United States District Court, E.D. Texas, Sherman Division
IMPERIUM IP HOLDINGS CAYMAN, LTD.
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, and SAMSUNG SEMICONDUCTOR, INC. No. 4
MEMORANDUM OPINION AND ORDER
L. MAZZANT UNITED STATES DISTRICT JUDGE
before the Court is Defendants' Rule 60(b) Motion for
Reconsideration of Enhanced Damages (Dkt. #348). After
reviewing the relevant pleadings, the Court denies
9, 2014, Plaintiff filed the instant action against
Defendants, alleging infringement of United States Patent
Nos. 6, 271, 884 (the “'884 Patent), 7, 092, 029
(the “'029 Patent”), and 6, 836, 290 (the
“'290 Patent”). On February 8, 2016, the jury
returned a verdict in favor of Plaintiff. Particularly, the
jury found the following: (1) Defendants infringed Claims 1,
5, 14, and 17 of the '884 Patent; (2) Defendants
infringed Claims 1, 6, and 7 of the '029 Patent; (3)
Defendants willfully infringed the patents-in-suit; and (4)
Claim 10 of the '290 Patent was invalid for obviousness
(Dkt. #253). The jury awarded $4, 840, 772 in damages for
infringement of the '884 Patent and $2, 129, 608.50 in
damages for infringement of the '029 Patent (Dkt. #253).
On August 24, 2016, the Court awarded enhanced damages for
willful infringement and entered final judgment (Dkt. #329;
December 13, 2016, Defendants filed their motion for
reconsideration regarding the Court's August 24, 2016
Memorandum Opinion and Order (Dkt. #348). On January 6, 2017,
Plaintiff filed a response (Dkt. #351). On January 17, 2017,
Defendants filed a reply (Dkt. #352). On January 24, 2017,
Plaintiff filed a sur-reply (Dkt. #353).
Federal Rules of Civil Procedure do not specifically provide
for motions for reconsideration. Shepherd v. Int'l
Paper Co., 372 F.3d 326, 328 n.1 (5th Cir. 2004).
Depending on when a party files such a motion, the Court may
construe it under Rule 59(e) as a motion to alter or amend a
judgment or under Rule 60(b) as a motion for relief from a
final judgment. Id.; Williams v. Thaler,
602 F.3d 291, 303 (5th Cir. 2010) (“When a litigant
files a motion seeking a change in judgment, courts typically
determine the appropriate motion based on whether the
litigant filed the motion within Rule 59(e)'s time
limit.”). If a party files a motion within than
twenty-eight days from the judgment or order of which the
party complains, it is considered a Rule 59(e) motion;
otherwise, it is treated as a Rule 60(b) motion. See
Hamilton Rothschilds v. Williams Rothschilds, 147 F.3d
367, 371 n.19 (5th Cir. 1998). Here, Defendants' filed
their motion for reconsideration more than twenty-eight day
after the Court entered final judgment. Thus, the Court will
consider the motion under Rule 60(b).
60(b) of the Federal Rules of Civil Procedure sets out five
specific bases for granting relief from a court's final
judgment or order: (1) mistake, inadvertence, surprise, or
excusable neglect; (2) newly discovered evidence; (3) fraud,
misrepresentation or misconduct of an adverse party; (4) the
judgment is void; and (5) satisfaction, discharge, or release
of the judgment. Fed.R.Civ.P. 60(b)(1)-(5). In addition, Rule
60(b)(6) provides that a court may relieve a party from final
judgment for “any other reason justifying relief from
the operation of the judgment.” Fed.R.Civ.P. 60(b)(6).
Relief under Rule 60(b)(6) is only granted when it is not
covered by the five enumerated grounds and when
“extraordinary circumstances are present.”
Batts v. Tow-Motor Forklift Co., 66 F.3d 743, 747
(5th Cir. 1995) (citation omitted). “The district court
enjoys considerable discretion when determining whether the
movant has satisfied any of these Rule 60(b)
standards.” Teal v. Eagle Fleet, Inc., 933
F.2d 341, 347 (5th Cir. 1991).
