On March 18, 2003, the United States District Court for the District of New Jersey entered final judgment against Jazz Photo Corp., Jazz Photo Ltd., and Jack Benun, a former Jazz director and consultant, (collectively Jazz) for infringement of Fuji Photo Film Co. Ltd.’s (Fuji’s) patents.
Fuji Photo Film Co. v. Jazz Photo Corp.,
No. 99-2937 (D.N.J. Mar. 18, 2003)
{Final Order).
Specifically, the district court found that Jazz’s importation, sale, and use of over forty million refurbished disposable cameras directly infringed Fuji’s family of U.S. patents directed to disposable cameras, also known as lens fitted film packages (LFFPs).
Fuji Photo Film Co. v. Jazz Photo Corp.,
I.
Fuji and Jazz are no strangers to this court. Their dispute began in 1998, when Fuji commenced a proceeding before the International Trade Commission (ITC) against twenty-six respondents, including Jazz, under Section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337. Through the ITC proceeding, Fuji sought to restrict the respondents’ importation of refurbished LFFPs, alleging infringement of fourteen of its patents directed to LFFPs. 1 LFFPs are simple, relatively inexpensive cameras that Fuji originally intended to be disposable after a single use. See, e.g., U.S. Patent No. 4,884,087 (issued Nov. 28, 1999), col. 6, II. 14-18 (noting that “forming an opening in the film package makes it impossible to reuse the film package. Therefore it will be impossible to refill a new film into the used film package in order to reclaim a film package for reuse.”). In response to public protest of *1371 the camera shell disposals, Fuji began a recycling program in 1991. Fuji subsequently learned that several companies, including Jazz, purchased used LFFP shells from foreign factories. These companies then refurbished the LFFPs by inserting new film through multiple steps. Then they resold the refurbished cameras. Upon learning of these resales, Fuji instituted the ITC proceeding.
The primary issue before the ITC was whether the respondents’ refurbishment of Fuji’s used LFFPs constituted permissible repair or impermissible reconstruction. Although the participating respondents did not disclose their respective refurbishment acts in their entirety, each acknowledged performance of at least eight common steps when refurbishing the Fuji LFFPs.
2
The ITC administrative judge determined that those eight steps constituted impermissible reconstruction.
In the Matter of Certain Lens-Fitted Film Packages,
Inv. No. 337-TA-406, IRD at 86 (Int’l Trade Comm’n. Feb. 24, 1999). The ITC subsequently adopted the administrative judge’s findings.
In the Matter of Certain Lens-Fitted Packages,
Inv. No. 337-TA-406, n. 4 (Int’l Trade Comm. June 28, 1999). Accordingly, the ITC issued a general exclusion order and an order to cease and desist from further infringement of Fuji’s patents.
Fuji,
Before the ITC issued its final dfetermi-nation, Fuji filed shit against Jazz in the United States District Court for the District of New Jersey seeking damages and injunctive relief for direct and indirect infringement of its LFFP patents. Following the ITC’s final determination, however, some of the ITC respondents filed an appeal with this court. The district court stayed its proceedings pending that appeal. In August 2001, this court reversed the ITC’s final determination, finding instead that the^ eight-step refurbishment procedure constituted permissible repair.
Jazz Photo Corp. v. Int’l Trade Comm’n,
This court’s holding in Jazz, however, was not entirely dispositive of the repair/reconstruction issue before the district court. In particular, Jazz acknowledged that its specific refurbishment procedures comprised a possible total of nineteen refurbishment steps, including the eight previously considered in Jazz. Accordingly, the district court lifted its stay and Fuji’s lawsuit proceeded.
A series of stipulations entered into by both parties significantly shape the course of this litigation. First, in order to alleviate discovery burdens, both parties stipulated to the use of the record developed before the ITC (Discovery Stipulation).
Fuji
Of relevance to this appeal, after a five week trial, the jury determined that: 1) Jazz infringed Fuji’s patents by refurbishing 39,889,850 LFFPs; 2) Jazz willfully infringed by selling 1,209,760 newly-made LFFPs; and 3) Jazz owed a reasonable royalty of $0.56 per LFFP to compensate for infringement.
