Medisim Ltd. v. Bestmed, LLC
758 F.3d 1352
| Fed. Cir. | 2014Background
- Medisim owns U.S. Patent No. 7,597,668, claiming a non-invasive thermometric device that computes a deep-tissue temperature from skin-surface sensor readings and corrects to display core body temperature.
- Medisim sold the FHT-1 thermometer more than one year before filing the ’668 patent application; that product uses a heat-flux algorithm disclosed in Medisim’s earlier ’397 patent and therefore qualifies as prior art under pre-AIA §102(b).
- BestMed marketed Medisim’s thermometers under an earlier distribution agreement (IDA) and later sold competing products after a 2008 separation agreement (PSA) that released past claims and permitted competing sales after May 1, 2009.
- At trial a jury found the ’668 patent not invalid and infringed and awarded Medisim patent damages and unjust enrichment damages.
- After the verdict the district court granted BestMed’s renewed JMOL (Rule 50(b)): it found the asserted claims anticipated by the FHT-1 and also granted JMOL for BestMed on Medisim’s unjust enrichment claim; it conditionally granted BestMed a new trial on anticipation.
- On appeal the Federal Circuit vacated the district court’s JMOL on anticipation as forfeited by BestMed’s failure to make a proper Rule 50(a) motion, affirmed the JMOL on unjust enrichment, and affirmed the conditional new trial; the case was remanded.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether BestMed forfeited right to move for JMOL on anticipation under Rule 50(b) | Medisim: BestMed failed to make a proper Rule 50(a) JMOL on anticipation, so post-verdict Rule 50(b) motion is barred | BestMed: Its on-the-record opposition to Medisim’s Rule 50(a) motion preserved anticipation grounds | Held: Forfeiture — BestMed did not properly move under Rule 50(a); vacate district court’s JMOL on anticipation |
| Whether BestMed forfeited right to move for JMOL on unjust enrichment under Rule 50(b) | Medisim: BestMed’s Rule 50(a) motion was not sufficiently on the same grounds as its Rule 50(b) motion | BestMed: It expressly moved for JMOL on unjust enrichment at close of Medisim’s case-in-chief | Held: No forfeiture — BestMed adequately moved under Rule 50(a) on unjust enrichment |
| Whether JMOL on unjust enrichment was appropriate on the merits | Medisim: Jury verdict awarding disgorgement was supported by evidence (including alleged misuse of water-bath test procedure) | BestMed: Medisim failed to show incremental benefit or proprietary/confidential nature of the water-bath testing; contractual releases also bar some periods | Held: Affirmed — no legally sufficient evidence to require restitution for unjust enrichment after contracts expired |
| Whether conditional new trial on anticipation was properly granted | Medisim: District court failed to state grounds for conditional new trial as required by Rule 50(c)(1) | BestMed: District court’s opinion separately analyzed anticipation and provided ample reasoning | Held: Affirmed — district court’s analysis on anticipation sufficed; conditional new trial not an abuse of discretion |
Key Cases Cited
- Unitherm Food Sys., Inc. v. Swift-Eckrich, Inc., 546 U.S. 394 (procedural requirement to make appropriate postverdict motion in district court)
- Exxon Shipping Co. v. Baker, 554 U.S. 471 (Rule 50(b) renewal must be grounded in a prior Rule 50(a) motion)
- Duro-Last, Inc. v. Custom Seal, Inc., 321 F.3d 1089 (Fed. Cir.) (post-trial JMOL limited to grounds raised pre-verdict)
- i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir.) (failure to present pre-verdict JMOL on specific invalidity grounds waives post-trial challenge)
- Kaye v. Grossman, 202 F.3d 611 (2d Cir.) (elements of unjust enrichment)
- Townsend v. Benjamin Enters., Inc., 679 F.3d 41 (2d Cir.) (standard for new trial review)