United States District Court, W.D. Washington, Seattle
ORDER ON POST-TRIAL MOTIONS
P. DONOHUE, UNITED STATES MAGISTRATE JUDGE
INTRODUCTION AND SUMMARY CONCLUSION
five-day jury trial of this matter concluded on Friday, June
8, 2018, with the jury reaching a unanimous verdict on all
issues. Dkt. 242. The jury awarded plaintiff Eko Brands, LLC
("Eko") damages in the amount of $ 192, 801.00 for
infringement of U.S. Patent No. 8, 707, 855 ("DeMiglio
'855 patent"), found for defendant Adrian Rivera
Maynez Enterprises, Inc. ("ARM") on the question of
willfulness, and found that Claims 5, 8, 18 and 19 of U.S.
Patent No. 8, 720, 320 ("Rivera '320 patent")
would have been obvious to a person having ordinary skill in
the art. Id. Following the trial, Eko filed motions
seeking (1) judgment as a matter of law or a new trial,
enhanced damages, and pre-and post-judgment interest (Dkt.
248); (2) attorneys' fees and costs (Dkt. 256); and (3)
permanent injunctive relief (Dkt. 247). Having reviewed the
parties' submissions, the governing law, and the balance
of the record, the Court ORDERS as follows: (1) Eko's
request for judgment as a matter of law or a new trial on the
issue of willfulness as well as enhanced damages, Dkt. 248,
is DENIED; (2) Eko's motion for pre- and post-judgment
interest, Dkt. 248, is GRANTED IN PART and DENIED IN PART;
(3) Eko's motion for attorneys' fees and costs, Dkt.
256, is GRANTED IN PART and DENIED IN PART; and (4) Eko's
motion for permanent injunctive relief, Dkt. 247, is GRANTED.
Eko's Motion for Judgment as a Matter of Law or a New
Trial on Willfulness
Rule of Civil Procedure 50(a) provides that the Court may
direct the entry of judgment as a matter of law where
"the court finds that a reasonable jury would not have a
legally sufficient evidentiary basis to find for the party on
that issue." A directed verdict must be entered where
"there is no substantial evidence to support the
claim." Rutledge v. Elec. Hose & Rubber
Co., 511 F.2d 668, 677 (9th Cir. 1975) (quoting
Cleary v. Nat'l Distillers & Chem. Corp.,
505 F.2d 695, 696 (9th Cir. 1974)). A motion pursuant to Rule
50(a) maybe made at any time before the case is submitted to
the jury. Fed.R.Civ.P. 50(a)(2). However, the "failure
to file a Rule 50(a) motion precludes consideration of a Rule
50(b) motion for judgment as a matter of law." Tortu
v. Las Vegas Metro. Police Dep't, 556 F.3d 1075,
1083 (9th Cir. 2009).
Eko's request for judgment as a matter of law pursuant to
Fed.R.Civ.P. 50(b) is denied, as no motion for judgment as a
matter of law pursuant to Fed.R.Civ.P. 50(a) was requested by
Eko at trial. This forecloses any relief pursuant to
Fed.R.Civ.P. 50(b), as there is no "renewed" Rule
50(a) motion before the Court. See Freund v. Nycomed
Amersham, 347 F.3d, 752, 761 (9th Cir. 2003);
Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1098
(Fed. Cir. 2003). Eko's alternative motion for a new
trial pursuant to Fed.R.Civ.P. 59 is not so foreclosed.
Fed.R.Civ.P. 59(a)(1)(A), the "court may, on motion,
grant a new trial... after a jury trial, for any reason for
which a new trial has heretofore been granted in an action at
law in federal court." A trial court "enjoys broad
discretion with regard to a new trial motion."
United States v. Hinkson, 585 F.3d 1247, 1263 (9th
Cir. 2009) (en banc) (citing Allied Chem. Corp. v.
Daiflon, Inc., 449 U.S. 33, 36, 101 S.Ct. 188, 66
L.Ed.2d 193 (1980) ("The authority to grant a new
trial... is confided almost entirely to the exercise of
discretion on the part of the trial court.")). The Court
may grant a new trial only "[i]f, having given full
respect to the jury's findings, the judge on the entire
evidence is left with the definite and firm conviction that a
mistake has been committed." Tortu v. Las Vegas
Metro. Police Dep't, 556 F.3d 1075, 1087-88 (9th
Cir. 2009) (internal quotation marks omitted).
argues that Jury Instruction 40, which was based entirely on
the National Patent Jury Instructions ("NPJI") No.