Fuji,
In its analysis, the district court first determined that the nineteen steps were effectively sub-steps of the eight steps that this court previously deemed permissible repair. Id. at 447 (“[T]he procedures found by the jury to have been performed in this case all devolve into opening the cameras, replacing the film and battery, and closing the cameras.”) As such, the district court then evaluated which of the eight Jazz Chinese factories performed these nineteen steps. Although Jazz had presented testimony regarding three Chinese factories, the district court rejected Jazz’s proposed inference that its evidence represented the refurbishment activities at the remaining five Chinese factories. Id. at 448. Upon reviewing the record to adduce the number of refurbished LFFPs attributable to the three Chinese factories, the district court determined that the only evidence of record reflected 10%, or 4,009,-937, of the LFFPs were permissibly repaired.
Recognizing that the repair affirmative defense is based upon the exhaustion doctrine, the district court next turned its analysis to the issue of foreign LFFP sales. Id. at 448-49 (the “finding of repair with respect to approximately 4 million cameras does not end the inquiry, because a refurbished disposable camera infringes unless it was permissibly repaired from an empty camera shell first sold in the United States”). The district court interpreted this court’s Jazz exhaustion precedent in holding that only first sales in the United States would serve as the appropriate basis for the repair affirmative defense. Id. at 449. Based on evidence presented by both parties, the jury determined that roughly 9.5%, or 3,809,442, of Jazz’s refurbished LFFPs derived from United States first sales. Id. at 451. The district court then evaluated the nexus of refurbished LFFPs (1) that were first sold in the United States, and (2) which Jazz permissibly repaired. Recognizing the difficulty in requiring direct proof of the number of LFFPs fitting this description, the district court reasoned that it would be appropriate to infer that 9.5% of the 4,009,937 total potentially permissibly repaired cameras were attributable to United States first sales. Accordingly, the district court determined that Jazz’s evidence supported a finding that 380,944 LFFPs fit these criteria. Id. at 452.
After the trial, Jazz filed a JMOL motion challenging the jury’s findings of willfulness, inducement, and the reasonable royalty rate. Id. at 452-59. The district court denied Jazz’s JMOL motion, finding that substantial evidence supported the jury verdict, but declined to enhance damages for the willful infringement of the newly-made LFFPs. The district court further held Mr. Benun liable for inducing Jazz’s infringement of Fuji’s disposable camera patents. Id. at 457-58. Accordingly, the district court awarded total damages to Fuji in the amount of $29,765,280.60, based on the jury’s determination of a $0.56 reasonable royalty per camera. 3 Final Order, slip op. at 2. More *1373 over, the district court denied. Fuji’s request for permanent injunctive relief. Id., slip op. at 2 n. 1.
On appeal, Jazz challenges the -district court’s finding that it did not provide sufficient evidence that all eight of its Chinese supplier factories performed the nineteen repair steps. Jazz also disputes the district court’s application of the exhaustion doctrine as enunciated in this court’s holding in Jazz. Finally, Jazz disputes the jury’s findings of Mr. Benun’s liability for inducing Jazz’s infringing acts, of willfulness, and of $0.56 as a reasonable royalty. Fuji, in turn, cross appeals the district court’s finding that Jazz sufficiently proved that 10% of its refurbished LFFPs fell within the repair safe harbor, as well as the district court’s refusal to enhance damages and its denial of a permanent injunction.
II.
This court reviews a district court’s conclusions of law without deference and its findings of fact for clear error.
Golden Blount, Inc. v. Robert H. Peterson Co.,
Willful infringement is a question of fact that this court reviews for substantial evidence.
Crystal Semiconductor Corp. v. TriTech Microelectronics Int'l, Inc.,
III.
A. Jazz’s Burden of Persuasion
Not surprisingly, Jazz, and Fuji take opposing views regarding the adequacy of Jazz’s evidence concerning its repair affirmative defense. Jazz contends that its evidence is sufficient to support the inference that all, or 100%, of the LFFPs are repaired. Fuji, in its cross appeal, argues that Jazz’s evidence does not support the district court’s finding that 10% of- the LFFPs are repaired. Aside from its contentions regarding the adequacy of the evidence, Jazz further argues that its pretrial stipulation did not give the judge the final word on its defense.