Federal Circuit has explained that “[w]hen reviewing
non-patent issues, ” including some rulings under Rule
60(b), its “general practice is to apply the law of the
regional circuit.” Fiskars, Inc. v. Hunt Mfg.
Co., 279 F.3d 1378, 1381 (Fed. Cir. 2002). Federal
Circuit law applies, however, “when a district
court's ruling under Rule 60(b) turns on substantive
issues unique to patent law.” Lazare Kaplan
Int'l, Inc. v. Photoscribe Techs., Inc., 714 F.3d
1289, 1293 (Fed. Cir. 2013). This provides for
“consistent and uniform application by district courts
when handling patent cases.” Id. at 1293.
Defendants' argument for Rule 60(b) relief hinges on the
interpretation of Supreme Court and Federal Circuit law to
determine the appropriateness of enhanced damages to punish
an infringer for egregious, deliberate, or flagrant patent
infringement. The Court will therefore apply Federal Circuit
law to the issue of enhanced damages in this patent
seek relief under Rule 60(b)(2) and Rule 60(b)(6) from the
order awarding enhanced damages to Plaintiff and the
Court's subsequent entry of judgment. Defendants contend
the Court did not consider the objective reasonableness of
their invalidity position when awarding enhanced
damages. To support this argument, Defendants point
to a December 1, 2016 Patent Trial and Appeal Board
(“Board”) decision that found all of the asserted
claims of the '029 Patent invalid. Defendants argue the
Board's decision and its reasoning with respect to the
asserted claims should be a factor to mitigate enhanced
damages for the '029 Patent.
succeed on their motion under Rule 60(b)(2), Defendants must
set forth newly discovered evidence and demonstrate
“(1) that it exercised due diligence in obtaining the
information, and (2) the evidence is material and controlling
and clearly would have produced a different result if
presented before the original judgment.” Thermacor
Process, L.P. v. BASF Corp., 567 F.3d 736, 744 (5th Cir.
2009) (quoting Hesling v. CSX Transp., Inc., 396
F.3d 632, 639 (5th Cir. 2005)). Evidence that is
‘“merely cumulative or impeaching and would not
have changed the result'” does not suffice.
have not shown that the Board's decision constitutes
newly discovered evidence and not just new evidence. This
distinction is significant. “‘Newly discovered
evidence must have been in existence at the time of the trial
and not discovered until after trial.'” Gen.
Universal Sys., Inc. v. Lee, 379 F.3d 131, 158 (5th Cir.
2004) (quoting Longden v. Sunderman, 979 F.2d 1095,
1102-03 (5th Cir. 1992)). New evidence makes up everything
else. On August 24, 2016, the Court issued its enhanced
damages opinion and entered judgment against Defendants, and
the Board issued its decision on December 1, 2016. Since the
Board's decision was not in existence at the time of the
judgment, it is new evidence and cannot form a basis for
relief under Rule 60(b)(2).
the Board's decision constituted newly discovered
evidence, Defendants have not demonstrated such evidence was
“material and controlling and clearly would have
produced a different result if presented before the original
judgment.” Thermacor Process, L.P., 567 F.3d
at 744. When damages for patent infringement are found,
“the court may increase the damages up to three times
the amount found or assessed.” 35 U.S.C. § 284.
The Supreme Court in Halo Electronics, Inc. v. Pulse
Electronics, Inc. rejected the prevailing test for
enhanced damages and explained that under § 284,
“[d]istrict courts enjoy discretion in deciding whether
to award enhanced damages, and in what amount.” 136
S.Ct. 1923, 1932 (2016). The paramount determination bearing
on a court's discretion is the egregiousness of the
defendant's conduct. Id. The Halo Court
described such conduct as “willful, wanton, malicious,
bad-faith, deliberate, consciously wrongful, flagrant, or . .
. characteristic of a pirate.” Id.
“[N]one of this is to say that enhanced damages ...