Metso Minerals, Inc. v. Powerscreen International Distribution Ltd. (833 F. Supp. 2d 282, 2011)

United States District Court for the Eastern District of New York 2011-12-08

Citations

Full opinion text

MEMORANDUM OF DECISION AND ORDER

SPATT, District Judge.

The Defendants in this patent infringement case, Powerscreen International Distribution Limited (“Powerscreen”), Terex Corporation (“Terex”), Powerscreen New York, Inc. (“PSNY”), and Emerald Equipment Systems, Inc. (“Emerald”), have filed several post-trial motions. The Court now addresses four of these motions: (1) a renewed motion for judgment as a matter of law; (2) a motion for a new trial; (3) a motion for a new trial on the basis of newly discovered evidence; and (4) a motion for judgment as a matter of law, or, alternatively, for a new trial, filed only by the Defendant Terex. For the reasons that follow, the Court denies the Defendants’ motions in their entirety and therefore will not enter judgment as a matter of law in their favor or grant a new trial.

I. BACKGROUND

The Court described the background of the relevant patent in detail in its previous decision in this case, Metso Minerals, Inc. v. Powerscreen Intern. Distr. Ltd., 681 F.Supp.2d 309 (E.D.N.Y.2010) (“Metso I”), and familiarity with that decision is assumed. Nevertheless, the Court restates this information as a background for the decision.

United States Patent 5,577,618 (the “'618 patent”) was granted to Malachy J. Rafferty on November 26, 1996 for a “mobile aggregate material processing plant”. The patent covers an invention whose primary function is to sort debris — usually construction debris — into piles of like-sized particles. Figure 2, below, is a cross sectional drawing from the '618 patent showing the invention’s preferred embodiment.

In this preferred embodiment, the plant sits on a structure akin to a flat-bed trailer, and extends the length of the trailer, When in its operating position, the plant takes mixed debris into an input hopper, and separates the debris into one of four size groupings. The largest debris is then dumped out of the input hopper, while the remaining three groupings are placed on one of three conveyors. Two of these conveyors extend out from the sides of the plant (called “lateral conveyors”), while the third extends from the back end of the plant. The debris travels the length of these conveyors, and is dumped at the end of each to form three separate piles, each of like-sized debris. In Figure 2, above, the lateral conveyors [20] are shown in their operative position, extending out from the plant base.

All of these functions, however, are incorporated into the prior art that preceded the '618 patent. The primary innovation claimed in the '618 patent is a way of folding the lateral conveyors so that the plant is more easily transported from worksite to worksite. Previous plants were transportable, but they were arguably less practical. For example, one cited invention required the lateral conveyors to be manually removed from the plant and stored above it for transport. Others allowed the lateral conveyors to fold onto the plant, but required that the plant be of sufficient length to accommodate the full size of the conveyors. By contrast, the '618 patent describes an invention whereby the lateral conveyors are double-jointed and fold into the plant more compactly. This is the essence of the innovation.

Based on this innovation, the United States Patent and Trademark Office issued the '618 patent, in which the patentee claimed, among other things:

A mobile road-hauled aggregate material processing plant comprising:

a wheel mounted chassis extending in a longitudinal direction;

a plant support frame mounted on the chassis;

a raw material input hopper mounted on the plant support frame;

a material processing means mounted on the plant support frame and fed from the input hopper and having an outlet;

a processed material outfeed delivery means mounted on the plant support frame and fed from the material processing means;

at least one lateral delivery conveyor incorporated in the outfeed delivery means, said conveyor comprising:

a conveyor frame tail section;

a conveyor frame head section;

a tail articulation means connecting the tail section to the support frame in such a way that at least part of the tail section is movable relative to the plant support frame from an operative position extending laterally of the chassis with respect to the longitudinal direction for outfeed of processed material, to a transport position extending substantially upright above the chassis and positioned with respect to the input hopper and material processing means so that it does not project laterally beyond the chassis,

a head articulation means connecting the head section to the tail section in such a way that the head section is movable from an operative position to a transport position with the head section extending longitudinally above the chassis and positioned with respect to the input hopper and material processing means so that it does not project laterally beyond the chassis; [and]

an endless conveyor belt ..., said belt defining a conveyor plane.