Jazz bears the burden of preponderant proof on its affirmative defense of repair.
Jazz,
At trial, Jazz relied on two sources of evidence for its affirmative defense. First, Jazz presented a videotape depicting the refurbishment in one of the eight" Chinese factories. Second, Jazz relied' on the testimony of its current Chairman, Mri *1374 Lorenzini. Mr. Lorenzini generally testified that some or all of the nineteen refurbishment steps were performed at all eight factories. Mr. Lorenzini, however, had only visited three of these factories.
In support of the adequacy of its evidence, Jazz points to the testimony of Mr. Lorenzini and the questions on the special jury verdict form. Jazz stresses that the jury question was general in nature as opposed to a factory-by-factory analysis and that Mr. Lorenzini presented his testimony in accordance with that format. As such, Jazz complains that the district court clearly erred in refusing to draw the inference, based on the Lorenzini testimony, that all eight factories used the same refurbishment steps. Fuji responds that Mr. Lorenzini’s testimony could not speak to the process at all eight factories because he lacked personal knowledge of the remaining five.
This court cannot find that the district court clearly erred in refusing to draw an inference about the five factories of which no Jazz representative had personal knowledge. This court recognizes that “[i]t is hornbook law that direct evidence of a fact is not necessary. ‘Circumstantial evidence is not only sufficient, but may also be more certain, satisfying and persuasive than direct evidence.’ ”
Moleculon Research Corp. v. CBS. Inc.,
Indeed, in the earlier Jazz opinion reversing the ITC judgment, this court emphasized the burden of proof in satisfying the affirmative defense:
We cannot exculpate unknown processes from the charge of infringing reconstruction. Thus our reversal of the Commission’s decision does not apply to LFFPs from those remanufacturing facilities for which discovery was refused or where the evidence offered was found incomplete or not credible by the ALJ.
Jazz,
This court notes that the record shows that Mr. Lorenzini admitted that processes at the eight factories differed. For instance, Mr. Lorenzini testified that one of the three plants he visited did not remove the back covers. Moreover, Mr. Lorehzi-ni’s testimony only discussed one of the numerous types of camera shells reloaded for Jazz. Thus, as the district court found, Jazz provided only incomplete evidence. This court detects no clear error in the district court’s assessment of the insufficiency of Jazz’s proof.
Jazz next contends that the district court clearly erred in failing to credit the jury’s affirmative answer to special verdict question number five. In response to this question the jury found that all of the nineteen steps were known for all eight Chinese Factories. Jazz argues the dis *1375 trict court was bound by this finding. Jazz seems to contend this means the jury found all nineteen steps were generally performed at each factory, compelling a finding that Jazz permissibly repaired each refurbished LFFP.
To the contrary, the parties’ stipulation rendered the jury’s determination of repaired LFFPs advisory. Thus, the district court retained the right to make its own determination. In relevant part, the district court interpreted the parties’ stipulation as follows:
All parties have agreed that, pursuant to paragraph 5 of the stipulation, the Court will first render a legal determination as to whether the refurbishment processes employed by Jazz and/or its suppliers constitute repair or reconstruction. Applying this legal analysis, the Court will then determine the factual issue of the number of cameras reconstructed (or, conversely, the number of cameras for which insufficient evidence of repair has been presented). The Court understands that the parties agree that the jury mil render an advisory opinion as to the number of repaired and/or reconstructed cameras, which the Court will consider, but not be bound by, in,rendering its ruling on the issue.
Order (October 17, 2002) (emphasis added). The district court’s interpretation does not reflect the constraints that Jazz would place on the stipulation. Specifically, Jazz seeks to narrow the advisory jury ruling to question six of the special verdict form; while maintaining- the answers to question five as binding. Had Jazz intended to place these constraints on the district court, it was obligated to clarify them upon receipt of the district court’s October 17, 2002 Order setting the process for determining the number of repaired LFFPs. This court detects no erroi in the district court’s determination to honor the parties’ stipulation.
