Metso Minerals, Inc. v. Powerscreen International Distribution Ltd.
2011 U.S. Dist. LEXIS 142229
E.D.N.Y2011Background
- Patent '618 covers a mobile aggregate processing plant with lateral conveyors that fold for transport; invention’s key novelty is the folding mechanism that makes transport easier.
- Plaintiff Metso asserted infringement against Powerscreen/Terex products; jury found willful infringement on several claims and damages of $15.8 million.
- Court previously construed “chassis” as the entire assembly under the plant support frame, including wheels/tracks; jury instructed consistent with that construction.
- Defendants argued errors in jury instructions on “chassis,” “wheel mounted chassis,” HAM, and noninfringement by equivalents; trial record included mixed verdicts, with some literal and some equivalent infringements.
- Motions before the court: renewed JMOL, new trial, new trial based on newly discovered evidence, and Terex’s JMOL/new trial; court denied all four motions.
- Court also addressed claims on obviousness, willfulness, and admissibility of royalty evidence; weighing of credibility and weight of evidence reserved for jury, with standard clarified for post-trial motions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Claim-term construction errors | Metso argues terms were properly construed and instructed. | Powerscreen argues chasses and HAM definitions were narrower/incorrect. | No reversible error; instructions consistent with prior construction. |
| Wheel-mounted chassis and track-mounted devices | Chassis includes tracks; track-mounted can be wheel-mounted under construction. | Track-mounted cannot be wheel-mounted. | Instruction proper; substantial evidence supports infringement findings. |
| Obviousness instructions and prior art standards | Obviousness supported by clear/convincing evidence with pre-KSR and post-KSR standards. | Obviousness should consider art not examined by PTO; preponderance standard misapplied. | Jury properly considered obviousness; no reversible error. |
| Newly discovered evidence and Rule 60 grounds | New evidence could impeach Rafferty; credibility concerns unresolved. | New evidence warrants new trial. | No new trial; evidence insufficient to alter outcome. |
| Willful infringement standard and advice of counsel | Willfulness shown by objective recklessness; advice-of-counsel factors permissible. | Defendants lacked objective recklessness and/or proper consideration of counsel. | Willfulness upheld; no JMOL or new trial warranted. |
Key Cases Cited
- Exergen Corp. v. Wal‑Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009) ( JMOL standard; light most favorable view to nonmovant)
- This Is Me, Inc. v. Elizabeth Taylor, 157 F.3d 139 (2d Cir. 1998) (post-trial JMOL standards; relation to Rule 50/56)
- Piesco v. Koch, 12 F.3d 332 (2d Cir. 1993) (standard for granting JMOL; high threshold)
- Seagate Technology, LLC v. Eng., 497 F.3d 1360 (Fed. Cir. 2007) (objective recklessness standard for willful infringement)
- Microsoft Corp. v. i4i Limited Partnership, 131 S. Ct. 2238 (2011) (clear/convincing standard not lowered for unseen PTO art)
- Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970) (15-factor framework for damages/royalty analyses)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (U.S. 2007) (teaching that combining known elements can be obvious)
- This Is Me, Inc. v. Elizabeth Taylor, 157 F.3d 139 (2d Cir. 1998) (see above)