PureWick Corp. v. Sage Prods.

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PUREWICK CORPORATION, Plaintiff, v. SAGE PRODUCTS, LLC, Defendant.

C. A. No. 19-1508-(MN)

United States District Court, D. Delaware

March 31, 2023

John W. Shaw, Andrew E. Russell, SHAW KELLER LLP, Wilmington, DE Steven C. Cherny, Raymond Nimrod, Brian P. Biddinger, Matthew A. Traupman, Nicola R. Felice, Jason C. Williams, Bianca Fox QUINN EMANUEL URQUHART & SULLIVAN, LLP, New York, NY Athena Dalton, QUINN EMANUEL URQUHART & SULLIVAN, LLP Chicago, IL - Attorneys for Purewick Corporation

Anne Shea Gaza, Samantha G. Wilson, YOUNG CONAWAY STARGATT & TAYLOR, LLP, Wilmington, DE; Robert A. Surrette, Sandra A. Frantzen, Christopher M. Scharff, Deborah A. Laughton, Ryan J. Pianetto, Bradley P. Loren, MCANDREWS, HELD & MALLOY, LTD., Chicago, IL - Attorneys for Sage Productions, LLC

MEMORANDUM OPINION

NOREIKA, U.S. DISTRICT JUDGE

The Court presided over a five-day jury trial from March 28, 2022 to April 1, 2022. (See D.I. 326, 327, 328, 329, 330). At the end, the jury found that Sage Products, LLC (“Defendant” or “Sage”) willfully infringed claims of three patents of PureWick Corporation (“Plaintiff” or “PureWick”): U.S. Patent Nos. 10,226,376 (“the '376 patent”), 10,390,989 (“the '989 patent”) and 10,376,407 (“the '407 patent”) (collectively, “the Asserted Patents”) and, further, that Defendant failed to prove any of the asserted claims invalid. (See D.I. 316). The Court entered judgment in Plaintiff's favor. (D.I. 320).

Presently before the Court are post-trial motions addressing numerous issues. From Defendant are renewed motions for judgment as a matter of law (“JMOL”) and a new trial on infringement and validity of the Asserted Patents, renewed JMOL and a new trial on willfulness for the '376 and '989 patents, renewed JMOL and a new trial, or a remittitur, on damages and a “conditional” motion to amend the judgment on any claims for which PureWick did not provide evidence at trial. (D.I. 331). From Plaintiff are motions seeking enhanced damages, a permanent injunction, ongoing royalties on PrimoFit, supplemental damages, pre- and post-judgment interest and judgment on Defendant's counterclaims of unenforceability and invalidity. (D.I. 333). The motions have been fully briefed. (D.I. 332, 334, 335, 337-339, 344-53). For the reasons set forth below, the Court will DENY Defendant's motions for JMOL, new trial and remittitur, DENY Plaintiff's motion for enhanced damages, DENY Plaintiff's motion for injunction with leave to renew if necessary, GRANT-IN-PART Plaintiff's motion for ongoing royalty and GRANT Plaintiff's motions for supplemental damages, pre- and post-judgment interest and judgment on Defendant's counterclaims.

I. BACKGROUND

Plaintiff and Defendant sell external vacuum-assisted urine collection devices. (See D.I. 44 ¶¶ 8-26, D.I. 286 at 3). Plaintiff sells the PureWick^TM FEC Solution (“the PureWick”), a female external catheter, and Defendant sells PrimaFit^TM and PrimoFit^TM products, external catheters for females and males, respectively. (See D.I. 44 ¶¶ 8-26; D.I. 286 at 3).

On August 12, 2019, Plaintiff filed suit alleging that Defendant's PrimaFit infringes U.S. Patent No. 8,287,508 (“the '508 patent”)^[1] and the '376 patent. (See D.I. 1). On October 2, 2019, Plaintiff filed an amended complaint, adding a claim for infringement of the '989 patent. (See D.I. 9). On May 18, 2020, Plaintiff filed a second amended complaint, adding a claim for infringement of the '407 patent by PrimoFit. (See D.I. 44). Defendant denied infringement and asserted numerous defenses and counterclaims. (See D.I. 53).

From March 28, 2022 to April 1, 2022, the Court presided over a jury trial. (See D.I. 326, 327, 328, 329, 330). The jury found that Plaintiff had proved that Defendant willfully infringed claims 1, 5 and 9 of the '376 patent and claims 1 and 6 of the '989 patent with PrimaFit and that Defendant infringed claims 1 and 2 of the '407 patent with PrimoFit. (See D.I. 316 at 2-3). In addition, the jury found that Defendant failed to prove that any of the asserted claims is invalid. (See id. at 4). The jury awarded Plaintiff $26,215,545 in lost profits for sales of PrimaFit and $1,799,193 as a royalty for sales of PrimoFit. (See id. at 5).

