants also obtained opinions of counsel
for the development of the ACCS, which was completed on July 11, 2003, and the Zero-P VA,
which was completed on August 25, 2010. See DTX1048, DTX1019, DTX1020. Though the jury
did not credit Defendants’ argument that they had a good-faith belief that the ‘008 Patent was
invalid and not infringed, it can nevertheless be inferred that Defendants had a good-faith belief that
the patent was invalid. In short, the court finds that this factor does not strongly favor enhancement
of damages.
3. Defendants’ behavior as a party to the litigation
The third factor examines the infringer’s behavior during the litigation. Having reviewed
Acantha’s accusations of misconduct, the court is not convinced that Defendants engaged in
litigation misconduct, such as “bringing vexatious or unjustified suits, discovery abuses, failure to
obey orders of the court, or acts that unnecessarily prolong litigation.” i4i Ltd. P’ship, 598 F.3d at
23
859. Acantha asserts that when Dr. Lloyd contacted a DePuy Synthes employee in 2014 to discuss
a possible licensing agreement, that employee told Dr. Lloyd that Defendants “would invalidate
[Acantha’s] patent and that they would bankrupt [the] company.” Tr. 377:3–9, Dkt. No. 302 at 134.
While Acantha asserts that this incident is indicative of Defendants’ litigation misconduct, the
veiled threat is just as easily viewed as a statement reflective of costs associated with patent
litigation and Defendants’ confidence in their position that their products did not infringe a valid
patent.
As to Defendants’ litigation conduct, Defendants’ litigation strategy and zealous advocacy
did not amount to vexatious litigation or gamesmanship, and their conduct did not constitute the
kind of egregiousness that would justify enhancement. Accordingly, this factor does not strongly
favor enhancement. See Milwaukee Elec. Tool Corp. v. Snap–On Inc., 288 F. Supp. 3d 872, 902
(E.D. Wis. 2017) (“After reviewing the parties’ disagreements about each other’s litigation choices,
the most it can say is that the case was hard-fought and involved no more than ordinary strategic
decisions (and blunders) on both sides.”); Barry v. Medtronic, Inc., 250 F. Supp. 3d 107, 117 (E.D.
Tex. 2017) (“Enhancement analysis is not an opportunity for this court to penalize a zealous trial
team that engaged in hard-fought battles but ultimately lost the war.”).
4. Defendants’ size and financial condition
The fourth factor requires that a court consider an infringer’s size and financial condition
“relative to the plaintiff and also individually to ensure that enhanced damages would not unduly
prejudice the defendant’s non-infringing business.” Krippelz v. Ford Motor Co., 670 F. Supp. 2d
815, 822 (N.D. Ill. 2009). While this factor cannot, by itself, justify an award of enhanced damages,
it is relevant to the consideration of enhanced damages. Defendants’ parent company is Johnson
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& Johnson and Defendants have the ability to pay enhanced damages. Accordingly, this factor
weighs in favor of enhanced damages.
5. Closeness of the case
The fifth factor, the closeness of the case, “examines whether the case involved a meaningful
defense to the claims or whether it was easily decided against the infringer.” Milwaukee Elec., 288
F. Supp. 3d at 903. This factor weighs against enhancement where both “parties advanced
reasonable positions.” Apple Inc. v. Samsung Elecs. Co., Ltd., 258 F. Supp. 3d 1013, 1033 (N.D.
Cal. 2017) (citation omitted); see also WesternGeco L.L.C. v. Ion Geophysical Corp., 837 F.3d
1358, 1363 (Fed. Cir. 2016) (“After Halo, the objective reasonableness of the accused infringer’s
positions can still be relevant for the district court to consider when exercising its discretion.”). In
this case, although the jury returned a verdict in favor of Acantha, Defendants’ defenses were not
groundless or without merit. As Defendants note, the court originally granted summary judgment
of non-infringement as to the Zero-P VA and no direct infringement as to both Vectra and Zero-P
VA. And the court has now determined that the jury’s finding that the Zero-P VA infringed cannot
stand. At the very least, this history bespeaks the closeness of the case. See Sociedad Espanola,
226 F. Supp. 3d at 532 (“[I]t would be difficult to conjure up a defense which would be more
‘reasonable’ than one expressly adopted by a federal judge.” (citation omitted)). Because both
parties asserted reasonable positions on the various issues presented at trial, this factor weighs in
favor of no enhancement.