('618 patent, col. 7.)

Thus, according to this description, the “wheel mounted chassis” that underlies the invention is outfitted with a “plant support frame”. On the plant support frame is attached an “input hopper” that, in the preferred embodiment, accepts rubble of various sizes. This hopper feeds a “material processing means” that sorts the rubble into various sizes, and feeds the sorted material to the “outfeed delivery means.” This outfeed delivery means comprises, in the preferred embodiment, two lateral conveyors extending from the sides of the plant. Each of these lateral conveyors is mounted with a conveyor belt and has two movable joints. The first joint is called the tail articulation means (“TAM”), and it connects the lower portion of the conveyor (the “tail section”) to the plant support frame. The second joint is called the head articulation means (“HAM”), and it attaches the top part of the conveyor (the “head section”) to the conveyor’s tail section. By using these two joints together, the conveyor can be folded into a flat L shape using the HAM and raised next to the plant support frame using the TAM. This way, the conveyor sits snugly next to the plant support frame during transport mode. Figure 4, below, shows the preferred embodiment of the invention in transport mode. The lateral conveyors [20] are shown folded into the L shape for transport.

The Plaintiff Metso Minerals commenced the present law suit in 2006, alleging that the Defendants manufactured and sold products that infringed the '618 patent. Following discovery, claim construction, and summary judgment, the Plaintiff tried its case to a jury in late 2010. At the seven-week trial, the Defendants challenged the validity of the '618 patent, but on December 6, 2010, the jury returned a verdict rejecting this challenge, in part finding that no asserted claim of the '618 patent would have been obvious to a person of ordinary skill in the art at the time of the invention. The jury concluded that the Defendants had willfully infringed, either literally or by equivalents, claims 1, 2, 3 and 7 of the '618 patent with respect to the manufacture and sale of eleven screening machines in the United States over a ten year period. In addition, the jury issued an advisory verdict denying the defenses of laches and inequitable conduct. The jury awarded the Plaintiff $15.8 million in damages. On March 3, 2011, the Court entered Judgment on the jury verdict.

After the conclusion of the trial, both the Plaintiff and the Defendants have filed a large number of post-trial motions. In this Decision and Order, the Court will now address only those particular filings relating to the Defendants’ motions for judgment as a matter of law and for a new trial.

II. DISCUSSION

A. Relevant Law

1. The Renewed IMotion for Judgment as a Matter of Law

Pursuant to Federal Rule of Civil Procedure 50(b) (“Fed.R.Civ.P. 50(b)” or “Rule 50(b)”), a renewed judgment as a matter of law (“JMOL”) may be made “at the close of all the evidence” and after the verdict. A motion for JMOL may be granted where “there is no legally sufficient evidentiary basis for a reasonable jury to find [in favor of the non-moving] party.” Fed.R.Civ.P. 50(a). In patent cases, a motion for JMOL pursuant to Rule 50(b) is reviewed under the law of the regional circuit. Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312, 1317 (Fed.Cir.2009).

When ruling on a motion for JMOL, the court must “ ‘consider the evidence in the light most favorable to the [non-moving party] and ... give that party the benefit of all reasonable inferences that the jury might have drawn in [its] favor from the evidence.’ ” Concerned, Area Residents for the Env’t v. Southview Farm, 34 F.3d 114, 117 (2d Cir.1994), cert. denied, 514 U.S. 1082, 115 S.Ct. 1793, 131 L.Ed.2d 721 (1995) (quoting Smith v. Lightning Bolt Prods., Inc., 861 F.2d 363, 367 (2d Cir.1988)). The court “must disregard all evidence favorable to the moving party that the jury is not required to believe.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 151, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000); Meloff v. New York Life Ins. Co., 240 F.3d 138, 145 (2d Cir.2001). Accordingly, when ruling on a motion brought pursuant to Rule 50, the court may not rule on the credibility of the witnesses or the weight of the evidence. Caruso v. Forslund, 47 F.3d 27, 32 (2d Cir.1995). In other words, the court may not itself weigh credibility or otherwise consider the weight of evidence; rather, it must defer to the credibility assessments that may have been made by the jury and the reasonable factual inferences that may have been drawn by the jury. See Williams v. County of Westchester, 171 F.3d 98, 101 (2d Cir.1999).

