Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc.

344 F.Supp.3d 890

CORE WIRELESS LICENSING S.A.R.L., Plaintiff,

v.LG ELECTRONICS, INC., LG Electronics MobileComm U.S.A., Inc., Defendants.

CIVIL ACTION NO. 2:14-CV-00911-JRG LEAD CASE

CIVIL ACTION NO. 2:14-CV-00912-JRG Consolidated member case

United States District Court, E.D. Texas, Marshall Division.

Signed September 25, 2018

Adam S. Hoffman, Benjamin T. Wang, Brian D. Ledahl, C. Jay Chung, Jacob Buczko, James N. Pickens, Marc A. Fenster, Neil Alan Rubin, Reza Mirzaie, Russ August & Kabat, Los Angeles, CA, Douglas Gary Lichtman, Beverly Hills, CA, Elizabeth L. DeRieux, Sidney Calvin Capshaw, III, Capshaw DeRieux LLP, Gladewater, TX, Kayvan B Noroozi, Noroozi PC, Santa Monica, CA, for Plaintiff.

David L Anderson, Pro Hac Vice, Peter H. Kang, Sue Wang, Sidley Austin LLP, Adam Botzenhart, David A. Perlson, Felipe Corredor, Joshua L. Sohn, Melissa J. Baily, Quinn Emanuel Urquhart & Sullivan LLP, Nicholas A. Brown, Stephen M. Ullmer, Greenberg Traurig, San Francisco, CA, Richard A. Cederoth, Nathaniel C. Love, Sidley Austin LLP, Barry R. Horwitz, Cameron Matthew Nelson, Herbert H. Finn, Greenberg Traurig LLP, Chicago, IL, Theodore Whitley Chandler, Sidley Austin, Los Angeles, CA, Allen Franklin Gardner, Allen Gardner Law, PLLC, Tyler, TX, Gregory Blake Thompson, James Mark Mann, Mann Tindel & Thompson, Henderson, TX, Jamie B. Beaber, Kfir B. Levy, Mayer Brown, LLP, Ryan C. Morris, Scott M Border, Sidley Austin, Washington, DC, Joshua R. Brown, Greenberg Traurig PA Orlando, Orlando, FL, Kevin Sean Kudlac, Connor Kudlac Lee PLLC, Austin, TX, Melissa Richards Smith, Gillam & Smith, LLP, Marshall, TX, Rene Trevino, Greenberg Traurig LLP, Houston, TX, for Defendants.

MEMORANDUM OPINION AND ORDER

RODNEY GILSTRAP, UNITED STATES DISTRICT JUDGE

Before the Court is Defendants LG Electronics, Inc. and LG Electronics MobileComm U.S.A., Inc.'s (collectively, "LG" or "Defendants") Renewed Motion for Judgment as a Matter of Law, and for a New Trial, in the -912 Case (Invalidity) (No. 2:14-cv-911, Dkt. No. 616) ("the Motion"). Having considered the Motion, and for the reasons set forth below, the Court finds that the Motion should be and hereby is DENIED .

I. BACKGROUND

On September 26, 2014, Core Wireless Licensing S.a.r.l. ("Plaintiff" or "Core") filed suit against LG, alleging infringement of, among others, United States Patent Nos. 6,633,536 ("the '536 Patent") and 7,804,850 ("the '850 Patent") (collectively, the "Asserted Patents"). Trial took place from September 12–16, 2016.

On November 2, 2016, the Court entered final judgment holding: (1) that LG infringed Claim 19 of the '536 Patent and Claim 21 of the '850 Patent ; (2) that Claim 19 of the '536 Patent and Claim 21 of the '850 Patent were not invalid; (3) that Core be awarded $2,280,000 in damages; (4) that LG's infringement was willful; and (5) that Core be awarded $456,000 as enhanced damages pursuant to LG's willful infringement. (No. 2:14-cv-912, Dkt. No. 47 at 3.)

II. LEGAL STANDARD

A. Renewed Motion for Judgment as a Matter of Law

"A motion for judgment as a matter of law [under Rule 50(b) ] is a challenge to the legal sufficiency of the evidence supporting the jury's verdict." Erfindergemeinschaft UroPep GbR v. Eli Lilly & Co. , 276 F.Supp.3d 629, 643 (E.D. Tex. 2017) (" UroPep ") (Bryson, J., sitting by designation). Entry of judgment as a matter of law is therefore only appropriate when "there is no legally sufficient evidentiary basis for a reasonable jury to find as the jury did." Guile v. United States , 422 F.3d 221, 225 (5th Cir. 2005) ; see also Baisden v. I'm Ready Prods., Inc. , 693 F.3d 491, 498 (5th Cir. 2012) ("A district court must deny a motion for judgment as a matter of law unless the facts and inferences point so strongly and overwhelmingly in the movant's favor that reasonable jurors could not reach a contrary conclusion.") (emphasis added) (internal quotation marks omitted).¹

"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.’ " Metaswitch Networks Ltd. v. Genband US LLC , No. 2:14-CV-00744-JRG, 2017 WL 3704760, at *2 (E.D. Tex. Aug. 28, 2017) (quoting E.E.O.C. v. Boh Bros. Const. Co., L.L.C. , 731 F.3d 444, 451 (5th Cir. 2013) ). Courts must also avoid the temptation of revisiting credibility determinations or reweighing evidence. Id. Such determinations are, appropriately, left to the jury. Montano v. Orange Cty., Texas , 842 F.3d 865, 874 (5th Cir. 2016) ("[I]t is for the jury alone to judge the credibility of witnesses and weigh the evidence.").

