Honeywell Intern., Inc. v. Hamilton Sundstrand

166 F.Supp.2d 1008

HONEYWELL INTERNATIONAL INC., and Honeywell Intellectual Properties, Inc., Plaintiffs, v. HAMILTON SUNDSTRAND CORPORATION, Defendant.

No. CIV.A.99-309 GMS.

United States District Court, D. Delaware.

September 27, 2001.

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Josey W. Ingersoll, Melanie Sharp, and Christian D. Wright of Young Conaway Stargatt & Taylor LLP, Wilmington, Delaware. Of Counsel: Jonathan F. Putnam, Todd S. Schulman, Lee Ann Stevenson and Victoria Reznik of Kirkland & Ellis, New York, New York and Robert G. Krupka of Kirkland & Ellis, Los Angeles, California. Attorneys for Plaintiffs.

Richard D. Kirk of Morris, James, Hitchens & Williams LLP, Wilmington, Delaware. Of Counsel: Richard F. Ziegler, David H. Harrington and Justin S. Anand of Cleary, Gottlieb, Steen & Hamilton, New York, New York and William E. McCracken, G. Christopher Braidwood, and Thomas A. Miller of Marshall O'Toole Gerstein Murray & Borun, Chicago, Illinois. Attorneys for Defendant.

MEMORANDUM OPINION

SLEET, District Judge.

I. INTRODUCTION

On May 17, 1999, Honeywell International, Inc. ("Honeywell") brought this action against Hamilton Sundstrand Corporation (Sundstrand) alleging that Sundstrand's manufacture and sale of the APS 3200 infringes its 4,380,893 and 4,428,194 patents (the "'893 patent" and "'194 patent," respectively). The patents-in-suit relate to technology for an airplane auxiliary power unit ("APU"). An APU is a small gas turbine engine, usually placed in the tail section of an airplane, that generates electricity for use while the aircraft is on the ground or in flight. An APU also provides compressed air for both starting the aircraft's main engine and environmental control of cabin air. The '893 and '194 patents cover a method for controlling surge, which is an aerodynamic phenomenon in which the air being drawn into the APU reverses direction and can damage the engine.

A jury trial was held between February 5 and February 16, 2001. On February 16, 2001, the jury returned a verdict finding that: 1) Sundstrand infringed five claims of the '893 patent under the doctrine of equivalents, 2) Sundstrand infringed Claim 4 of the '194 patent under the doctrine of equivalents, 3) Sundstrand's patent infringement was willful, 4) the patents-in-suit were valid and 5) Honeywell was entitled to price erosion damages in the amount of $45,000,000 and reasonable royalty damages in the amount of $1,578,065.

During the course of the trial, both parties properly moved for judgment as a matter of law pursuant to Rule 50 of the Federal Rules of Civil Procedure — Sundstrand moved for judgment as a matter of law at the close of Honeywell's case-in-chief, Honeywell moved for judgment as a matter of law at the close of Sundstrand's case-in-chief. The court reserved judgment on all JMOL motions. Following the jury's verdict, both parties filed post-trial motions. Presently before the court is 1) Honeywell's renewed motion for judgment as a matter of law on the issue of literal infringement of Claim 4 of the '194 patent 2) Sundstrand's renewed motions for judgment as a matter of law, or alternatively, for a new trial under Rule 59 of the Federal Rules of Civil Procedure, on the issues of liability, validity and willfulness, and 3) Honeywell's motion for treble damages, attorney's fees, costs and expenses, and pre-judgment interests. The following is the court's decision on all pending post-trial motions.

II. STANDARD OF REVIEW

A. Judgment as a Matter of Law

Under Rule 50 of the Federal Rules of Civil Procedure, a court should grant a motion for judgment as a matter of law only where "there is no legally sufficient basis for a jury to find for [the non-moving] party." See Fed.R.Civ.P. 50. Thus, in order to prevail on a renewed motion for JMOL following a jury trial, the moving party "`must show that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusions implied [by] the jury's verdict cannot in law be supported by those findings.'" Pannu v. Iolab Corp., 155 F.3d 1344, 1348 (Fed. Cir.1998) (quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 893 (Fed.Cir.1984)). In order to determine whether a legally sufficient basis in fact exists, the trial court must consider all the evidence in a light most favorable to the non-movant, must draw reasonable inferences favorable to the non-movant, must not determine the credibility of witnesses, and must not substitute its choice for that of the jury. See Odetics, Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1269 (Fed.Cir. 1999) (citations omitted). If, after this analysis, substantial evidence, exists to support the jury's verdict, then the motion for JMOL must be denied. See id.

