Exmark Manufacturing Co. v. Briggs & Stratton Power Products Group, LLC
879 F.3d 1332
Fed. Cir.2018Background
- Exmark sued Briggs (and Schiller) for infringement of claim 1 of U.S. Patent No. 5,987,863, which claims a multiblade lawn mower having a "curved-straight-curved" flow control baffle and a side wall discharge opening.
- Claim 1 survived three PTO reexaminations (one requested by Exmark, two requested by defendants) confirming patentability over the same prior art at issue in district court.
- The district court granted summary judgment that claim 1 was not invalid (relying solely on the reexamination outcomes), denied summary judgment of indefiniteness for the term "elongated and substantially straight," and granted summary judgment of infringement for Briggs’ original mowers.
- A jury found willful infringement by Briggs (for original mowers) and awarded $24,280,330 in damages; the district court doubled that award as enhanced damages and denied Briggs a new trial and its laches defense.
- On appeal, the Federal Circuit vacated the district court’s summary judgment of no invalidity (holding reexamination alone is not dispositive), vacated the damages award and enhanced damages (finding Exmark’s damages expert failed to tie a 5% royalty rate to the facts), vacated the willfulness finding (directing reconsideration in light of Halo), affirmed denial of indefiniteness, and affirmed rejection of laches under SCA Hygiene.
Issues
| Issue | Exmark's Argument | Briggs' Argument | Held |
|---|---|---|---|
| Whether surviving PTO reexamination alone precludes summary judgment of invalidity | Surviving multiple reexaminations supports substantial deference and justifies summary judgment | Reexamination findings are not dispositive; district court must make an independent factual determination | Reexamination confirmation alone cannot be the sole basis for summary judgment of no invalidity; vacated and remanded for independent review |
| Whether claim 1 is indefinite for "elongated and substantially straight" | Claim language, specification figures, and functional guidance provide reasonable certainty | Term lacks objective boundaries; expert could not quantify straightness/length | Affirmed: term is not indefinite when read in light of the specification and prosecution history |
| Admissibility and sufficiency of Exmark’s damages evidence (5% royalty on whole mower sales) | Using whole-product sales as royalty base is acceptable and Georgia-Pacific analysis supports a rate | Expert failed to tie the 5% rate to the Georgia-Pacific factors or to apportion the patented feature’s value | Damages verdict vacated: expert opinion inadmissible for failing to tie the 5% rate to case facts; new trial on damages required |
| Exclusion of prior-art evidence and willfulness trial evidence post-Halo | District court reasonably excluded some prior-art evidence and excluded validity evidence based on Seagate analysis | Excluding prior-art/validity evidence was error; Halo requires jury to determine willfulness and state of mind; prior-art timing matters | Vacated willfulness finding and enhanced damages; district court must reconsider prior-art evidence relevance to state of mind and whether a new willfulness trial is required |
Key Cases Cited
- Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348 (Fed. Cir. 2007) (PTO examiner findings are evidence but not binding on courts)
- Fromson v. Advance Offset Plate, Inc., 755 F.2d 1549 (Fed. Cir. 1985) (examiner decisions do not bind district courts)
- Interconnect Planning Corp. v. Feil, 774 F.2d 1132 (Fed. Cir. 1985) (district court must reach independent conclusion despite PTO decisions)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (U.S. 2014) (definiteness requires claims inform skilled artisan with reasonable certainty)
- Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011) (reasonable-royalty expert testimony must tie theory to case facts)
- Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201 (Fed. Cir. 2014) (apportionment required; can be done via royalty base, rate, or both)
- Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (hypothetical negotiation realism and whole-product royalty bases can be appropriate)
- ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010) (damages must be tied to the patented invention’s market footprint)
- Halo Elecs., Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923 (U.S. 2016) (willful infringement and enhanced damages focus on subjective willfulness; jury determination required)
- SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (U.S. 2017) (laches cannot bar damages within 35 U.S.C. § 286 six-year period)