Federal court vacates jury’s ‘prior art’ findings

A federal judge vacated a jury’s ruling that a pair of patents were invalid, finding that a reasonable jury “could not find by clear and convincing evidence” that the patents were invalid because they were anticipated by prior art.

“The Court does not take lightly the decision to grant a motion upsetting the jury’s verdict,” Chief U.S. District Judge Mark S. Davis wrote. “But in this instance, in the context of a patent infringement action involving difficult factual and legal concepts foreign to many lay jurors, it is apparent to the Court that no reasonable jury presented with expert testimony reasonably predicated on the language and figures of the patents at issue could conclude that ‘clear and convincing evidence’ supports a finding of anticipation.”

Davis authored the court’s opinion in Biedermann Technologies GmbH & Co. KG v. K2M Inc. (VLW 023-3-355) for the U.S. District Court of the Eastern District of Virginia’s Norfolk division.

Background

After a two-week trial, a jury returned a verdict finding two products sold by the defendants, K2M Inc. and K2M Group Holdings Inc., or K2M, infringed on patents owned by the plaintiffs, Biedermann Technologies GmbH & Co. KG, or Biedermann. The jury awarded Biedermann more than $17 million in damages.

Separately, the jury further determined that K2M proved “by clear and convincing evidence” that five asserted patent claims across four Biedermann patents “were invalid in light of the prior art presented at trial.”

At the parties’ joint request, the court vacated the judgment and established a briefing schedule to resolve a dispute over the ongoing royalty associated with a K2M product.

When that dispute was resolved, cross-motions for judgment as a matter of law, or JMOL, and motions for a new trial were filed by both parties.

Biedermann’s motion

Biedermann’s motion challenged the jury’s invalidity findings on four claims across three patents, referred to in the opinion as “the ‘399, ‘121, and ‘784 patents.” For all three patents, Biedermann’s JMOL motion argued that a reasonable jury wouldn’t have a “legally sufficient evidentiary basis” to conclude that the defendant demonstrated the patent is anticipated by prior art references.

The motion additionally asked the court to find that a K2M product infringes on the ‘121 patent and requested a new trial.

Davis denied the motion as to the ‘399 patent, stating that “the Court looks no further than the Kim prior art reference to find that Biedermann fails to carry its post-trial burden on this issue.”

The ‘121 patent, however, was a different story.

“Notwithstanding the deference owed to the jury’s verdict, Biedermann’s position on this issue is well-founded,” Davis wrote, adding that that Biedermann “effectively demonstrates the absence of a legally sufficient basis” to find that the Jackson prior art reference “discloses all elements of the ‘121 patent claim at issue.”

The judge noted that a careful review of K2M’s expert’s testimony strengthened Biedermann’s motion, as the expert testimony contained a “conflation” that gave an “inaccurate impression.”

“Conflicting expert opinions are, in almost all instances, a matter for the jury to resolve,” Davis noted. “Here, however, in light of Jackson’s plain language, this dispute does not turn on a credibility finding between two viable expert opinions. Rather, one expert’s testimony directly tracks the language of Jackson, while the other’s testimony is based on inaccurate citations and is fatally undermined by the plain language of Jackson’s specification and claims.”

As for the ‘784 patent, Davis “largely agree[d] with Biedermann’s post-trial arguments on anticipation” and similarly granted his motion.

“[I]n the light most favorable to K2M, the Court still concludes that a reasonable jury could not find by clear and convincing evidence that every element of the relevant ‘784 patent claims is disclosed by Landry,” Davis wrote, referencing the Landry prior art reference.

Davis also noted that concerns existed with the Landry diagrams, which “may not be to scale” and contain “factual concerns” due to the scale disclaimer.

The court denied Biedermann’s alternative request for a new trial on invalidity as to the ‘121 and ‘784 patents in light of the findings in favor of Biedermann and denied a request for a new trial on the ‘399 patent because Biedermann failed to show that the jury’s finding of anticipation was not supported by substantial evidence.

Biedermann’s final motion — that it is entitled to JMOL or a new trial as to infringement of the ‘121 patent — was rejected.

“Biedermann’s contrary evidence and contrary theory were sufficient to create a genuine factual dispute, but this dispute falls squarely within the province of the jury,” Davis wrote. “Biedermann’s post-trial briefs failed to demonstrate that the jury’s verdict was against the greater weight of the evidence. To the contrary, the jury faithfully upheld its duty to assess conflicting testimony, make credibility determinations, and determine whether Biedermann carried its burden to prove infringement.”

The judge added that the record “fully supports the reasonableness of the jury’s verdict as to the ‘121 patent based on properly admitted evidence.”

K2M’s motion

K2M filed a motion seeking JMOL, or alternatively a new trial, on the jury’s finding of infringement of a patent, referred to in the opinion as the ‘600 patent.

K2M claimed the awarded damages weren’t supported by enough evidence and said the court failed to issue a jury instruction that created grounds for a new trial.

Davis denied all of K2M’s claims for relief.

“The jury properly considered (and rejected) K2M’s effort to demonstrate that the required ‘upward movement’ of the pressure member from first position to second position is so minimal in Everest that it should be interpreted as no movement at all,” he wrote.

On the issue of damages, Davis said the jury heard plenty of evidence.

“K2M fails to demonstrate that the jury’s awarded royalty, which was 50% less than the royalty sought by Biedermann, was outside the range of reasonableness supported by the evidence,” Davis wrote, adding that K2M also failed to carry its burden to show that the jury relied “only on speculation and guesswork” to determine the suitable award.

Davis denied K2M’s post-trial motion in its entirety, while denying all of Biedermann’s post-trial motion except for Biedermann’s request for JMOL regarding the invalidity findings as to the ‘121 and ‘784 patents.

Per court records, a notice of appeal by K2M was filed a earlier this month to the U.S. Court of Appeals for the Federal Circuit.