The essential question in deciding a motion for judgment as a matter of law is whether the evidence the jury could have believed in reaching its verdict was substantial enough to support its findings. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1573 (Fed.Cir. 1986). Thus, the question is not what the court might have believed, but what the jury could have reasonably determined. See Dawn Equip. Co. v. Kentucky Farms, Inc., 140 F.3d 1009, 1014 (Fed.Cir.1998) ("the inquiry is whether a reasonable jury, given the record before it viewed as a whole, could have arrived at the conclusion it did.").

B. Motion for a New Trial

Under Federal Rule of Civil Procedure 59(a), "a new trial may be granted to all or any of the parties and on all or part of the issues in an action in which there has been a trial by jury, for any of the reasons for which new trials have heretofore been granted in actions at law in the courts of the United States." Fed. R.Civ.P. 59(a). The decision to grant or deny a new trial is within the sound discretion of the court. Allied Chemical Corp. v. Daiflon, Inc., 449 U.S. 33, 36, 101 S.Ct. 188, 66 L.Ed.2d 193 (1980). Moreover, the standard for grant of a new trial is less rigorous than the standard for grant of judgment as a matter of law in that the court need not view the evidence in the light most favorable to the verdict winner. LifeScan Inc. v. Home Diagnostics, Inc., 103 F.Supp.2d 345, 350 (D.Del.2000) (citations omitted). Among the most common reasons for granting a new trial are the following: (1) the jury's verdict is against the clear weight of the evidence, and a new trial must be granted to prevent a miscarriage of justice; (2) newly discovered evidence exists that would likely alter the outcome of the trial; (3) improper conduct by an attorney or the court unfairly influenced the verdict; or (4) the jury's verdict was facially inconsistent. Id.

Finally, the court is particularly mindful that it must not substitute its own judgment of the facts and the credibility of witnesses for those of the jury, but rather, that it should grant a new trial on the basis that the verdict was against the weight of the evidence only where a miscarriage of justice would result if the verdict were to stand. See Williamson v. Consolidated Rail Corp., 926 F.2d 1344, 1352 (3d Cir.1991); EEOC v. State of Delaware Dept. of Health and Social Services, 865 F.2d 1408, 1413 (3d Cir.1989).

III. DISCUSSION

A. Honeywell's Motion for Judgment as a Matter of Law

1. Whether Honeywell is Entitled to Judgment on Literal Infringement of Claim 4 as a Matter of Law?

Honeywell moves for a judgment as a matter of law reversing the jury's findings that the APS 3200 did not literally infringe Claim 4 of the '194 patent. Honeywell argues that it entitled to judgment as a matter of law because it met its burden of proving a prima facie case of infringement by establishing at trial that Sundstrand's APS 3200 surge control system literally infringed Claim 4 of the '194 patent. Honeywell further contends that in response to its prima facie case of infringement, Sundstrand failed to present evidence, which would support Sundstrand's contentions of non-infringement.

Literal infringement of a claim occurs when every limitation recited in a claim appears in the accused device, i.e., when "the properly construed claim reads on the accused device exactly." KCJ Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1358 (Fed.Cir.2000). At trial, Honeywell had the burden of proving literal infringement by a preponderance of the evidence that the APS 3200 includes each and every element found in Claim 4 of the '194 patent. See Southwall Technologies, Inc. v. Cardinal IG Co., 54 F.3d 1570, 1575 (Fed. Cir.1995). The court must emphasize that on a JMOL motion, this burden is especially high. See LNP Eng'g Plastics, Inc. v. Miller Waste Mills, Inc., 77 F.Supp.2d 514, 547 (D.Del.1999). The court may grant JMOL in favor of the party bearing the burden of proof only where 1) the movant has established its case by evidence that the jury would not be at liberty to disbelieve and 2) the only reasonable conclusion is in the movant's favor. See id.

Because the parties dispute whether there is substantial evidence to support the jury's verdict that the APS 3200 does not literally infringe Claim 4 of the '194 patent, the court will first set forth the claims of the '194 patent and then describe the evidence presented at trial.

a. Claim 4 of the '194 patent

Claim 4 of the '194 patent states:

A method of utilizing a compressor of a gas turbine engine to power pneumatically-operated apparatus having a variable inlet air flow demand, the compressor having adjustable inlet guide vanes, said method comprising the steps of:

(a) interconnecting a supply duct between the compressor and the pneumatically-operated apparatus;

(b) flowing discharge air from the compressor through said supply duct to the pneumatically-operated apparatus;

(c) maintaining an essentially constant minimum supply duct flow rate, despite fluctuations in the flow rate of air received by the...