Notice Of Invalidity Position Insufficient To Preserve Right To Post-Trial JMOL

Medisim Ltd. v. Bestmed, LLC __F.3d__ (Fed. Cir. July 14, 2014) (PROST, Taranto, Chen) (S.D.N.Y., Scheindlin) (3 of 5 stars)

Federal Circuit vacates JMOL of anticipation, and affirms JMOL of unjust enrichment and conditional grant of new trial on anticipation.

JMOL on anticipation: BestMed forfeited its right to move for JMOL on anticipation under Fed. R. Civ. P. Rule 50(b) because it did not preserve its rights by moving under Rule 50(a) before the case was submitted to the jury. BestMed's evidence of its Rule 50(a) motion showed that BestMed thought the issue of anticipation was for the jury rather than for the court on JMOL. BestMed also did not expressly move or cross-move for its own JMOL of anticipation. Moreover, the district court's statement that BestMed had preserved the record and renewed its motion related to unjust enrichment and not anticipation.

JMOL on unjust enrichment: BestMed did not forfeit its right to move for JMOL of unjust enrichment under Rule 50(b). While BestMed's pre-verdict Rule 50(a) motion was generic, it was adequate because Medisim's unjust enrichment case itself was generic, relying on limited and imprecise presentation of evidence during trial. On the merits, under Second Circuit law, Medisim failed to present its case in three ways: 1) it did not present any evidence supporting its theory that BestMed received an incremental benefit from Medisim's allegedly proprietary testing procedures; 2) Medisim's case did not distinguish patent and non-patent damages claims and relied on profits from all accused products; and 3) Medisim did not present any evidence that showed BestMed thought the testing procedure was confidential or proprietary.

New trial: The district court did not abuse its discretion in conditionally granting a new trial on anticipation. The district court's reasoning, which relied upon intrinsic and extrinsic evidence, was laid out in its discussion of JMOL on anticipation and applied equally to the new trial motion. Additionally, on remand, the district court is not foreclosed from addressing anticipation in a summary judgment motion, rather than a new trial.