In its cróss-appeal, Fuji contends that the district court clearly erred in finding that 10% of, the refurbished LFFPs were permissibly repaired where Jazz’s evidence was not verifiable, complete or credible. 4 Fuji primarily disputes that Jazz’s evidence, namely the video and Mr. Lorenzini’s' testimony, are not verifiable because Fuji was not permitted discovery in the Chinese factories. Fuji, however, stipulated during trial that it did not seek to compel discovery from the eight Chinese factories. Fuji cannot now complain that Jazz’s evidence is not verifiable in the absence of any effort on its own part to seek verifying discovery. Again this court finds no clear error in the district court’s finding that 10% of Jazz’s LFFPs were permissibly repaired.
In sum, the district court walked an evidentiary tight rope. On one side, the trial court refused to credit Jazz’s evidence as representative of all eight factories. On the othér, it found that evidence credible for the three factories for which Jazz pre
*1376
sented some direct testimony. Further, the district court faced the difficulty of determining the number of LFFPs both first sold in the United States and permissibly repaired in one of the three factories. In the absence of any direct evidence on the number of United States sales, the district court permissibly used circumstantial evidence to calculate the total repaired LFFPs.
Moleculon Research Corp.,
B. Exhaustion Doctrine
Jazz next argues that the district court misconstrued this court’s holding regarding exhaustion in Jazz. In the alternative, even if the district court properly construed this court’s exhaustion holding, Jazz contends that its effect should be purely prospective.
In Jazz, this court held that:
To invoke the protection of the first sale doctrine, the authorized first sale must have occurred under the United States patent .... Our decision applies only to LFFPs for which the United States patent right has been exhausted by first sale in the United States. Imported LFFPs of solely foreign provenance are not immunized from infringement of United States patents by the nature of their refurbishment.
Id.
at 1105 (citing
Boesch v. Graff,
This court does not construe the “solely foreign provenance” language or the Boesch citation to dictate a narrow application of the exhaustion principle. Specifically, this court does not read Boesch or the above language to limit the exhaustion principle to unauthorized sales. Jazz therefore does not escape application of the exhaustion principle because Fuji or its licensees authorized the international first sales of these LFFPs. The paten-tee’s authorization of an international first sale does not affect exhaustion of that patentee’s rights in the United States. Moreover, the “solely foreign provenance” language does not negate the exhaustion doctrine when either the patentee or its licensee sells the patented article abroad.
Read in full context, this court in
Jazz
stated that only LFFPs sold within the United States under a United States patent qualify for the repair defense under the exhaustion doctrine.
Id.
Moreover, Fuji’s foreign sales can never occur under a United States patent because the United States patent system does not provide for extraterritorial effect.
Int’l Rectifier Corp. v. Samsung Elecs. Co.,
With respect to the exhaustion doctrine, Jazz argues that the district court’s application of the exhaustion doctrine should have only prospective effect. Jazz relies on the first of three factors in
Chevron Oil Co. v. Huson,
This court need not' reach the merits of this prospective effect argument because Jazz in effect waived this argument by failing to raise it in a form that requested or required a decision from the district court. Jazz contends, that it preserved this issue for appeal by moving for a stay pending appeal: “It seems unlikely — and certainly unfair — that the Federal Circuit could have intended [the ‘exhaustion by first sale’ issue], which was not even raised by Fuji in the ITC or the Federal Circuit, to result in a holding with devastating retroactive effect.” A few phrases in a stay motion, however, are not sufficient to apprise the district court that it must address another point of law. Indeed, the district court in its extensive opinion did not address the retroactive effect of the
Jazz
exhaustion doctrine. This court observes that the district court provided a well reasoned and thorough analysis on a multitude of important issues in this case. The absence of any discussion of retroactivity strongly suggests that Jazz did not bring this issue to the trial court’s attention in a manner that requested or required analysis. The exhaustive historical review of the repair/reconstruction doctrine is but one example of the district court’s special care to resolve issues presented by the parties. Accordingly, this court declines Jazz’s invitation to consider its retroactive effect argument for the first time on appeal.
