United States District Court, D. Colorado
YAO-HUNG HUANG, and BIG TIME AUTO PARTS MANUFACTURING, INC., a Taiwan corporation, Plaintiffs,
MARKLYN GROUP, INC., d/b/a ALPENA, a Canadian corporation, Defendant.
ORDER DENYING PLAINTIFF'S RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW OR MOTION FOR A NEW TRIAL
ROBERT E. BLACKBURN, District Judge.
The matter before me is Plaintiff's Renewed Motion for Judgment as a Matter of Law or Motion for a New Trial [#128],  filed September 15, 2014. Following a six-day trial, a jury returned a verdict in favor of defendants on plaintiffs' claim of infringement as well as on defendant's affirmative defense of invalidity by anticipation. By this motion, plaintiffs renew their post-trial motion for judgment as a matter of law as to the defense of invalidity due to anticipation and move for a new trial on the basis of an allegedly improper jury instruction on plaintiffs' claim of infringement. I deny the motion.
I. MOTION FOR NEW TRIAL
The standards governing a motion for new trial are rigorous, and a new trial is only warranted where, "having given full respect to the jury's findings and viewing the entire evidence, the trial judge is left with the definite and firm conviction that a mistake has been committed." Hughes v. Regents of University of Colorado, 967 F.Supp. 431, 437 (D. Colo. 1996) (internal citation omitted). "Generally, courts do not grant new trials unless it is reasonably clear that prejudicial error has crept into the record or substantial justice has not been done." Id . See also McHargue v. Stokes Div. of Pennwalt Corp., 912 F.2d 394, 396 (10th Cir. 1990) ("In ruling on a motion for a new trial, the trial judge has broad discretion.... He may do so when he believes the verdict to be against the weight of the evidence or when prejudicial error has entered the record."). When the motion is premised on allegedly improper jury instructions, the instructions must be viewed in their entirety, not as single instructions or parts of instructions. Hampton v. Dillard Dept. Stores, Inc., 247 F.3d 1091, 1112 (10th Cir. 2001), cert. denied, 122 S.Ct. 1071 (2002).
Plaintiff objects that Jury Instruction No. 11 was erroneous insofar as it included the following final paragraph:
Any purely functional feature should not be considered in determining infringement. You may consider only the ornamental feature of the claimed design.
Plaintiffs maintain that the issues of functionality and ornamentality of the claimed design were matters of patent scope and thus should have been determined by the court as part of claim construction and then any purely functional features expressly described for the jury within the context of the instruction.
There are at least two problems with this argument. First, it is not at all clear to this court that these issues must be determined exclusively as a matter of claim construction. As another district court has noted in parsing the Federal Circuit's opinion in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008), cert. denied, 129 S.Ct. 1917 (2009):
It is not entirely apparent... whether the Federal Circuit advocates resolving prosecution history and functionality issues through formal Markman claim construction, jury instructions, or some other means. On the one hand, the court refers to "guid[ing] the finder of fact" in a manner "[a]part from attempting to provide a verbal description of the design, " which suggests jury instructions may be the best avenue. On the other hand, the court's parenthetical quotation from OddzOn [ Products, Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997)] suggests that these issues, or at least the question of functionality, may properly be addressed during claim construction. One thing that does seem clear from Egyptian Goddess is that district courts have considerable discretion for resolving this type of question.
Depaoli v. Daisy Mfg. Co., Inc., 2009 WL 2145721 at *3 (D. Mass. July 14, 2009) (internal citation omitted).
Second, and even if claim construction were the proper mechanism for the resolution of these issues, plaintiffs did not raise this issue at a time or in a manner which gave the court adequate time to resolve the matter prior to trial. In proffering their original proposed claim constructions, both parties indicated elements that they believed comprised the ornamental aspects of the design. Noting that discovery had not yet commenced at that juncture, I declined to construe the claims at that level of specificity, finding that it "would be unwise... on the current state of the record" to attempt a more detailed construction. ( See Order Construing Disputed Patent Claims at 5 [#42], filed October 11, 2012.) Nevertheless, I expressly noted that further claim construction could be undertaken if necessary at some later point in the proceedings. ( See id. at 5-6.)
However, even after discovery was completed, neither party moved for further construction. In particular, plaintiffs did not suggest that further construction was required to distill the functional from the ornamental aspects of the patented design until they filed their jury instruction brief, which was submitted barely three weeks before trial was set to commence. ( See Plaintiffs' Jury Instruction Brief at 11 [#98], filed July 11, 2014.) Even then, plaintiffs neither moved to have such further construction undertaken nor otherwise proffered any concrete, practical proposal that would have allowed the court to make such a determination, either in the limited time remaining prior to trial or even in the exceedingly brief period of time between the close of the evidence and the submission of the case to the jury.
Given these facts, it appears to this court that plaintiffs have forfeited this argument. "[F]orfeiture is the failure to make the timely assertion of a right[.]" United States v. Olano, 507 U.S. 725, 733, 113 S.Ct. 1770, 1777, 123 L.Ed.2d 508 (1993). See also United States v. Rezendes, - Fed. Appx -, 2015 WL 1475306 at *3 (10th Cir. Apr. 2, 2015). Unlike waiver, which "is the intentional relinquishment or abandonment of a known right, " Olano, 114 S.Ct. at 1777, "forfeiture is attributable to neglect, " United States v. Carrasco-Salazar, 494 F.3d 1270, 1272 (10th Cir. 2007). As such, a forfeited error is reviewable for plain error. United States v. Morrison, 771 F.3d 687, 695 (10th Cir. 2014). To meet the plain error standard, plaintiffs must establish not only fact of error that is plain but also that such error affected plaintiffs' substantial rights. United States v. Cordery, 656 F.3d 1103, 1105 (10th Cir. 2011). Even if these factors are satisfied, the court must exercise its discretion to correct the error only "if it seriously affects the fairness, integrity, or public reputation of judicial proceedings." Id.
Although plaintiffs have failed to address these standards in their motion, the court is willing to assume arguendo that the failure to more specifically instruct the jury as to which elements of the design were functional and which were ornamental may well have constituted plain error which affected plaintiffs' substantial rights. Nevertheless, the ...