“Whale fall” JMOL on willful infringement, jury instructions & interest calculations

(Ed. note: this is a throwback post from Judge Bill Bryson from two summers ago. I was researching some issues and kept coming back to this opinion as a useful reference, so I thought I’d repost it to remind readers of its utility.)

Earlier this year a Marshall jury in visiting CAFC Judge Bill Bryson’s court rendered a $20 million verdict in favor of the plaintiff against defendant Eli Lilly.  Several weeks ago Judge Bryson followed up with an order explaining his reasons for several decisions during trial.

Judge Bryson’s order is an example of what I referred to in my talk about JMOLs week before last at Horseshoe Bay as a “whale fall” – the sort of order that can take weeks to fully digest, but if you’re interested in the subject of getting a JMOL on a plaintiff’s claims of willful infringement or on when certain jury instructions are appropriate or how prejudgment interest is calculated it’s worth it.

Our story begins with the defense counsel rising at trial to assert a JMOL as to the plaintiff’s claim of willful infringement…

Uropep – JMOL order

Willful Infringement

At the close of the evidence, Judge Bryson granted Lilly’s Rule 50(a) motion for JMOL on the issue of willful infringement, finding there was insufficient information for this issue to be submitted the jury, and providing a useful primer on the post-Halo standards for such claims.  The opinion doesn’t just explain (taking several pages) why the evidence was insufficient, but also notes that the question is largely moot because he’d already decided that he would not have enhanced damages on this record, even if the jury had found willful infringement.

Jury Instruction re: Enablement of Both Prophylaxis and Treatment

We get into the weeds real fast in Section II of the opinion, which deals with the Court’s denial of an instruction that UroPep was required to enable both prophylaxis and treatment, and that it would not be sufficient to enable treatment alone, which was directed to the issue of written description.  Or enablement.  Or maybe both.  In any event, the Court concluded that the requested instruction would have been confusing to the jury, and the principle was actually already incorporated in the charge.

Jury Instruction re: Written Description of a Negative Limitation

Again with the written description issue, Lilly requested a “negative limitation” instruction.  Judge Bryson provides a detailed explanation of the subject, concluding that the requested instruction would have been erroneous.

Failure to Instruct on the Discovery of a Phenomenon of Nature

The Court declined to insert a Section 101 defense into the case at the instruction stage, noting it had not been pleaded, and would have been confusing, prejudicial and misleading.

Prejudgment and Postjudgment Interest

Judge Bryson rejected the defendant’s request that he award no prejudgment interest, as well as the plaintiff’s request that he use something other than the prime rate to calculate prejudgment interest (the difference was slightly under a million dollars).  The postjudgment rate was agreed.

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