Singleton v. Wulff,
C. Inducement
On appeal, Jazz contends that substantial evidence does not support the jury’s'finding that Mr. Benun possessed the requisite intent to induce Jazz’s infringement. Title 35 provides that “[w]hoevér actively induces infringement of a patent shall be liable as an infringer.” 35 U.S.C. § 271(b) (2000). A finding of inducement requires both an underlying instance of direct infringement and a requisite showing of intent.
Insituform Techs., Inc. v. Cat Contracting, Inc.,
This court recently recognized a “lack of clarity” about the appropriate level of intent for inducement.
Insituform,
A patentee may prove intent through circumstantial evidence.
See Water Techs. v. Calco, Ltd.,
In sum, as the district court observed, Fuji provided circumstantial evidence that Mr. Benun exerted control over Jazz as both its CEO and later as its consultant.
Fuji,
D. Reasonable Royalty Rate
Jazz argues that the district court erred in denying its JMOL motion seeking to set aside the jury’s assessed reasonable royalty of $0.56 as “grossly excessive or monstrous, clearly not supported by evidence, or based only on speculation or guesswork.”
Catalina Lighting, Inc. v. Lamps Plus, Inc.,
The jury had before it a wide range of reasonable royalty rates propounded by each party’s damages expert. At the lower boundary, Jazz’s expert opined that rates of $0,075 and $0.11 were appropriate for its refurbished and newly-made LFFPs, respectively. In stark contrast, Fuji’s expert estimated that in a hypothetical negotiation between the parties they would have converged on a royalty rate of $1.00.
This court has previously recognized that the jury is not bound to accept a rate proffered by one party’s expert but rather may choose an intermediate royalty rate.
Unisplay, S.A. v. Am. Elec. Sign Co., Inc.,
Several points in the record support the jury’s royalty determination. For instance, Fuji’s patented invention exhibited enormous commercial success. One expert, Mr. Carter, set Jazz’s incremental profit at $1.09 and Fuji’s lost profits at $2.33 per camera. Thus, the jury’s royalty assessment does not show excessiveness or speculation. This court observes that a $0.56 royalty leaves a $0.53 profit margin per LFFP under the figures in the record. This court therefore affirms the jury’s reasonable royalty rate.
E. Willfulness
Jazz next argues that the district court erroneously denied its JMOL motion seeking to overrule the jury’s finding that the sale of 1,209,760 newly-made LFFPs *1379 constituted willful infringement. Jazz contends that no evidence shows the requisite culpable intent. At most, Jazz explains, the evidence demonstrates negligence. Fuji counters that Jazz had knowledge of the Fuji patents as early as 1995.
The willfulness inquiry requires “consideration of the totality of the circumstances.”
Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp.,
As the district court aptly observed, the jury heard Mr. Benun’s self-serving testimony and . weighed its credibility.
Fuji,
F. Refusal to Enhance Damages .
Fuji, in its cross appeal, asks this-court to find that the district court abused its discretion in refusing to enhance damages for the refurbished LFFPs' and accordingly seeks a remand. Fuji does not, however, appeal the district court’s refusal to'enhance damages for the newly-made LFFP sales that the jury found to constitute willful infringement. Jazz responds that the distribt court did not' abuse its discretion in refusing to enhance damages' for the refurbished LFFPS, particularly where the jury found that the refurbished LFFP sales did not constitute .willful infringement.
More specifically, ■ Fuji contends that Jazz’s failure to investigate its refurbished LFFP sales after the ITC issued its initial determination supports a finding of “bad faith infringement” that is a “type of willful infringement.”
See Jurgens v. CBK, Ltd.,
Fuji has narrowly tailored its enhanced damages cross-appeal to contest damages accruing from Jazz’s infringing sales between 1999 and 2001. As Fuji itself points out, the district court did not address the refurbished LFFP sales in its enhanced damages analysis, most- likely because the jury did not find these sales willful. Rather, the district court considered the newly-made LFFP sales that the jury deemed willful infringement. While . Fuji complains that the district court failed in its analysis, it does not point to any support in the record where it either requested the *1380 district court to consider the ITC determination in the enhanced damages inquiry or, in the alternative, to reconsider the jury finding that the refurbished LFFP sales were not willful. Fuji cannot expect the district court to consider sua sponte all factors in its favor absent Fuji’s urging to do so. The district court did not abuse its discretion in its refusal to enhance damages.