6. Duration of Defendants’ misconduct
The sixth factor takes into account the duration of Defendants’ misconduct, or “the ‘duration
of infringement’ when the defendant had knowledge of the patent.” Canon, Inc. v. Color Imaging,
25
Inc., 292 F. Supp. 3d 1357, 1366 (N.D. Ga. 2018) (quoting I–Flow Corp. v. Apex Med. Techs., Inc.,
No. 07CV1200 DMS (NLS), 2010 WL 114005, at *3 (S.D. Cal. Jan. 6, 2010)). Acantha argues that
the record shows that Defendants learned of the patent in 2002 before they designed their products.
Defendants assert that they did not receive notice of the patent until 2014 based on Acantha’s failure
to mark. Even accepting Defendants’ contention that Acantha failed to establish that Defendants
had knowledge of the ‘008 Patent before they received notice on March 19, 2014, this factor would
weigh in favor of enhancement, as Defendants continued to infringe after they had received notice
and after Acantha filed suit, if the fact that Defendants were infringing were clear. See Broadcom
Corp. v. Qualcomm Inc., No. SACV 05-467-JVS(RNBx), 2007 WL 2326838, at *3 (C.D. Cal. Aug.
10, 2007) (“The length of [defendant’s] infringement (approximately two years), coupled with the
fact that infringement continued after [plaintiff] filed suit, supports an increase in damages.”),
vacated on other grounds, 2007 WL 8030058 (C.D. Cal. Nov. 21, 2007); see also PPC Broadband,
Inc. v. Corning Optical Commc’ns RF, LLC, No. 511CV761, 2016 WL 6537977, at *8 (N.D.N.Y.
Nov. 3, 2016) (“[C]ontinuing to sell the infringing products after notice of infringement and during
the course of litigation supports enhancement.”). The length of time the infringement occurred is
entitled to less weight, however, where the infringer has an arguable defense and no action for
infringement is commenced until well after the allegedly infringing product has been on the market.
7. Remedial action taken by Defendants
The seventh factor considers whether the infringer took any remedial action to address its
infringement. The “emphasis here is whether conduct during the pendency of the suit evinces an
unrepentant defendant.” Milwaukee Elec., 288 F. Supp. 3d at 904. Although Defendants were
entitled to fight the case to its conclusion, Defendants have failed to take remedial action after the
26
jury’s finding of infringement, such as seeking a licensing agreement or attempting to design around
the patent, and have continued to sell the infringing products. See Novozymes A/S v. Genencor Int’l
Inc., 474 F. Supp. 2d 592, 611 (D. Del. 2007) (“That Defendants failed to take remedial action and
continued to infringe until after the liability trial also supports an enhanced award.”); Arctic Cat Inc.
v. Bombardier Recreational Prods., Inc., 194 F. Supp. 3d 1343, 1353 (S.D. Fla. 2016) (finding that
Defendant had not engaged in remedial action because it did not approach Plaintiff about a license
or attempt to design around the patents); Stryker Corp. v. Zimmer, Inc., No. 1:10-CV-1223, 2017
WL 4286412, at *5 (W.D. Mich. July 12, 2017) (infringer continued to manufacture and sell
products “even after the jury returned its verdict”). But again, this factor is entitled to less weight
when Defendants continue in good faith to assert their defenses in motions after verdict and no final
disposition has been reached.
8. Defendants’ motivation to harm
The eighth factor assesses whether the “infringement was done with a ‘pernicious’ intent
to harm” the patentee. Milwaukee Elec., 288 F. Supp. 3d at 904 (quoting Read, 970 F.2d at 827).
Acantha argues that Defendants were determined to sell products that would take business away
from Stryker, Acantha’s licensee. While Acantha argues that “motivation to compete is motivation
to harm,” Pl.’s Reply Br. at 18, Dkt. No. 327, a number of courts, including courts from this circuit,
have found that economic motivations to infringe do not weigh in favor of or against enhancement.
See Milwaukee Elec., 288 F. Supp. 3d at 904 (noting that “Snap–On’s conduct could be justified
by market pressures”); Georgetown Rail Equip. Co. v. Holland L.P., No. 6:13-CV-366, 2016 WL
3346084, at *20 (E.D. Tex. June 16, 2016), aff’d 867 F.3d 1229 (Fed. Cir. 2017) (finding this factor
neutral because “there is nothing to suggest that Holland acted out of spite or ill-will toward
27
Georgetown or for any reason other than a desire to capture a piece of the market”); Barry, 250 F.
Supp. 3d at 116–17 (finding this factor neutral where plaintiff presented “no evidence that
Medtronic was motivated to infringe or continue infringing for any reason other than its own
commercial business interest”); Idenix Pharm. LLC v. Gilead Sci. Inc., 271 F. Supp. 3d 694, 702
(D. Del. 2017) (“There is no evidence of a ‘motivation for harm’ that would support enhancement.
