Digest of Medisim Ltd. v. BestMed, LLC, No. 2013-1451 (Fed. Cir. July 14, 2014) (precedential). On appeal from S.D.N.Y. Before Prost, Taranto, and Chen.

Procedural Posture: Patent holder appealed a post-verdict JMOL for anticipation and lack of unjust enrichment. CAFC affirmed the lack of unjust enrichment but vacated and remanded the JMOL on anticipation.

  • Waiver: After a jury found a lack of anticipation in favor of Medisim, the district court granted BestMed’s Rule 50(b) motion for judgment as a matter of law (“JMOL”) on anticipation and lack of unjust enrichment. Despite affirming the holding on unjust enrichment, CAFC found that the district court erred in granting the JMOL on anticipation because BestMed failed to make a similar pre-verdict Rule 50(a) motion. BestMed had failed to explicitly make the motion for JMOL on anticipation at the close of evidence, stating only that “the jury can readily find that the FHT-1 product, Medisim’s own product, is anticipatory. There’s clear and convincing evidence, we submit, on that issue. . . . But, again, it’s definitely something for the jury.”
  • New Trial: The district court set aside the jury verdict for a new trial conditioned on an appellate court finding that BestMed failed to preserve its right to bring a post-trial motion for JMOL. Despite a lack of reasoning on the record behind the Rule 59 new trial motion, CAFC did not find an abuse of discretion. CAFC looked to the district court’s detailed explanation as to why BestMed had proven anticipation as grounds for conditionally granting a new trial.
  • Unjust Enrichment: CAFC affirmed the district court’s JMOL that there was no unjust enrichment. “To the extent that BestMed’s sales of the accused products occurred during the operation of the [distribution agreement] and the [purchase and sales agreement], any claim for unjust enrichment is waived by those contracts.” Regarding unjust enrichment after the expiration of those agreements, the court found that Medisim failed to present any evidence to support a finding of incremental benefit to Medisim over that compensable by patent laws.

Ian Moore