A party must file a pre-verdict JMOL motion on all theories that it wishes to challenge with a post-verdict JMOL.

I4I Limited Partnership et al. v. Microsoft Corp., 2009-1504 (Fed. Cir. Dec. 22, 2009)

The patentee asserted a patent directed to editing methods used in word processing programs. The alleged infringer Microsoft used such methods in its Word software. A jury found the patent valid and willfully infringed, and awarded $200 million in damages to the patentee. The district court awarded $40 million in additional damages, and granted the patentee’s motion for a permanent injunction. The alleged infringer appealed the jury verdict and injunction on multiple grounds, and the Federal Circuit affirmed.

On claim construction, the alleged infringer argued that the asserted method claims required additional limitations that were not used in the Word software. The Federal Circuit affirmed the district court’s construction, holding that nothing in the claims, patent specification, or prosecution history amounted to a “clear and unmistakable” disavowal of claim scope to support requiring the additional limitations in the claims.

As to the validity of the patent, the Federal Circuit held that the alleged infringer “waived its right to challenge the factual findings underlying the jury’s implicit non-obviousness verdict because it did not file a pre-verdict JMOL on obviousness.” The court relied on its previous opinion that “a party must file a pre-verdict JMOL motion on all theories, and with respect to all prior art references, that it wishes to challenge with a post-verdict JMOL.” As to anticipation, the patentee presented inventor testimony at trial that the prior art software did not practice the methods of the asserted patent. The alleged infringer argued that uncorroborated inventor testimony was insufficient to rebut its prima facie showing of anticipation. The Federal Circuit disagreed and held that “while we require corroboration of ‘any witness whose testimony alone is asserted to invalidate a patent,’...here the inventor testimony was offered by [the patentee] in response to [the alleged infringer’s] attack on the validity of the ‘449 patent.” The court did not require corroboration for inventor testimony asserted to defend against a finding of invalidity by pointing to deficiencies in the prior art.

Regarding the damages award, the Federal Circuit held as an initial matter that the patentee’s damages expert’s use of a hypothetical negotiation and the Georgia-Pacific factors for estimating a reasonable royalty, was appropriate. While the patentee’s damages expert could have used other data in his calculations, “the existence of other facts, however, does not mean that the facts used failed to meet the minimum standards of relevance and reliability.” With regard to the actual damages award of $200 million, the alleged infringer urged the court to follow its recent decision in Lucent and deem the award an unreasonable royalty. The Federal Circuit refused to do so because the alleged infringer in this case failed to file a pre-verdict JMOL challenging the sufficiency of the damages evidence. Because of this failure, the Federal Circuit was “constrained to review the verdict under the much narrower standard applied to denials of new trial motions” which required that a damages award and remand for a new trial was appropriate “only upon a clear showing of excessiveness.” The Federal Circuit found that the alleged infringer did not meet this standard.

Finally, the Federal Circuit found the district court did not abuse its discretion by granting the permanent injunction that did not affect copies of Microsoft Word sold or licensed before the injunction goes into effect. “By excluding users who purchased or licensed infringing Word products before the injunction’s effective date, the injunction greatly minimizes adverse effects on the public.”

A copy of the opinion can be found here.