The record can only reasonably be understood as showing that Gilead’s ‘motivation’—in addition
to a healthy profit motive, which Idenix (quite rightly) shares—was to develop a cure to a
devastating, life-threatening disease.”); Spring Commc’n L.P. v. Time Warner Cable, Inc., No. 112686-JWL, 2017 WL 978107, at *14 (D. Kan. Mar. 14, 2017) (“[T]he fact that the infringer acted
pursuant to a financial motive does not distinguish this case from the garden-variety infringement
case.”). Accordingly, this factor is neutral.
9. Whether Defendants attempted to conceal their misconduct
The final factor concerns whether the infringer sought to conceal its infringement, including
pre-litigation cover-up or failure to disclose material information in discovery. Acantha concedes
that Defendants did not conceal their operation of the Vectra and the Zero-P VA from it and that
Defendants sold the product openly. Instead, Acantha asserts that Defendants failed to disclose
certain information during discovery. While Acantha contends that Defendants’ conduct hindered
its ability to prove its case, the court is not convinced that Defendants attempted to conceal
discovery. Any uncertainty in information provided by Defendants was the result of their witnesses’
faulty memories and the time that had passed between Defendants receiving and maintaining certain
documents and Acantha initiating the instant action. The court does not find that Defendants
engaged in improper concealment. See Milwaukee Elec., 288 F. Supp. 3d at 904 (noting that “this
28
factor is limited to instances of overt misconduct, which may not exist in every case”). In short, this
factor does not support enhancement.
10. Summary
Given the totality of the circumstances, the court declines to enhance the jury’s
compensatory damages award. Again, enhanced damages “are generally reserved for egregious
cases of culpable behavior.” Halo, 136 S. Ct. at 1932; see also Presidio, 875 F.3d at 1382
(“Enhanced damages are generally only appropriate in egregious cases of misconduct.”). In
determining whether enhanced damages are warranted, “the court’s assessment of the level of
culpability must be high.” Read, 970 F.2d at 828.
Even though the jury found that the
infringement was willful, after considering the record in this case as a whole, the evidence does not
establish that Defendants behaved as “wanton and malicious pirate[s]” deserving of punishment.
Seymour v. McCormick, 57 U.S. 480, 488 (1853); see also Barry, 250 F. Supp. 3d at 117 (“The
actions of both sides at times may have approached those of a privateer, but they did not sink to the
level of a ‘pirate.’”). For these reasons, the court declines to enhance damages pursuant to § 284.
B. Attorneys’ Fees and Costs
Under 35 U.S.C. § 285, the district court may award reasonable attorneys’ fees to the
prevailing party in “exceptional” cases. “[A]n ‘exceptional’ case is simply one that stands out from
others with respect to the substantive strength of a party’s litigation position (considering both the
governing law and the facts of the case) or the unreasonable manner in which the case was
litigated.” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014).
Exceptional cases are, by definition, rare. Id. “District courts may determine whether a case is
‘exceptional’ in a case-by-case exercise of their discretion, considering the totality of the
29
circumstances.” Id. In assessing the totality of the circumstances, courts consider “frivolousness,
motivation, objective unreasonableness (both in the factual and legal components of the case) and
the need in particular circumstances to advance considerations of compensation and deterrence.”
Id. at 1756 n.6 (quoting Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994)). Acantha has the
burden of showing entitlement to attorneys’ fees by a preponderance of the evidence. Id. at 1758.
After reviewing the totality of the circumstances in this case, the court declines to find that
this case is “exceptional.” In support of its request for attorneys’ fees, Acantha argues that this case
was not close and that Defendants engaged in litigation misconduct. The court does not agree that
the case was not close. While some of Defendants’ defenses were ultimately unsuccessful, they
were neither frivolous nor objectively unreasonable, and Defendants’ positions were not weak or
without merit. In addition, the court declines to find that Defendants engaged in litigation
misconduct. This was a hard fought patent litigation, and both sides presented their respective
positions in good faith. In sum, this case does not stand out “from others with respect to the
substantive strength of a party’s litigating position (considering both the governing law and the facts
of the case) or the unreasonable manner in which the case was litigated.” Id. at 1756. Accordingly,
Acantha’s motion for attorneys’ fees is denied.
Acantha also requests that the court award it costs. Pursuant to Rule 54(d) of the Federal
Rules of Civil Procedure, costs “[s]hould be allowed to the prevailing party.” In the context of
patent litigation, the Federal Circuit has found that a party “‘prevails’ when actual relief on the
merits of [its] claim materially alters the legal relationship between the parties by modifying the
defendant’s behavior in a way that directly benefits the plaintiff.” Manildra Mill. Corp. v. Ogilvie
Mills, Inc., 76 F.3d 1178, 1182 (Fed. Cir. 1996). Acantha prevailed on its claim that Defendants’
30
Vectra products infringe, but has not prevailed on its claim against the Zero-P VA. Under these
circumstances, the court concludes that each party should bear their own costs.