4.1., impermissibly described the burden of proving
willfulness following the U.S. Supreme Court's decision
in Halo Elecs., Inc. v. Pulse Elecs., Inc., 136
S.Ct. 1923 (2016), and that the evidence was such that a
properly instructed jury would have rendered a different
decision. Dkt. 248 at 6. In particular, Eko's concern
focuses on the last few sentence of the first paragraph of
the instruction, which state that willful infringement is
"especially worthy of punishment" and reserved for
"egregious behavior." Id. at 7. Eko argues
that "these two statements invited the jury to make the
legal decision as to whether damages should be enhanced, or
whether it is an exceptional case, rather than limiting the
jury to the underlying factual question of whether the
infringement was willful." Id.
own proposed jury instruction on willfulness provided to the
Court, however, was modeled on NPJI 4.1 and still included
this language. Dkt. 215-1 at 69. This was also true of
ARM's proposed jury instruction on willfulness. Dkt.
215-1 at 72. Thus, Jury Instruction 40, in its original
form agreed to by both parties, provided as follows:
Eko argues that ARM willfully infringed the Eko 855 patent.
For purposes of this case only, you are to assume direct
infringement of amended claim 8 of the Eko 855 patent.
Therefore, you must go on and address the additional issue of
whether or not this infringement was willful. Willfulness
requires you to determine whether Eko proved that it is more
likely than not that the infringement was especially worthy
of punishment. You may not determine that the infringement
was willful just because ARM knew of the Eko 855 patent and
infringed it. Instead, willful infringement is reserved
for only the most egregious behavior, such as where
infringement is malicious, deliberate, consciously wrongful,
or done in bad faith.
To determine whether ARM acted willfully, consider all facts.
These may include, but are not limited, to:
(1) Whether or not ARM intentionally copied a product of Eko
that is covered by the Eko 855 patent;
(2) Whether or not ARM reasonably believed it did not
infringe or that the patent was invalid;
(3) Whether or not ARM made a good-faith effort to avoid
infringing the Eko '855 patent, for example, whether ARM
attempted to design around the 855 patent; and
(4) Whether or not ARM tried to cover up its infringement.
Dkt. 235 (emphasis added).
morning that the final jury instructions were to be read to
the jury, Eko objected - for the first time - to the language
of Jury Instruction 40 requiring "the most egregious
behavior" that is "worthy of punishment." The
Court directed the parties to file briefs on the issue by
noon, if they wished to explain their respective positions
before the jury was instructed, and Eko did so. Dkt. 234. The
Court reviewed the relevant authority and took Eko's
concerns into account by amending the last line of the first
paragraph in Jury Instruction 40 to remove the words
"only the most egregious behavior," and provide
"[i]nstead, willful infringement is reserved for
egregious behavior, such as where the infringement is
malicious, deliberate, consciously wrongful, or done in bad
faith." Dkt. 235. The jury was instructed accordingly.
instruction on willfulness, as amended, was improper in light
of the recent Halo decision, in this Court's
view the error would not have been harmless as argued by
defendants. In this case, ARM continued its infringing
conduct for a period long after it conceded that- given the
claims construction order-it was infringing. Indeed, ARM
continues to do so today, and only recently began to develop
a design-around to avoid infringement. ARM's conduct
throughout the three and a half year period in question was
quite intentional, something that Mr. Rivera acknowledged
during the trial. Moreover, after approximately five and a
half hours of deliberating, the jury advised the Court that
they had reached a verdict on all questions except the issue
of willfulness (question two of the special verdict form),
and that they had strong views on both positions regarding
that question and did not believe additional time would
render a unanimous decision. Dkt. 241. It was only after the
Court instructed the jury to go back and re-read the
instruction on willfulness that the impasse was broken. Dkt.
the Court DENIES Eko's motion for a new trial. Dkt. 254.
Eko has failed to identify any authority - and the Court is
aware of none - holding that National Patent Jury Instruction
No. 4.1 is no longer a correct statement of the law,
following the Halo decision. As a result, the
jury's verdict was also supported by substantial evidence
in the record, such as Mr. Rivera's testimony that he
sincerely believed he would ultimately prevail in his ongoing
litigation against Eko and therefore his products would be
found to be noninfringing. If, however, this pattern
instruction is no longer correct because it improperly
conflates the issue of willfulness with the Court's
ultimate decision whether to enhance damages, and places too
high of a burden on a plaintiff seeking to prove willfulness,
then the Court agrees with Eko that the erroneous instruction
would not be harmless.
Eko's Motion for Enhanced Damages
discussed above, the jury's verdict found that ARM's
infringement was not willful. Dkt. 242 at 1. In light of this
verdict finding, the Court will not enhance damages. See
Halo Elecs., Inc. v. Pulse Elecs., Inc.,136 S.Ct. 1923,
1932 (2016) (noting that although district courts enjoy
discretion in deciding whether to award enhanced damages, and
in what amount, "such damages are generally reserved for
egregious cases of culpable behavior."). See also