B. Motion for New Trial

Rule 59 provides that a new trial may be granted on all or part of the issues on which there has been a trial by jury for "any reason for which a new trial has heretofore been granted in an action at law in federal court." Fed. R. Civ. P. 59(a). Notwithstanding the broad sweep of Rule 59, "courts do not grant new trials unless it is reasonably clear that prejudicial error has crept into the record or that substantial justice has not been done, and the burden of showing harmful error rests on the party seeking the new trial." Metaswitch , No. 2:14-cv-00744-JRG, 2017 WL 3704760, at *2 ; UroPep , 276 F.Supp.3d at 643. "A new trial may be granted, for example, if the district court finds the verdict is against the weight of the evidence, the damages awarded are excessive, the trial was unfair, or prejudicial error was committed in its course." Smith v. Transworld Drilling Co. , 773 F.2d 610, 612–13 (5th Cir. 1985) ; see also Laxton v. Gap Inc. , 333 F.3d 572, 586 (5th Cir. 2003) ("A new trial is warranted if the evidence is against the great, and not merely the greater, weight of the evidence.").²

C. Enablement and Written Description

"The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same." 35 U.S.C. § 112(a). The Federal Circuit has consistently held that this statute sets forth two separate and distinct requirements, known as "enablement" and "written description." Ariad Pharms., Inc. v. Eli Lilly & Co. , 598 F.3d 1336, 1351 (Fed. Cir. 2010). Although distinct, the doctrines of written description and enablement are related and "often rise and fall together." Id. at 1352. Both issues are routinely tried to a jury. See, e.g., Enzo Biochem, Inc. v. Applera Corp. , 780 F.3d 1149, 1153 (Fed. Cir. 2015) ("The case then proceeded to a jury trial, where the jury found that the ... patent was not invalid for lack of written description and enablement.")

To prove that a claim is invalid for lack of enablement, a challenger must show by clear and convincing evidence that a person of ordinary skill in the art would not be able to practice the claimed invention without "undue experimentation." Allergan, Inc. v. Sandoz Inc. , 796 F.3d 1293, 1309 (Fed. Cir. 2015) (citing In re Wands , 858 F.2d 731, 736–37 (Fed. Cir. 1988) ). "A claim is sufficiently enabled even if ‘a considerable amount of experimentation’ is necessary, so long as the experimentation ‘is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed.’ " Vasudevan Software, Inc. v. MicroStrategy, Inc. , 782 F.3d 671, 684 (Fed. Cir. 2015) (quoting In re Wands , 858 F.2d at 737 ).

Although "an inoperable invention is not enabled ... the party asserting inoperability must show that all disclosed alternatives are inoperative." CFMT, Inc. v. YieldUp Int'l Corp. , 349 F.3d 1333, 1339 (Fed. Cir. 2003) (emphasis added); see also Emi Grp. North Am. v. Cypress Semiconductor Corp. , 268 F.3d 1342, 1348–49 (Fed. Cir. 2001) ("A claimed invention having an inoperable or impossible claim limitation may lack utility under 35 U.S.C. § 101 and certainly lacks an enabling disclosure under 35 U.S.C. § 112.... [but even] if some of the claimed combinations were inoperative, the claims are not necessarily invalid ... the party alleging inoperability must show that each disclosed embodiment in the patents was impossible or not enabled."); Newman v. Quigg , 877 F.2d 1575, 1582 (Fed. Cir. 1989) (claims to a perpetual motion machine were invalid because the specification did not enable any embodiment). Whether a claim satisfies the enablement requirement of 35 U.S.C. § 112 is a question of law reviewed without deference, although the determination may be based on underlying factual findings, which are reviewed for clear error. Alcon Research Ltd. v. Barr Labs., Inc. , 745 F.3d 1180, 1188 (Fed. Cir. 2014). The party asserting non-enablement bears the burden of proof by clear and convincing evidence. See id. at 1189–90.

"The test for the sufficiency of the written description ‘is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.’ " Vasudevan Software , 782 F.3d at 682 (quoting Ariad , 598 F.3d at 1351 ). "[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed." Ariad , 598 F.3d at 1351. Whether a patent complies with the written description requirement is a question of fact. Id."A party must prove invalidity for lack of written description by clear and convincing evidence." Vasudevan Software , 782 F.3d at 682.

D. Anticipation and Obviousness

"Anticipation" in patent terms means that the claimed invention is not new; that is, the invention as claimed was already known. Anticipation is a question of fact, and a finding of...