In order to grant a motion for JMOL, there must be a “ ‘complete absence of evidence supporting the verdict that the jury’s findings could only have been the result of sheer surmise and conjecture, or ... such an overwhelming amount of evidence in favor of the movant that reasonable and fair minded men [and women] could not arrive at a verdict against [it].’ ” Concerned Area Residents, 34 F.3d at 117, (quoting Song v. Ives Lab., Inc., 957 F.2d 1041, 1046 (2d Cir.1992)); Mattivi v. South African Marine Corp. “Huguenot”, 618 F.2d 163, 168 (2d Cir.1980).

“The same standard that applies to a pre-trial motion for summary judgment pursuant to Fed.R.Civ.P. 56 also applies to motions for judgment as a matter of law during or after trial pursuant to Rule 50.” Piesco v. Koch, 12 F.3d 332, 341 (2d Cir.1993); see also the Advisory Committee Note to 1991 Amendment of Fed.R.Civ.P. 50. This Rule is well and clearly explained in the seminal case of This Is Me, Inc. v. Elizabeth Taylor, 157 F.3d 139 (2d Cir.1998). In Taylor, the Court commented that the then recent adoption of the term “judgment as a matter of law” to replace both the term “directed verdict” and the term “judgment N.O.V.” was intended to call attention to the close relationship between Rule 50 and 56. 157 F.3d at 142. The Court then went on to explain the basis for granting a post-verdict Rule 50 motion, as follows:

A district court may not grant a motion for a judgment as a matter of law unless “the evidence is such that, without weighing the credibility of the witnesses or otherwise considering the weight of the evidence, there can be but one conclusion as to the verdict that reasonable [persons] could have reached.” Cruz v. Local Union No. 3, Int’l Bhd. of Elec. Workers, 34 F.3d 1148, 1154-55 (2d Cir.1994) (quoting Simblest v. Maynard, 427 F.2d 1, 4 (2d Cir.1970)) (internal quotation marks omitted). Weakness of the evidence does not justify judgment as a matter of law; as in the case of a grant of summary judgment, the evidence must be such that “a reasonable juror would have been compelled to accept the view of the moving party.” Piesco, 12 F.3d at 343.

Id.; see also Fabri v. United Techs. Int’l Inc., 387 F.3d 109, 119 (2d Cir.2004) (same); Sanders v. New York City Human Res. Admin., 361 F.3d 749, 755 (2d Cir.2004).

A JMOL is thus “proper only if ‘the evidence is such that, without weighing the credibility of the witnesses or otherwise considering the weight of the evidence, there can be but one conclusion as to the verdict that reasonable [persons] could have reached.’ ” Fiacco v. City of Rensselaer, 783 F.2d 319, 329 (2d Cir.1986) (quoting Simblest, 427 F.2d at 4). Such motions “should be granted cautiously and sparingly.” 9A Charles A. Wright & Arthur R. Miller, Federal Practice and Procedure § 2524, at 252 (1995); Japan Airlines Co. Ltd. v. Port Auth. of New York & New Jersey, 178 F.3d 103, 112 (2d Cir.1999). In order to grant a new trial, the court must find that the verdict is “seriously erroneous” or constitutes a “miscarriage of justice.” Smith, 861 F.2d at 370; Mollis v. Bankers Trust Co., 717 F.2d 683, 691 (2d Cir.1983).

