United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
GILSTRAP, UNITED STATES DISTRICT JUDGE.
the Court is Defendant TST Water, LLC's
(“TST”) Motion for Judgment as a Matter of Law
(Dkt. No. 171) (“the Motion”). In the Motion, TST
moves for judgment as a matter of law of no infringement of
the '894 patent and that Whirlpool is not entitled to
damages. (Dkt. No. 171). Having considered the Motion and the
relevant authorities, the Court is of the opinion that, for
the reasons below, the Motion should be
Corporation (“Whirlpool”) filed suit against TST
on September 15, 2015, alleging infringement of United States
Patent No. 7, 000, 894 (“the '894 Patent”) by
replacement water filters sold by TST, specifically
replacement filters compatible with Whirlpool's Filter 3
filter design. (Dkt. No. 1). A jury trial was conducted from
March 6, 2017, through March 10, 2017. (See Dkt.
Nos. 149, 150, 151, 152, 153). The jury rendered its verdict
on March 10, 2017, finding all claims of the '894 Patent
asserted at trial to be willfully infringed and not invalid.
The jury awarded Whirlpool damaged in the amount of $7, 600,
000. (Dkt. No. 148). Following trial, the Parties jointly
moved, and the Court ordered, a post-trial briefing schedule.
(Dkt. Nos. 170, 182). All briefing has been completed and the
motions, including the instant Motion, are ripe for
as a matter of law is appropriate if “the court finds
that a reasonable jury would not have a legally sufficient
evidentiary basis to find for [a] party” on an issue.
Fed.R.Civ.P. 50(a)(1). “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 Group,
Inc., 523 F.3d 1323, 1332 (Fed. Cir. 2008). The Fifth
Circuit “uses the same standard to review the verdict
that the district court used in first passing on the
motion.” Hiltgen v. Sumrall, 47 F.3d 695, 699
(5th Cir. 1995). Thus, a jury verdict must be upheld, and
judgment as a matter of law may not be granted, unless
“there is no legally sufficient evidentiary basis for a
reasonable jury to find as the jury did.” Id.
at 700. The jury's verdict must be supported by
“substantial evidence” in support of each element
of the claims. Am. Home Assurance Co. v. United Space
Alliance, 378 F.3d 482, 487 (5th Cir. 2004).
Fifth Circuit law, a court is to 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). The moving
party is entitled to judgment as a matter of law, “only
if the evidence points so strongly and so overwhelmingly in
favor of the nonmoving party that no reasonable juror could
return a contrary verdict.” Int'l Ins. Co. v.
RSR Corp., 426 F.3d 281, 296 (5th Cir. 2005). 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).
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. Const. Co.,
L.L.C., 731 F.3d 444, 451 (5th Cir. 2013) (citation
omitted). However, a court may not make credibility
determinations or weigh the evidence, as those are solely
functions of the jury. See Ellis v. Weasler Eng'g
Inc., 258 F.3d 326, 337 (5th Cir. 2001) (citing
Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S.
133, 150-51 (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
that evidence comes from disinterested witnesses.'”
Id. at 151 (citation omitted).
addressing TST's Motion for Judgment as a Matter of Law
(Dkt. No. 171), the Court first considers infringement of the
'894 Patent. The Court will then address whether a
reasonable jury would have had a sufficient evidentiary basis
to award Whirlpool damages as set forth within the verdict.
Judgment as a Matter of Law of No. Literal
trial, Whirlpool asserted the '894 Patent, specifically
independent Claim 1, its dependent Claims 10 and 15,
independent Claim 4, and its dependent Claims 17, 20, and 27
(“the Asserted Claims”). All asserted claims
recite an end piece wall and a protrusion, with “said
protrusion extend[ing] from said endpiece wall.”
('894 Patent at Claim 1, 4). Following the close of
evidence, the jury returned a verdict that “Whirlpool
prove[d] by a preponderance of the evidence that TST Water
directly infringes” the Asserted Claims “either
literally or under the doctrine of equivalents.” (Dkt.
No. 148 at 2). TST argues that the record lacks substantial
evidence that the protrusion on the W-5 filter literally
“extends from” the end piece wall. (Dkt. No. 171
at 3). Accordingly, TST concludes that a reasonable jury
would not have had a legally sufficient evidentiary basis to
support a finding of direct literal infringement.
