Irreconcilable Jury Verdicts Lead to A New Trial
Today the Federal Circuit decided Comaper Corp. v. Antec, Inc. (PDF here), regarding infringement of a patent directed to a cooling device designed to mount within the drive bay of a computer.
The district court (E.D. Pa., Honorable Petrese B. Tucker, presiding) construed the claims before presenting the case to the jury. After a five-day trial, the jury returned a “Special Verdict” in which it found infringement of claims 1, 2, 7, 12, and 13 of asserted U.S. Pat. No. 5,955,955. The jury also found willful infringement on the part of Antec. Finally, the jury found that the asserted claims of the patent were not anticipated, and that independent claims 1 and 12 were not obvious. Interestingly, the jury found that claims 2 and 7 (which depend from claim 1), and claim 13 (which depends from claim 12) were invalid as obvious.
Those of you with a knowledge of patent law can immediately spot the problem: dependent claims are narrower than the independent claims from which they depend, so verdicts finding the dependent claims obvious, and the independent claims not obvious, are irreconcilable.
“A broader independent claim cannot be nonobvious where a dependent claim stemming from that independent claim is invalid for obviousness.” Callaway Golf Co. v. Acushnet Co., 576 F.3d 1331, 1344 (Fed. Cir. 2009) (citing Ormco Corp. v. Align Tech., Inc., 498 F.3d 1307, 1319 (Fed. Cir. 2007)).
Antec asserted, and Comaper could not dispute, that a new trial was required on this basis. Though Comaper argued that Antec could not appeal the verdict because it did not raise an objection (under Fed. R. Civ. P. 49(b)) before the jury was dismissed, this argument failed because the appropriate provision is Fed. R. Civ. P. 49(a):
As Comaper itself recognizes, under Third Circuit law, when a jury returns a special verdict, no contemporaneous objection prior to the dismissal of the jury is required in order to preserve the right on appeal to challenge the verdicts as inconsistent. See Malley-Duff & Assocs., Inc. v. Crown Life Ins. Co., 734 F.2d 133, 144–45 (3d Cir. 1984) (“[N]o decision of this court has precluded appellate review of inconsistencies under a Rule 49(a) [special] verdict in the absence of an objection before the jury was discharged.”). Thus, by making its post-verdict motion for a new trial on the ground of inconsistent verdicts, Antec properly preserved this issue for appeal. [emphasis added]
Third Circuit law recognizes that where verdicts are genuinely inconsistent and the evidence might support either of the inconsistent verdicts, the appropriate remedy is ordinarily to order an entirely new trial. See Malley-Duff, 734 F.2d at 145 (vacating judgment due to inconsistent special verdicts and ordering a new trial); see also Acumed LLC v. Advanced Surgical Servs., Inc., 561 F.3d 199, 217–18 (3d Cir. 2009) (“[I]f verdicts are genuinely inconsistent and if the evidence might support either of the ‘inconsistent’ verdicts, the appropriate remedy is ordinarily . . . not simply to accept one verdict and dismiss the other, but to order an entirely new trial.” (quoting Mosley v. Wilson, 102 F.3d 85, 91 (3d Cir. 1996) (quotation marks omitted)). Thus, when faced with inconsistent verdicts and the evidence would support either of the inconsistent verdicts, the district court must order a new trial. [emphasis added]
Thus, the Federal Circuit assessed the evidence presented to the jury. Upon finding that the evidence could support a finding of obviousness regarding claims 2, 7, and 13 (the narrower dependent claims), the Federal Circuit remanded to the district court for a new trial (the broader independent claims being immediately suspect).
I note here an issue of importance for the trial attorneys: Always make a motion for Judgment as a Matter of Law (JMOL) under Fed. R. Civ. P. 50(a) before the case is given to the jury. To preserve a basis for a JMOL under Fed. R. Civ. P. 50(b) after the jury verdict, a party must have made the first motion under Rule 50(a). Merely meeting the “letter and spirit” of Rule 50(a) by making your position clear to the Court will not be enough. Antec failed to make the 50(a) motion here, and thus forfeited its right to make the 50(b) motion after the verdict; based on the Federal Circuit’s analysis of the facts, Antec might well have prevailed on that later motion. The same procedural error arose in i4i v. Microsoft and cost Microsoft dearly.
[Updated: Thank you to Ian Gates for alerting me to a typo in the 8th paragraph. The phrase “narrower independent claims” should have been written as “narrower dependent claims,” and is now corrected.]