C. Supplemental Damages
Acantha also seeks pre-verdict and post-verdict supplemental damages. “A patentee is
entitled to damages for the entire period of infringement and should therefore be awarded
supplemental damages for any periods of infringement not covered by the jury verdict.” Mondis
Tech. Ltd. v. Chimei InnoLux Corp., 822 F. Supp. 2d 639, 642 (E.D. Tex. 2011) (citation omitted).
The court concludes that Acantha is entitled to pre-verdict supplemental damages for the period of
April 1, 2018 through August 21, 2018 at a rate of 6.5%, the same rate awarded by the jury.
As to the royalty rate for sales occurring between August 22, 2018, through the date of
judgment, “[t]he amount of supplemental damages following a jury verdict ‘is a matter committed
to the sound discretion of the district court.’” SynQor, Inc. v. Artesyn Techs., Inc., 709 F.3d 1365,
1384 (Fed. Cir. 2013) (quoting Amado v. Microsoft Corp., 517 F.3d 1353, 1362 n.2 (Fed. Cir.
2008)). Although Acantha requests that the court use a 7.875% royalty rate for post-verdict
supplemental damages, the court concludes that an increase in the royalty rate for post-verdict
damages is not warranted here. Accordingly, the same royalty rate found by the jury will apply to
the post-verdict supplemental damages award. In order to calculate supplemental damages,
Defendants shall produce financial data showing their sales from April 1, 2018, through the date
of judgment. The parties shall calculate a supplemental award within thirty days of the date of this
order.
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D. Ongoing Royalty
Acantha also seeks enhanced ongoing royalties pursuant to § 284. On July 8, 2019, the ‘008
Patent expired. As a result, Acantha’s request for an ongoing royalty through the expiration of the
patent is now moot.
E. Prejudgment and Postjudgment Interest
Acantha also requests pre-judgment and post-judgment interest. Pursuant to 35 U.S.C.
§ 284, Acantha, as the prevailing party, is entitled to “damages adequate to compensate for the
infringement . . . together with interest and costs as fixed by the court.” The Supreme Court has
recognized that prejudgment interest “should ordinarily be awarded” unless some justification is
provided to withhold such an award. See Gen. Motors Corp. v. Devex Corp., 461 U.S. 648, 654
(1983). Acantha is also entitled to an award of post-judgment interest as the prevailing party.
See 28 U.S.C. § 1961(a) (allowing post-judgment interest “on any money judgment in a civil case
recovered in a district court”). Post-judgment interest is “calculated from the date of entry of the
judgment, at a rate equal to the weekly average 1-year constant maturity Treasury yield, as published
by the Board of Governors of the Federal Reserve System, for the calendar week preceding[] the
date of the judgment.” Id.
Defendants concede that the prevailing party is entitled to interest on any affirmed judgment
but assert that this determination is premature based on their intention to appeal. But Defendants
cite no case law to support their position. Accordingly, the court will award Acantha pre-judgment
interest at the prime rate, compounded quarterly as well as post-judgment interest on the total
judgment.
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CONCLUSION
For these reasons, Defendants’ motion for judgment as a matter of law pursuant to Rule
50(b) and to amend the judgment pursuant to 59(e) (Dkt. No. 316) is GRANTED-IN-PART and
DENIED-IN-PART. Defendant is entitled to judgment as a matter of law of no infringement as
to the Zero-P VA and the amount of the judgment shall be reduced to $4,320,136.00 for
infringement by the Vectra alone. The motion is denied in all other respects. Acantha’s Rule 59
motion for enhanced damages and other post-trial legal and equitable relief (Dkt. No. 318) is
GRANTED-IN-PART and DENIED-IN-PART. Acantha is entitled to supplemental damages as
well as pre-judgment and post-judgment interest, but its request for enhanced damages, attorneys’
fees, and costs is denied and its request for an ongoing royalty calculation is denied as moot.
Acantha’s motion for leave to file a sur-reply (Dkt. No. 332) is GRANTED. Defendants shall
produce financial data showing their sales from April 1, 2018 through the date of judgment. The
parties shall calculate a supplemental award within thirty days of the date of this order. Once the
court receives the parties’ supplemental damages calculation, it will enter an amended judgment.
SO ORDERED this 5th day of August, 2019.
s/ William C. Griesbach
William C. Griesbach, Chief Judge
United States District Court
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