W-5 filter, the Accused Product, was found by the Jury to
infringe the '894 Patent. The W-5 filter has a protrusion
(blue) and an end piece wall (red) as depicted below:
(Dkt. No. 171 at 2). During trial Whirlpool's technical
expert conceded that the protrusion on the W-5 does not
directly contact the end piece wall. (Dkt. No. 159, March 7,
2017 A.M. Tr. at 118:10-16 (Q: “TST's . . .
protrusion [does not] actually contact the end piece wall,
correct?” A. “[It's] not in direct contact
with the end piece wall, yes.”)). However, Whirlpool
nonetheless maintained its position at trial that the
protrusion on the W-5 “extends from” the end
piece wall, even if the connection is, as TST characterizes
it, “indirect.” (Id. at 3). This
position, TST argues, was improper. Specifically, TST argues
that “Whirlpool never advanced a special definition of
‘extending from said end piece wall, ' and the
Court never adopted one.” (Id. at 4).
Therefore, according to TST, “this limitation fell
within the Court's general instruction that the plain
meaning applies to terms that the Court did not
construe.” (Id.) Although Whirlpool's
technical expert Dr. Joseph Beaman testified that,
“these [protrusions] don't have to be directly
attached to the end piece wall, they just have to be
connected in some sense, ” (Dkt. No. 159, March 7, 2017
A.M. Tr. at 40:14-41:2), TST argues that this opinion amounts
to an improper alternative construction. (Dkt. No. 171 at 4).
Further, TST argues that such construction is unsupported or
contradicted by the '894 Patent's intrinsic evidence,
including the specification, file history, and cited prior
art. (Id.) As such, the testimony offered by Dr.
Beaman “is not probative and must be disregarded in
assessing whether the jury's presumed finding of literal
infringement was supported by substantial evidence.”
(Id. at 5).
in response, points out that “[a]t no point before the
jury's verdict, including during the Markman
process and trial, did TST ask the Court to construe
‘extend, '” and that, accordingly, “the
Court properly instructed the jury that it should ‘use
the plain and ordinary meaning of that term as understood by
one of ordinary skill in the art.'” (Dkt. No. 181
at 2 (quoting Dkt. No. 166, Mar. 10, 2017 A.M./P.M Tr. at
Court agrees. Whether the W-5 filter's protrusion
“extended” from its end piece wall (or not) was a
question of fact for the jury. See Inventio AG v.
ThyssenKrupp Elevator Corp., No. 08-cv-874, 2014 WL
468897, at *4 (D. Del. Feb. 3, 2014) (where defendant did not
ask the court to construe “connected, ” whether
“connect[ion]” could be “satisfied by an
indirect connection” was a “question of fact for
the jury”); accord 1 Annotated Patent Digest
§ 4:58, Jury's Determination of the Actual Precision
of the Claim (“[A]fter the court has defined the claim
with whatever specificity and precision is warranted by the
language of the claim and the evidence bearing on the proper
construction, the task of determining whether the construed
claim reads on the accused product is for the finder of
fact.”) (quoting PPG Indus. v. Guardian Indus.
Corp., 156 F.3d 1351, 1355, 48 U.S.P.Q.2d 1351 (Fed.
Cir. 1998)); Acumed LLC v. Stryker Corp., 483 F.3d
800, 806 (Fed. Cir. 2007) (“[A] sound claim
construction need not always purge every shred of ambiguity.
The resolution of some line-drawing problems . . . is
properly left to the trier of fact.”).
points to substantial evidence which supports the jury's
conclusion that TST literally infringed, including:
• After identifying the “end piece wall” as
the “flat wall section” at the top of the W-5,
Dr. Beaman showed that the inlet and outlet fittings and
protrusion “extend[ed]” from it. (Dkt. No. 159,
Mar. 7, 2017 A.M. Tr. at 34:5-10; 36:4-12).
• Dr. Beaman explained that the W-5's protrusion
connects to and extends from the end piece wall via a
“support.” (Id. at 40:14-23, 118:10-25
(protrusion not in “direct contact, ” but still
extends from the W-5's end piece wall)).
• TST's internal drawings revealed that, when
developing the W-5, TST effectively “carved away”
the Filter 3's end piece wall, resulting in a different
appearance. (Id. at 27:8-29:2). But its protrusion
stayed in the same place and still extended from the end
piece wall. (Id.)
• Whirlpool offered into evidence drawings, photographs,
and physical exhibits confirming that TST's design
process involved carving around the protrusion, but leaving
its location and extension from the end piece wall intact.
(Dkt. Nos. 175-18, 175-38; Dkt. No. 181, Exs. 9-12). For
(Dkt. No. 181 at 3). The Court finds that the strength and
sufficiency of record evidence, as illustrated above, more
than adequately supports the jury's verdict of direct
addition, TST argues that Whirlpool's position
“leads to an absurd result” because, in TST's
view, “Whirlpool's theory permits any feature of
the claimed cartridge to extend from the end-piece wall, even
the cap on the opposite end of the filter.” (Dkt. No.
