EDTX Monthly Wrap-Up — April 2021

This post reviews two April 2021 opinions from the Eastern District of Texas deciding post-trial motions. The first case involves the denial of enhanced damages by the Honorable Amos L. Mazzant, III. In the second case, the Honorable J. Rodney Gilstrap denied the defendants' motions to enter judgment as a matter of law of no induced infringement and to alter the court's findings of no inequitable conduct.

Wapp Tech Ltd. Partnership v. Seattle SpinCo, Inc., No. 4:18-CV-469, 2021 WL 1574714 (E.D. Tex. Apr. 22, 2021)

In March 2021, Judge Mazzant held a jury trial in Wapp. During the trial, the court granted Wapp's motion as a matter of law that Defendant Micro Focus failed to present substantial evidence of patent invalidity. The jury later returned a verdict of infringement and "awarded Wapp $172,554,269 after approximately two and a half hours of deliberation, potentially the largest verdict in the history of [the Sherman division] courthouse." Id. at *1, *4. The jury also found Micro Focus willfully infringed each asserted patent. Id. at *1.

After the trial, Wapp argued that it was entitled to enhanced damages under 35 U.S.C. § 284. Id. Wapp pointed to Micro Focus's invalidity case during trial. Id. at *2. Micro Focus's counsel admitted that Micro Focus had failed to present evidence of anticipation, obviousness, and enablement because it ran out of time during the trial. Id. at *1, *3. Although Micro Focus argued that the jury should decide its written description defense, the court ultimately granted Wapp's JMOL, and none of Micro Focus's invalidity arguments went to the jury. Id. at *1.

Judge Mazzant disagreed that Micro Focus's "poor time management" during trial amounted to an "inherent insufficiency" that merited enhanced damages under Section 284. Id. at *2-*3. The court noted that Wapp never moved to completely exclude Micro Focus's invalidity expert, nor did Micro Focus move for summary judgment of invalidity. Id. at *2. And the court noted that even though the jury did not decide invalidity, Micro Focus's noninfringement defenses were sent to the jury. Id. at *3. Under a "holistic" approach and "consider[ing] all circumstances of this case," the court found that enhanced damages were unwarranted. Id. ("[E]nhanced damages analysis is inherently holistic and the district court exercises considerable discretion."). The court also noted that the award marked a "significant liability finding" in which "[f]urther punishment" was unnecessary.

Vocalife LLC, v. Amazon.com, Inc., No. 2:19-CV-00123-JRG, 2021 WL 1401434 (E.D. Tex. Apr. 14, 2021)

Judge Gilstrap held a jury trial in Vocalife in October 2020. Id. at *1. The jury returned a verdict in favor of Plaintiff Vocalife on both infringement and invalidity. Defendant Amazon later filed (1) a judgment as a matter of law of no induced infringement and (2) a motion to alter the court's inequitable conduct findings. The court denied both motions.

(1) Judgment as a matter of law

Amazon's JMOL on induced infringement argued that Vocalife failed to show substantial evidence on Amazon's intent to induce infringement and Amazon's customer's direct infringement. Id. at *2. On intent, Amazon's knowledge of the asserted patent was limited to the filing date of the complaint. Id. at *3. According to the court, substantial evidence showed Amazon's intent to induce infringement because "[e]vidence was presented showing that Amazon instructed its customers to use [the accused] products in an infringing manner." Id.

As to direct infringement, the court considered six limitations that Amazon argued Vocalife had failed to show Amazon's customers performed. Id. at *4-9. On each of these points, the court recounted the testimony of Vocalife's expert that the claim limitation was met. Id.

(2) Motion to alter inequitable conduct findings

Amazon also moved the court to amend its findings or make additional findings on Amazon's inequitable conduct claims under Rules 52(b), 59(e), and 60(a). Id. at *9-10. Amazon's evidence on these claims included the prosecuting attorney's "submission of a reissue declaration without checking a box indicating that the reissue application was for a broadening reissue," which Amazon argued "was a false declaration and material to patentability." Id. at *10. In its motion for amendment or additional findings, Amazon asked the court to revisit its judgment finding no inequitable conduct, which did not discuss Amazon's argument on the reissue declaration. Id.

The court denied Amazon's motion for amendment or additional findings. Id. The court noted that its acknowledgment in its judgment that the defective reissue declaration buttressed the opinions of Amazon's expert. Id. Notwithstanding the defective declarations, the court found that Amazon had failed to prove an intent to deceive the Patent Office. Id. The court also noted that its judgment need not specifically discuss all of Amazon's evidence as a basis for the court's findings. Id.