Remittitur and Additur: enhanced damages yes, “exceptional case” no

I mentioned previously that there’s really no “additur” by which a judge can scratch out the damages number awarded by a jury as insufficient under the evidence and increase it.  While a trial court can effectively reduce a verdict via “remittuitur” or via JMOL/MNT practice, the reverse isn’t true.  But to use an overused word, patent cases are exceptional in that judges do have the ability to “enhance” damage awards under 35 USC 284 where a jury has made a finding of willful infringement. Such was the case in

Remittitur & Additur: Jury Verdict Set Aside but 285 Motion Denied

There are two directions a patent case can go following a verdict – up or down.  And they get two opportunities at each. First, the verdict can be affirmed or it can be set aside.  Then the bog-standard 285 motion asserting that the case is exceptional determines if it goes up or stays where it is.  (In willful infringement cases there’s a third option, but that’s for a later post). In this case, the Court granted the first motion setting aside the plaintiff’s verdict, but denied the second.

Remittitur and “additur” in EDTX patent verdicts

It’s not a common occurrence for trial judges to nip and tuck a jury’s verdict – the procedural standards that apply to a review of a jury’s verdict make remittitur rare, and true “additur” generally fictional, with substantial statutory exceptions in the patent context for the latter. Today’s posts will focus on some recent decisions in the district that either reduce or enhance the amount of a jury’s award.

Patching Holes in the “Concrete”: Motions to Amend Infringement/Invalidity Contentions

One of the nice things about practicing law in my hometown of Marshall – and especially working out of a pair of circa 1870’s storefronts that are two doors down from my grandfather’s old store – is that I park in my grandfather’s old parking place from the 1960’s each morning and walk past where in 1971 we put our initials in the wet concrete when the city patched the sidewalk out front.  That’s my scrawled “M.S”, followed my Miss Rountree’s “ER” (that’s her in the 1950 photo above), and my grandfather’s formal “C.D”.

These days the “patching” that I see the most comes in the form of trying to amend infringement and invalidity contentions.  Dating back to the origin of local patent rules in the Northern District of California, judges have been emphatic that the rules are designed to require parties to “crystallize their theories of the case early in the litigation and to adhere to those theories once they have been disclosed.”  See CBS Interactive, Inc. v. Etilize, Inc., 257 F.R.D. 195, 201 (N.D. Cal. 2009)  Unlike the liberal policy for amending pleadings, the philosophy behind amending contentions is “decidedly conservative, and designed to prevent the ‘shifting sands’ approach to claim construction.”  Id.

While the purpose of the rules and their “good cause” requirement for amendments has often been described as requiring parties’ contentions to be “set in concrete” early in the case, surprisingly, to my knowledge no reported opinion, for EDTX, ND Cal. or elsewhere has used that phrase, opting for a more flexible description of the analysis in terms of what it is intended to prevent, and not what it requires.  More recently, the opinions on this subject have become aggressively pragmatic, looking at the need and the potential prejudice, and identifying and weighing the facts of each case before deciding whether amendment is allowed.

I’ll be posting a couple of recent EDTX opinions dealing with this subject later today to illustrate the latter point.

Death by Power Point Avoided

As readers know, Federal Circuit Judge William Bryson handles patent cases in Marshall on a regular basis, coming down as needed for hearings and trials.  “As needed” is the key, because he recently declined to come down for an abbreviated claim construction hearing, and denied a motion seeking to force the parties to travel from across the country to watch the defendant’s PowerPoint presentation.

The defendant in this case filed an opposed motion to hold an “in-court” hearing as opposed to one by telephone, claiming as the primary basis that they could “more effectively present their argument” because “the in-court format would more readily allow the parties to use demonstrative exhibits” (meaning Power Point slides).

Judge Bryson disagreed, “for several reasons.”

“First, the Court almost never finds such demonstratives or other visual presentations to be useful in Markman hearings or hearings on other issues and typically instructs attorneys not to use such demonstratives. The Court prefers to have the attorneys argue to the Court and to use documents in the record (which are fully available to the Court) in the course of their presentation.”

Don’t you just hate it when the judge wants you to use documents in the record instead of your slides?  Next thing you know he’ll start talking about “evidence” like it’s something special.

“Second, the claim construction issue in this case is a very simple one involving a single claim limitation that has been the subject of a previous claim construction order. The Court has fully familiarized itself with the arguments of the parties and does not feel the need for basic instruction as to the technology or the legal issue in question. The plaintiff has suggested that the Markman hearing would last about one hour. The defendants estimate that it would last two hours. The Court believes that even one hour is likely to be more than enough to fully explore the issue presented.”

And this second issue leads to the third:

“Third, the Court is keenly aware of the costs that parties incur in complex civil litigation and is interested in minimizing those costs to the extent possible. Although the defendants have represented, in effect, that they are willing to incur the extra costs that would be involved in conducting an in-court hearing, they do not speak for the plaintiff. The plaintiff has opposed the motion and has represented to defendants’ counsel that plaintiff would prefer not to incur those costs. Dkt. No. 102-1, at 2. In addition to the out-of-pocket costs to the clients, an in-court hearing would impose additional scheduling burdens on the attorneys who are forced to attend. A telephone conference can fairly easily be fit into a day of other productive work. An appearance in court in another city cannot.”

Cioffi v. Google – update

I posted Friday about the jury verdict in favor of the plaintiff in Cioffi v. Google and wanted to add a few more details that may be of interest:

  • the verdict is the first for a plaintiff in the three patent cases tried to date in 2017 – the other two have been for defendants.
  • the plaintiffs were two individual inventors residing in Richardson, Texas (one was the estate of the inventor) in the EDTX.
  • the jury awarded $20 million as a running royalty, not a lump sum; plaintiffs sought $26 million for damages to date, and defendant proposed under a million (as a lump sum I assume) if the jury found infringement.
  • the district court had previously granted summary judgment of noninfringement based on claim construction rulings (including finding a key term indefinite), but those constructions were reversed by the Federal Circuit, and a trial was required based on the corrected claim constructions.

In Cioffi, No. 2015-1194 (11/17/15), the Federal Circuit found that that the district court incorrectly construed “web browser process” as requiring a “direct” access capability and incorrectly construed “critical file” as encompassing “critical user files.” It therefore reversed the district court’s claim constructions to the extent they were inconsistent with its findings and reversed the district court’s finding that the ’103 patent was invalid as indefinite under 35 U.S.C. § 112 ¶ 2.

Because the parties had stipulated to non-infringement based on the district court’s prior constructions, it remanded for further findings pursuant to this opinion, resulting in this trial fifteen months later.