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Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., Ltd.

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

April 27, 2017

IMPERIUM IP HOLDINGS CAYMAN, LTD.
v.
SAMSUNG ELECTRONICS CO., LTD., SAMSUNG ELECTRONICS AMERICA, INC., SAMSUNG TELECOMMUNICATIONS AMERICA, LLC, and SAMSUNG SEMICONDUCTOR, INC. No. 4

          MEMORANDUM OPINION AND ORDER

          AMOS L. MAZZANT UNITED STATES DISTRICT JUDGE

         Pending before the Court is Plaintiff's Renewed Motion for Judgment as a Matter of Law on the Validity of U.S. Patent No. 6, 836, 290 (Dkt. #336). After reviewing the relevant pleadings, the Court denies Plaintiff's motion.

         BACKGROUND

         On June 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; Dkt. #330).

         On September 21, 2016, Plaintiff filed its motion for judgment as a matter of law (Dkt. #336). On October 11, 2016, Defendants filed a response (Dkt. #339). On October 21, 2016, Plaintiff filed a reply (Dkt. #342). On October 31, 2016, Defendants filed a sur-reply (Dkt. #345).

         LEGAL STANDARD

         Upon a party's renewed motion for judgment as a matter of law following a jury verdict, the Court should properly ask whether “the state of proof is such that reasonable and impartial minds could reach the conclusion the jury expressed in its verdict.” Fed.R.Civ.P. 50(b); see also Am. Home Assurance Co. v. United Space All., 378 F.3d 482, 487 (5th Cir. 2004). “The grant or denial of a motion for judgment as a matter of law is a procedural issue not unique to patent law, reviewed under the law of the regional circuit in which the appeal from the district court would usually lie.” Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1332 (Fed. Cir. 2008). “A JMOL may only be granted when, ‘viewing the evidence in the light most favorable to the verdict, the evidence points so strongly and overwhelmingly in favor of one party that the court believes that reasonable jurors could not arrive at any contrary conclusion.” Versata Software, Inc. v. SAP Am., Inc., 717 F.3d 1255, 1261 (Fed. Cir. 2013) (quoting Dresser-Rand Co. v. Virtual Automation, Inc., 361 F.3d 831, 838 (5th Cir. 2004)).

         Under Fifth Circuit law, a court should be “especially deferential” to a jury's verdict and must not reverse the jury's findings unless they are not supported by substantial evidence. Baisden v. I'm Ready Prods., Inc., 693 F.3d 491, 499 (5th Cir. 2012). “Substantial evidence is defined as evidence of such quality and weight that reasonable and fair-minded men in the exercise of impartial judgment might reach different conclusions.” Threlkeld v. Total Petroleum, Inc., 211 F.3d 887, 891 (5th Cir. 2000). A motion for judgment as a matter of law must be denied “unless the facts and inferences point so strongly and overwhelming in the movant's favor that reasonable jurors could not reach a contrary conclusion.” Baisden, 693 F.3d at 498 (citation omitted). However, “[t]here must be more than a mere scintilla of evidence in the record to prevent judgment as a matter of law in favor of the movant.” Arismendez v. Nightingale Home Health Care, Inc., 493 F.3d 602, 606 (5th Cir. 2007).

         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 and cannot substitute other inferences that [the court] might regard as more reasonable.” E.E.O.C. v. Boh Bros. Constr. Co., 731 F.3d 444, 451 (5th Cir. 2013) (citation omitted). However, “[c]redibility determinations, the weighing of evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of a judge.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000). “[T]he court should give credence to the evidence favoring the nonmovant as well as that ‘evidence supporting the moving party that is uncontradicted and unimpeached, at least to the extent that the evidence comes from disinterested witnesses.”' Id. at 151 (citation omitted).

         ANALYSIS

         Plaintiff moves for judgment as a matter of law based on the jury's determination that Claim 10 of the '290 Patent was invalid as obvious in combination with other prior art. Plaintiff's motion challenges the legal sufficiency of the evidence supporting the jury's verdict. Plaintiff argues that Defendants offered no evidence to support any of their reasons to combine U.S. Patent No. 6, 452, 632 (“Umeda”) with U.S. Patent No. 5, 929, 655 (“Roe”) or Japanese Patent Publication No. 1997-6592 (“Toshiba”) to reach the particular combination of elements mentioned in Claim 10. Specifically, Plaintiff makes the following arguments: (1) Defendants produced no evidence that combining Roe or Toshiba with Umeda would have reduced pin count or cost; (2) Defendants offered no evidence that combining Roe or Toshiba with Umeda would increase performance or versatility; and (3) Defendants offered no evidence that Roe or Toshiba would have increased the performance and versatility of Umeda by enabling support for well-known standards. Thus, Plaintiff asserts that judgment as a matter of law is justified and Claim 10 is valid and not obvious. In response, Defendants contend that they presented clear and convincing evidence that Claim 10 was obvious in view of Umeda in combination with Roe or Toshiba.

         There is a presumption that a patent is valid. Ruiz v. A.B. Chance Co., 234 F.3d 654, 662 (Fed. Cir. 2000). Defendants bear the burden of proving invalidity by clear and convincing evidence, and the burden never shifts to Plaintiff, the patentee, to prove validity. A patent is invalid for obviousness “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.” 35 U.S.C § 103. Obviousness is a legal determination based upon underlying factual findings. Soverain Software LLC v. Newegg Inc., 705 F.3d 1333, 1336 (Fed. Cir. 2013). The factual findings are based upon several factors, including “(1) the scope and content of the prior art, (2) the difference between the prior art and the claimed invention, (3) the level of ordinary skill in the field of the invention, and (4) any relevant objective considerations.” Id. (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). Although the Court must determine the ultimate legal question of obviousness, the Court must presume the jury resolved all underlying factual findings in favor of the verdict and accept the jury's findings if supported by substantial evidence. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1356- 57 (Fed. Cir. 2012).

         Here, substantial evidence supports the jury's finding of obviousness. Claim 10 of the '290 Patent recites:

10. A CMOS imaging apparatus, comprising: a CMOS image sensor, the sensor having a data interface ...

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