749 F. Supp. 2d 542
E.D. Ky.2010Background
- Lexmark sued Static Control for direct patent infringement and inducement related to its Prebate single-use cartridge program.
- The jury previously found no direct infringement by most Static Control customers and no inducement for those customers, with limited exceptions.
- The court later held Lexmark’s Prebate exhaustion theory superseded by Quanta; for purposes of this motion the court assumed Prebate validity for trial.
- Lexmark moved for a new trial arguing weight of the evidence, trial prejudice from rulings, and erroneous jury instructions.
- The court bifurcated the trial into liability/inducement in Phase I and damages in Phase II, denying Lexmark’s challenge to the trial organization.
- The court denied Lexmark’s request to exclude certain evidence (ACRA, FTC letter) and to separate equitable defenses from patent claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Was the Part I verdict against the weight of the evidence? | Lexmark contends the jury improperly weighed the evidence against Lexmark on direct infringement and inducement. | Static Control argues the verdict was reasonable given the evidence and witness credibility. | No; verdict not against the weight of the evidence. |
| Did bifurcating the trial prejudicially affect Lexmark? | Lexmark claims the organization phased misuses with infringement and could cause prejudice. | Court had broad discretion; bifurcation avoided prejudice and promoted efficiency. | No reversible error; trial organization denied. |
| Was trying Static Control's equitable defenses to an advisory jury reversible error? | Lexmark asserts advisory jury on equitable defenses biased the verdict. | Advisory jury was discretionary and did not prejudice Lexmark. | No reversible error; advisory proceedings upheld. |
| Were ACRA and FTC materials improperly admitted or used? | Lexmark sought to limit ACRA/FTC materials; argued prejudicial or irrelevant. | ACRA was admissible for notice but limited in scope; FTC letter excluded as substantive evidence but allowed for impeachment. | No reversible error; evidence properly limited. |
| Was the patent-infringement inducement jury instruction erroneous or prejudicial? | Lexmark claims the instruction improperly described non-infringing uses and good-faith beliefs. | Non-infringing uses and good faith beliefs were relevant to inducement and specific intent. | Not erroneous or prejudicial; instruction upheld. |
Key Cases Cited
- Holmes v. City of Massillon, Ohio, 78 F.3d 1041 (6th Cir. 1996) (new-trial standard when verdict weight questioned; not to substitute judge for jury lightly)
- Duncan v. Duncan, 377 F.2d 49 (6th Cir. 1967) (jury verdicts favored; caution against substituting judge’s view)
- In re Bendectin Litig., 857 F.2d 290 (6th Cir. 1988) (trial organization and prejudice considerations in new-trial analysis)
- Gafford v. General Electric Co., 997 F.2d 150 (6th Cir. 1993) (bifurcation and trial management; fairness as paramount)
- Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683 (Fed. Cir. 2008) (opinion-of-counsel evidence and its limits to inference of intent)
- DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006) (specific intent required for inducement; not mere knowledge of acts)