2. The Motion for a New Trial

Under Federal Rule of Civil Procedure 59 (“Fed.R.Civ.P. 59” or “Rule 59”), a court “may, on motion, grant a new trial on all or some of the issues — and to any party — ... after a jury trial, for any reason for which a new trial has heretofore been granted in an action at law in federal court.” Fed.R.Civ.P. 59(a)(1)(A). “ ‘A motion for a new trial should be granted when, in the opinion of the district court, the jury has reached a seriously erroneous result or ... the verdict is a miscarriage of justice.’ ” DLC Mgmt. Corp. v. Town of Hyde Park, 163 F.3d 124, 133 (2d Cir.1998) (quoting Song v. Ives Labor., Inc., 957 F.2d 1041, 1047 (2d Cir.1992)). The general grounds for a new trial are that (1) the verdict is against the clear weight of the evidence; (2) the trial court was not fair; (3) substantial errors occurred in the admission or rejection of evidence or the giving or refusal of instructions to the jury; or (4) damages are excessive. 12 Moore’s Federal Practice, § 59.13[1] at 59-43 (3d Ed. 2005).

In evaluating a Rule 59 motion, the trial judge’s duty is essentially to see that there is no miscarriage of justice. Bevevino v. Saydjari, 574 F.2d 676, 684 (2d Cir.1978). However, in general, as stated above, a motion for a new trial should not be granted unless the Court is “convinced that the jury has reached a seriously erroneous result or that the verdict is a miscarriage of justice.” Sorlucco v. N.Y.C. Police Dep’t, 971 F.2d 864, 875 (2d Cir.1992); see also Nimely v. City of New York, 414 F.3d 381, 392 (2d Cir.2005); Smith v. Nurse Carpenter, 316 F.3d 178, 183 (2d Cir.2003); Hugo Boss Fashions, Inc. v. Fed. Ins. Co., 252 F.3d 608, 623 (2d Cir.2001).

In comparison to a Rule 50 motion for judgment as a matter of law, the Second Circuit has held that the standard for a Rule 59 motion in some respects is less onerous for the moving party in two ways: first, “[ujnlike judgment as a matter of law, a new trial may be granted even if there is substantial evidence supporting the jury’s verdict.” DLC Mgmt. Corp., 163 F.3d at 134. Second, in deciding a Rule 59 motion “a trial judge is free to weigh the evidence himself, and need not view it in the light most favorable to the verdict winner.” Id.

Federal Rule of Civil Procedure 60(b)(2) (“Fed.R.Civ.P. 60(b)(2)” or “Rule 60(b)(2)”) provides that “the court may relieve a party or its legal representative from a final judgment, order, or proceeding for ... newly discovered evidence that, with reasonable diligence could not have been discovered in time to move for a new trial under Rule 59(b).” Fed.R.Civ.P. 60(b)(2). Evidence is considered “newly discovered” for the purposes of Rule 60(b)(2) “if it existed at the time of the prior adjudication but ... was discovered by the movant only after the entry of judgment.” Johnson v. Askin Capital Mgmt., L.P., 202 F.R.D. 112, 114 (S.D.N.Y.2001) (quoting Walker v. Dep’t of Veterans Affairs, No. 94 Civ. 5591, 1995 WL 625689, at *1 (S.D.N.Y. Oct. 25, 1995)). The moving party who seeks relief from judgment pursuant to Rule 60(b)(2) must meet an “onerous standard” by showing that: 1) the newly discovered evidence was of facts in existence at the time of the dispositive proceeding; 2) he was justifiably ignorant of those facts despite due diligence; 3) the evidence is admissible and of such importance that it probably would have changed the outcome; and 4) the evidence is not merely cumulative or impeaching. United States v. Int’l Bhd. of Teamsters (“Teamsters”), 247 F.3d 370, 392 (2d Cir.2001).