On April 7, 2022, the Court entered judgment on the jury verdict under Rule 58(b) of the Federal Rules of Civil Procedure. (D.I. 320). On May 5, 2022, the parties filed the pending motions.

II. LEGAL STANDARDS

A. Judgment as a Matter of Law

JMOL may be entered against a non-moving party if the Court “finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on [an] issue.” FED. R. CIV. P. 50(a)(1). JMOL is appropriate “only if, viewing the evidence in the light most favorable to the nonmovant and giving it the advantage of every fair and reasonable inference, there is insufficient evidence from which a jury reasonably could find liability.” Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993).^[2] Entry of JMOL is a remedy to be invoked only “sparingly.” CGB Occupational Therapy, Inc. v. RHA Health Servs. Inc., 357 F.3d 375, 383 (3d Cir. 2004).

Following a jury trial, a renewed motion for JMOL under Rule 50(b) may be granted only if the movant demonstrates “that the jury's findings, presumed or express, are not supported by substantial evidence or, if they were, that the legal conclusion(s) 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) (alteration in original) (internal quotation marks omitted). Substantial evidence is such relevant evidence that a reasonable mind might accept it as adequate to support the finding under review. See Enplas Display Device Corp. v. Seoul Semiconductor Co., 909 F.3d 398, 407 (Fed. Cir. 2018). In determining whether substantial evidence supports the jury verdict, the Court may not make credibility determinations, weigh the evidence or substitute its own conclusions for that of the jury where the record evidence supports multiple inferences. See Lightning Lube, 4 F.3d at 1166.^[3]

The standards that govern a Rule 50(b) motion, however, “vary according to whether the movant has the burden of proof.” Fireman's Fund Ins. Co. v. Videfreeze Corp., 540 F.2d 1171, 1177 (3d Cir. 1976). For the party having the burden of proof, entry of JMOL after a jury verdict “is rare[] [and] reserved for extreme circumstances.” Id. To grant JMOL in favor of a party with the burden of proof, the court “must be able to say not only that there is sufficient evidence to support the finding [sought by the moving party] . . . but additionally that there is insufficient evidence for permitting any different finding.” Id. (quoting 9 WIGMORE ON EVIDENCE § 2495 at 306 (3d ed. 1940)); see also Amgen Inc. v. Hospira, Inc., 944 F.3d 1327, 1333 (Fed. Cir. 2019) (“[W]here the movant b[ears] the burden of proof on an issue, JMOL is only granted where ‘there is insufficient evidence for permitting any different finding.'” (quoting Fireman's Fund, 540 F .2d at 1177)); Deere & Co. v. Agco Corp. et al, C. A. No. 18-827-CFC (D. Del. March 28, 2023).

B. Motion for a New Trial

“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). Common reasons for granting a new trial are: (1) the jury's verdict is against the clear weight of the evidence and a new trial is necessary to prevent a miscarriage of justice; (2) there exists newly discovered evidence 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. See Ateliers de la Haute-Garonne v. Broetje Automation-USA Inc., 85 F.Supp.3d 768, 775 (D. Del. 2015).

The decision of whether to grant a new trial is a question committed to the Court's discretion. See Allied Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36 (1980). Unlike the standard for JMOL, the Court need not view the evidence in the light most favorable to the verdict winner when ruling on a motion for a new trial. See Ateliers, 85 F.Supp.3d at 775. “[N]ew trials because the verdict is against the weight of the evidence are proper only when the record shows that the jury's verdict resulted in a miscarriage of justice or where the verdict, on the record, cries out to be overturned or shocks [the] conscience.” Williamson v. Consol. Rail Corp., 926 F.2d 1344, 1353 (3d Cir. 1991).

III. DISCUSSION

A. Defendant's Motions

Defendant moves for JMOL and a new trial on infringement and validity of the '376, '989 and '407 patents and on willfulness for the '376 and '989 patents. It also moves for JMOL and a new trial, or a remittitur, on damages and, “to the extent that PureWick asks the Court to amend or alter the judgment to reference defenses that were narrowed before trial, Sage moves for an amended judgment of non-infringement on any claims for which PureWick did not provide evidence at trial.” (D.I. 331). The Court addresses the issues below.

1. Patent Infringement

“To prove infringement, the patentee must show that an accused product embodies all limitations of the claim either literally or by the doctrine of equivalents.” Cephalon, Inc. v. Watson Pharms., Inc., 707 F.3d 1330, 1340 (Fed. Cir. 2013). “A two-step analysis is employed in making an infringement determination.” Intell. Ventures I, LLC v. Canon Inc., 104 F.Supp.3d 629, 637-38 (D. Del. 2015) (citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995)). “First, the court must construe...