On the whole, the nature of Fuji’s enhanced damages cross-appeal strikes this court as a new argument that was not raised with any specificity below. Had Fuji put the trial court on notice that it sought enhanced damages for the refurbished LFFPs under its bad faith theory, the district court would have undoubtedly addressed this argument. That there is no discussion whatsoever is conspicuous given the careful and thorough analysis of the district court’s opinion. This court therefore declines Fuji’s request to remand so that it can refine the arguments it should previously have made.
Sage Prods., Inc. v. Devon Indus., Inc.,
G. Denial of a Permanent Injunction
The district court denied Fuji’s request for permanent injunctive relief. Fuji Photo Film Co. v. Jazz Photo Corp., No. 99-2937, slip op. at 2 n. 1 (D.N.J. Mar. 18, 2003). The district court determined that Fuji’s proposed injunction lacked specificity and reasonable detail as required by Fed.R.Civ.P. 65(d). Id. Moreover, the district court held that even if Fuji’s proposed injunctive language were more narrowly tailored it would still deny relief on three grounds: 1) the parties’ discovery stipulation precluded injunctive relief for infringing activity after August 21, 2001; 2) the issues of proof would not necessarily adhere in a damages analysis for infringement after August 21, 2001; and 3) the ITC’s injunctive relief, although not coextensive with that of the district court, subsumed the relief that Fuji sought from the district court. Id.
Generally “an injunction will issue when infringement has been adjudged, absent a sound reason for denying it.”
Richardson v. Suzuki Motor Co.,
CONCLUSION
The district court did not clearly err in weighing Jazz’s evidence to determine its liability for direct infringement and correctly applied this court’s Jazz exhaustion precedent. Substantial evidence supports the jury’s finding of Mr. Benun’s inducement, its reasonable royalty determination, and its willfulness finding for the newly-made LFFPs. The district court did not abuse its discretion in refusing to enhance damages and in denying Fuji a permanent injunction. Accordingly, this court affirms.
COSTS
Each party shall bear its own costs.
AFFIRMED.
Notes
. The asserted patents are: 1.) U.S. Patent No. 4,833,495; 2.) U.S. Patent No. 4,855,774; 3.) U.S. Patent No. 4,884,087; 4.) U.S. Patent No. 4,954,857; 5.) U.S. Patent No. 4,972,649; 6.) U.S. Patent No. 5,235,364; 7.) U.S. Patent No. 5,361,111; 8.) U.S. Patent No. 5,381,200; 9.) U.S. Patent No. 5,408,288; 10.) U.S. Patent No. 5,436,685; 11.) U.S. Patent No. Re 34,168; 12.) Design Patent No. D 345,750; 13.) Design Patent No. D 356,101; 14.) Design Patent No. D 372,722.
. The eight refurbishment steps include: 1) removing the cardboard cover; 2) cutting open the cardboard case; 3) inserting new film and a new film receiving container; 4) replacing the winding wheel; 5) replacing the flash in relevant LFFPs; 6) resetting the counter; 7) resealing the outer case; and 8) adding a new cardboard cover.
. Of this total damage award, the district court held Mr. Benun jointly and severally *1373 liable with the Jazz entities for $28,438,361.84 because the jury found him liable for inducing infringement of 39,103,664 of the total 40,928,185 imported cameras.
. Notably, Fuji does not dispute the district court's finding that the nineteen steps constitute permissible repair. Although Fuji attempts to raise a specter of this repair/reconstruction argument in a footnote in its opposition brief and more fully in its reply brief, this court will not address arguments not properly raised in an Appellee’s opposition brief, which also served as an opening brief for its cross-appealed issues.
Cf. Graphic Controls Corp. v. Utah Med. Prods., Inc.,