The standard for newly discovered evidence under Rule 59 is identical to that under Rule 60(b)(2). Brocuglio v. Proulx, 478 F.Supp.2d 297, 300 (D.Conn.2007) (“Whether moving on the basis of presentation of new evidence under Rule 59(e) or Rule 60(b)(2), the standard for newly discovered evidence is the same.”) (internal quotation marks and citation omitted).

One of the present motions is also based upon Rule 60(b)(3), which provides that “[o]n motion and upon such terms as are just, the court may relieve a party or a party’s legal representative from a final judgment, order, or proceeding for ... fraud (whether heretofore denominated intrinsic or extrinsic), misrepresentation, or other misconduct of an adverse party.” Fed.R.Civ.P. 60(b)(3). A party seeking relief pursuant to Rule 60(b)(3) must establish by clear and convincing evidence that the opposing party engaged in fraud or other misconduct. See Fleming v. New York Univ., 865 F.2d 478, 484 (2d Cir.1989). Moreover, “[t]o prevail on a Rule 60(b)(3) motion, a movant ‘must show that the conduct complained of prevented the moving party from fully and fairly presenting his case.’ ” State Street Bank and Trust Co. v. Inversiones Errazuriz Limitada, 374 F.3d 158, 176 (2d Cir.2004) (internal citation omitted).

Finally, the Defendants also argue for a new trial on the basis of the catchall provision of Rule 60, which is subsection (b)(6). It is well established that the appropriate occasion for Rule 60(b)(6) relief is limited to cases where the movant can show “extraordinary circumstances” or “extreme hardship.” Harris v. United States, 367 F.3d 74, 80 (2d Cir.2004) (citing United States v. Cirami, 563 F.2d 26, 32 (2d Cir.1977)). However, Rule 60(b)(6) does, “confer[ ] broad discretion on the trial court to grant relief when appropriate to accomplish justice.” Matarese v. LeFevre, 801 F.2d 98, 106 (2d Cir.1986). Indeed, clause (6) has been characterized as “a grand reservoir of equitable power to do justice in a particular case when relief is not warranted by [Rule 60(b)’s] preceding clauses.” Cirami, 563 F.2d at 32. Nevertheless, relief under clause (6) is only appropriate where all of the more specific clauses of Rule 60(b) are inapplicable. See Teamsters, 247 F.3d at 391-92 (“Controlling cases have held that if the reasons offered for relief from judgment can be considered in one of the more specific clauses of Rule 60(b), such reasons will not justify relief under Rule 60(b)(6)”) (citations omitted).

The granting of a new trial is extraordinary relief, and one that “is properly granted only upon a showing of exceptional circumstances.” Id. at 391.

B. As to The Defendants’ Motions for a New Trial and Judgment as a Matter of Law

In addition to the Defendants’ motion for a new trial on the basis of newly discovered evidence addressed above, the Defendants have filed two additional motions which the Court will now address — a renewed motion for judgment as a matter of law pursuant to Fed.R.Civ.P. 50(b) (“Def. Mem. 2”) and a motion for a new trial pursuant to Fed.R.Civ.P. 59 (“Def. Mem. 3”). In sum, the Defendants believe they are entitled to a new trial or judgment as a matter of law on the issues of literal infringement, infringement by equivalents, willful infringement, invalidity, and damages. The two motions at issue overlap extensively in their relevant facts and legal arguments. Thus, for sake of efficiency, the Court will consider the numerous subjects addressed in both motions simultaneously. The Court will then address the one remaining argument which appears only in the Defendants’ motion for a new trial.

1. As to the Alleged Errors Regarding Claim Terms

First, in their motion for a new trial, the Defendants argue that the Court erroneously charged the jury in the context of infringement. Specifically, the Defendants allege that the Court (1) erroneously instructed the jury on the meaning of “chassis” and “wheel-mounted chassis”, (2) did not correctly instruct the jury regarding the correct standard for determining whether the “head articulation means” limitation was literally infringed; and (3) vitiated the “does not project laterally beyond the chassis” limitation when it permitted the jury to apply the doctrine of equivalents. The Defendants similarly allege in their renewed motion for judgment as a matter of law that no reasonable, properly instructed jury could have concluded that (1) the accused track mounted screeners have “wheel mounted chasses” as the claims require; (2) any accused screener met the “head articulation means” limitation; and (3) as a matter of law, that the doctrine of equivalents was applicable to the “does not project laterally beyond the chassis” limitation.

