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Whirlpool Corp. v. TST Water, LLC

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

March 29, 2018

WHIRLPOOL CORPORATION, Plaintiff,
v.
TST WATER, LLC, Defendant.

          MEMORANDUM OPINION AND ORDER

          RODNEY GILSTRAP, UNITED STATES DISTRICT JUDGE.

         Before 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 DENIED.

         I. Background

         Whirlpool 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 disposition.

         II. Applicable Law

         Judgment 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).

         Under 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).

         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. 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).

         III. Discussion

         In 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.

         A) Judgment as a Matter of Law of No. Literal Infringement

         At 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.

         TST's 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:

         (Image Omitted)

(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).

         Whirlpool, 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 15:22-16:2)).[1]

         The 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.”).

         Whirlpool 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 example:

         (Image Omitted)

(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 infringement.

         In 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).

         In 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 response.”)).

         The 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):

         (Image Omitted)

         PX1 at 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 product:

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.

         (Dkt. 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 centimeters.
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 ...

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