171 at 6-7). As a result, TST contends that adopting
Whirlpool's position would preclude the “protrusion
extending from” limitation from “limit[ing] the
claim in any meaningful way.” (Id. at 7). TST
concludes that this holding renders Whirlpool's theory
incorrect as a matter of law. (Id.) Finally, TST
argues that Whirlpool improperly attempted to prove a
structural limitation by showing that the accused product
performs a function, specifically, that the W-5 filter's
protrusion extends out to go into the head assembly and
interact with the head assembly. (Id. at 7). This
type of “functional evidence, ” in TST's
view, should not be considered. (Id.) Accordingly,
TST submits that, in view of all of these arguments,
Whirlpool “failed to introduce substantial evidence
from which a reasonable jury could conclude that the W-5
filter literally satisfies the ‘protrusion extending]
from said end piece wall' limitation.”
(Id. at 8).
response, with respect to the functional evidence argument
raised by TST, Whirlpool submits that the
“extending” limitation is structural. At
trial, “TST's expert agreed that structures that
are entirely unconnected to the end piece wall do not
‘extend from it, '” thus the
“extending” limitation does serve as a structural
limitation, specifically requiring connection, be it
direct or indirect, of the protrusion to the end piece wall.
(Dkt. No. 181 at 7). Whirlpool points to TST's expert,
Mr. Stein, who testified regarding TST's primary
reference, Knuth, which “has a protrusion, ” but
not one that “extend[s] from the end piece wall.”
(Dkt. No. 165, Mar. 9, 2017 P.M. Tr. at 10:6-13;
accord Dkt. No. 164, Mar. 9, 2017 A.M. Tr. at
100:6-13 (explaining that Knuth's
“protrusion” extend[s] from the head assembly,
” “not . . . the end piece wall”)).
Whirlpool also submits that TST's end cap hypothetical is
a strawman argument whose asserted “absurdity”
arises from the fact that the end cap is not on the same side
of the end piece wall as the inlet and outlet fittings. It
has nothing to do with whether the end cap extends from the
end piece wall via an intervening structure. Whirlpool notes
that TST offered no response to this rebuttal. (Dkt. No. 189
at 4 (“Other limitations constrain the position of the
protrusion, and neither party disputes that the protrusion
should be on the same side as the inlet and outlet fittings
to engage the head assembly. TST offers no
Court is not persuaded by either of TST's arguments. The
“extending” limitation is a structural limitation
which requires the claimed “protrusion” to
possess a specific structural form. This specific structural
form is supported not only by the claim language itself
(“said protrusion extend[s] from said end piece wall
[and] is positioned between said inlet and outlet
fittings”) but also the specification. For example, the
specification shows the “protrusion” (33)
“extending” from the end piece wall (12):
Fig. 2B. “[T]he solid protrusion 33
may have a cylindrical end 41 (preferably
having a length from about 0.1 cm, about 0.3 cm, about 0.5 cm
to about 1 cm, about 1.5 cm, about 2 cm, and preferably
having a diameter from about 0.1 cm, about 0.2 cm, about 0.3
cm to about 0.5 cm, about 0.7 cm, about 1 cm) extends from
near the edge of the end piece wall 12,
adjacent to the connection of the end piece
10 and cartridge 20.”
(Id. at 5:23-30). In addition to the intrinsic
evidence, Dr. Beaman supplied testimony on how the
“extending” limitation was met by the accused
Q. Now, the claim next requires that the inlet fitting, the
outlet fitting, and the protrusion all extend from the end
piece wall. Do you see that?
A. Yes, I do.
Q. And how is this limitation satisfied?
A. Well, here's the end piece wall right here. And
you'll notice the protrusion is extending from it. The
inlet fitting is extending from it. And the outlet fitting
are extending from the end piece wall.
No. 159, Mar. 7, 2017, A.M. Tr. at 36:4-12). Further, his
testimony, Dr. Beaman concluded that the
“extending” limitation was satisfied by the
accused product. (Id. at 44:16-19). Finally, Dr.
Beaman directly addressed TST's indirect extension
argument during his testimony:
Q. Now, Dr. Beaman, have you reviewed reports and testimony
by Dr. -- by Mr. Stein in this case?
A. Yes, I have.
Q. And do you understand that you have certain disagreements
with him on his opinions regarding infringement here?
A. I think we do, yes.
Q. What are the -- at a high level the areas of disagreement?
A. He disagrees with my understanding of extend from, what an
longitudinal axis is, and also what we mean by about 2
Q. Dr. Beaman, let's go to the first area of
disagreements. Literal infringement and extend from. Why do
you disagree, and can you explain why you believe your ...