“A jury instruction is erroneous if it misleads the jury as to the correct legal standard, or does not adequately inform the jury on the law.” Cameron v. City of New York, 598 F.3d 50, 68 (2d Cir.2010). In order to justify a new trial, the jury instruction must be both erroneous and prejudicial. Millea v. Metro-North R. Co., 658 F.3d 154, 163 (2d Cir.2011); see Sulzer Textil AG v. Picanol NV, 358 F.3d 1356, 1363 (Fed.Cir.2004). An erroneous jury instruction is prejudicial unless “the court is convinced that the error did not influence the jury’s verdict.” Gordon v. N.Y.C. Bd. of Educ., 232 F.3d 111, 116 (2d Cir.2000). In addition, Fed. R.Civ.P. 50 provides that if a jury returns a verdict for which there is not a legally sufficient basis, then the district court may direct entry of judgment as a matter of law. This Is Me, 157 F.3d 139, 142 (2d Cir.1998).

a. “Chassis”

The first major source of contention in the post-trial motion context, raised in the Defendant’s motion for a new trial, involves the term “chassis.” This word is utilized in the patentee’s claim that the invention comprises “a plant support frame mounted on the chassis.” The claim term also appears in the description of the “head articulation means” as connecting the head section to the tail section in such a way that the head section “does not project beyond the chassis.”

In the parties’ claim construction motions, the parties requested the Court to construe this term. The Defendants requested a narrower definition — they asked the Court to construe “chassis” to mean “a pair of longitudinal beams.” The Plaintiff requested a broader definition — it asked the Court to construe the term to mean “a structure onto which other elements are attached or mounted,” such that it would include the tires, tracks, and wheels running on the tracks. For reasons outlined in an earlier decision, the Court construed “chassis” to mean “the entire assembly of parts that rest beneath the plant support frame,” which included the “wheels, tracks, and other related parts on which would rest the other operative structures of the screening plant.” Metso I, 681 F.Supp.2d at 321. The Court also recognized at that time that “that the chassis ineorporate[d] the wheels and the wheel arches in the preferred embodiment.” Id.

The Defendants thereafter challenged this construction, and advanced a more limited construction that did not comprise, among other parts, the wheels, wheel arches, tires, or support jacks that rest beneath the plant support frame. The Court rejected this challenge.

At the conclusion of the trial, the Court instructed the jury that the claim term “chassis” “includes the wheels or tires and the wheel arches ... [and] also includes the tracks and assembly on which the tracks rotate and are mounted because these elements are beneath the functional parts of the sereener.” (Trial Tr., at 5346:6-9.)

First, in their motion for a new trial, the Defendants argue that the Court erred in its original definition of the term “chassis” by defining it to include more than the pair of longitudinal beams. However, the reasoning underlying the original claim construction determination by this Court remains, and therefore, the Court does not see any reason to alter its earlier decision.

Second, the Defendants allege that in the jury instructions the Court materially and improperly changed its construction of “chassis” after the close of the evidence. The Defendants claim that the explicit inclusion of tracks and the track assembly in the definition of chassis to the jury was significantly prejudicial in that it increased the lateral width of the term, because the tracks and track assembly are not “beneath the plant support frame” as defined in the claim construction, but rather are laterally to the side of, and partially below, the plant support frame. According to the Defendants, this, in turn, increased the width of the “chassis” by the width of the tracks. In addition, by including wheels and wheel arches in the definition of “chassis,” the Defendants assert that this also inappropriately expanded the width of the chassis.

In the previous claim construction decision by this Court, the term “chassis” was defined to mean “the entire assembly of parts that rest beneath the plant support frame.” Metso I, 681 F.Supp.2d at 321. When the Court charged the jury, it reiterated this definition and stated that the claim “chassis” “includes the wheels or tiers and the wheel arches ... [and] also includes the tracks and assembly on which the tracks rotate and are mounted because these elements are beneath the functional parts of the screener.” (Trial Tr., at 5346:6-9.)

In Metso I, the Court did express a hesitation to explicitly construe “chassis” to include or exclude part of the tracks on a “track-mounted screener.” 681 F.Supp.2d at 321. However, that reluctance was specifically connected to the intrinsic evidence only, which the Court found wanting. Although the Court found that the definition of “chassis” had to necessarily include more than just longitudinal beams and other structures found only in the preferred embodiment, i.e., the wheels and wheel arches of the invention, the Court struggled with the “tracks” in the accused screeners, because that specific structure does not appear in the patent’s preferred embodiment. In other words, based upon the intrinsic evidence of the patent alone, the Court was reluctant to include or exclude “tracks” as part of the definition of “chassis.”

However, the Court thereafter relied upon the extrinsic evidence of Power-screen’s Spare Parts Listings for its mobile screeners, in which it used the terms “track chassis” and a “wheel chassis” to refer to the “entire assembly of supports, wheels, tracks, and other related parts on which would rest the other operative structures of the screening plant.” Metso I, 681 F.Supp.2d at 321. In the Court’s view, this was evidence that one skilled in the art would define “chassis” as referring to the entire assembly that rests beneath the functional parts of the screener, and that this was consistent with the intrinsic evidence in the patent itself. Thus, when the Court construed the term “chassis” in the claim construction decision to mean “the entire assembly of parts that rest beneath the plant support frame,” the Court implicitly defined the term to include the supports, wheels, tracks, and other related parts on which the operative structures of the screener, i.e., the functional parts of the screener, would rest.

Of course, to “ehange[ ] the rules of the game” and alter the construction of key claim terms after the case had been tried would not be permitted. See Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1357 (Fed.Cir.1998). However, that is not the circumstance at hand. The Defendants are comparing the Court’s instruction to the jury with the Court’s prior dicta — not the Court’s actual claim construction. Accordingly, the Court’s claim construction and the Court’s jury instruction are consistent with one another and there is no need to consider whether a change in construction was manifestly prejudicial. Therefore, the Court will not award a new trial on the basis of the term “chassis” as utilized in the jury instructions.

b. “Wheel Mounted Chassis”

The next contentious patent term, argued in both the renewed motion for judgment as a matter of law and the motion for a new trial, is “wheel mounted chassis.” The Defendants make several arguments based solely on this phrase in both of their respective motions.

The patent claims asserted by the Plaintiff require that a mobile, road-hauled aggregate processing plant have a “wheel mounted chassis.” At the claim construction and summary judgment stage, the Defendants argued that the accused track mounted screeners could not have “wheel mounted ehasses” as required under the patent claims for a finding of infringement. According to the Defendants, the definition of “wheel” did not encompass “tracks”, either literally or by equivalent, and thus the track-mounted screeners could not be considered “wheel mounted”.

To the contrary, the Plaintiff argued that track mounted screeners had ehasses that are nonetheless “wheel mounted,” because the ehasses were mounted on a number of wheels that drove and guided the track parts that came into contact with the ground. The Court declined to grant summary judgment in favor of either party on this ground, because it found that this was a question most appropriate for the jury because material issues of fact existed with respect to how the tracks operated and what role their wheels played in their functioning.

At the charge conference, the Defendants again raised the argument that even if the jury were to determine that track assemblies somehow have wheels, it would be insufficient to decide that those screeners have “wheel mounted ehasses” as required under the terms of the patent. The Defendants objected to an instruction to that effect, claiming that the proffered charge would deprive the jury of the ability to decide what is or is not a “wheel mounted chassis” within the claim limitation. These arguments were taken into consideration by the Court.

In the charge, the Court instructed the jury “to decide whether the Defendants’ screeners on a track-mounted chassis have ‘wheels.’ ” The Court further charged that “if an accused Powerscreen screener is mounted on tracks,” they were to determine “whether or not the tracked chassis of that screen has wheels, as I have defined the term ‘wheels.’ ” The jury thereafter found that two of the track-mounted screeners — the Chieftain 2100 and the H5163 — literally infringed this requirement of the '618 patent claim. The jury also found that the four other track-mounted screeners — the Chieftain 1400, the Chieftan 1700, the Chieftan 1800, and the Chieftain 2100X — infringed this requirement of the '618 patent under the doctrine of equivalents.

In the Defendant’s renewed motion for judgment as a matter of law, the Defendants argue that because these six accused screeners are mounted on tracks, not wheels, that they could not be found to have infringed the '618 patent, either literally or under the doctrine of equivalents. Their position hinges on the assertion that the Court erroneously instructed the jury in such a way that it impermissibly abrogated the “wheel mounted chassis” limitation of the asserted claims. The Defendants reason in their motion that because the Court defined “chassis” to include the tracks and track assembly on track mounted screeners, and thereby instructed the jury that it needed only to find that the track-mounted screeners had wheels to conclude that those screeners infringed, that the Court essentially erased the words “mounted” and “chassis” from the patent specifications.

In addition, the Defendants claim that the Court in effect told the jury to ignore evidence that a wheel mounted chassis was fundamentally different from a track mounted chassis. In support of the Defendant’s motions, they contend that the industry generally categorizes screeners as being either track-mounted or wheel-mounted, and that they are intended for different environments and both are structured and perform differently. Thus, because “[t]hey do not perform the same functions in the same way to achieve the same result,” the Defendants argue that no reasonable jury could have concluded that Powerscreen’s track-mounted screeners had a wheel-mounted chassis as required by claim 1 and the asserted dependent claims of the '618 patent. The Defendants repeat these claims in their motion for a new trial, arguing that the Court’s instructions constitute prejudicial error.

At its core, the Defendants’ argument is that the jury instruction changed the relevant inquiry from a “wheel mounted chassis” to simply whether a screener had “wheels”. On the other hand, the Plaintiffs assert that their witness, Stephen Whyte, testified that the track-mounted screeners did infringe the “wheel mounted” chassis claim of the '618 patent, either literally or under the doctrine of equivalents.

As the Court explained in its previous claim construction opinion, the Plaintiff raised a genuine issue of material fact as to whether a track-mounted screener could nevertheless have a chassis that was “wheel-mounted,” if the chassis is mounted on a number of wheels that drive and guide the track parts that come in contact with the ground. In addition, the Court properly instructed the jury that the definition of “chassis” included tracks, wheels, or any other part that rested beneath the plant support frame. Thus, when the Court instructed the jury, it did so in accordance with the Court’s interpretation of what a track mounted screener with a wheel-mounted chassis would be. The jury did not have free reign, without constraint, to find that a track-mounted screener with a wheel anywhere in the screening plant would be infringing. Rather, the Court specifically instructed that the jury was to determine “whether

or not the tracked chassis of that screen has wheels.” Thus, the issue before the jury was whether the assembly of parts that rested beneath the plant support frame contained wheels, and the factual issue of whether a track-mounted screener could nevertheless have a wheel-mounted chassis was thereby properly before the jury. The instruction was not erroneous and certainly did not warrant a new trial. Also, in this regard, the Court does not find that there was a complete absence of evidence supporting the jury’s verdict to warrant a judgment as a matter of law.

c. “Head articulation means”

Another claim term that is a source of contention in the post-trial context is “head articulation means” (“HAM”). The claim term HAM is undisputedly a means plus function claim, and therefore must be construed by first identifying the function of the term, and then identifying the structures that carry out this function. In the Court’s previous claim construction decision, it construed the function of this claim to mean:

connecting the head section to the tail section in such a way that the head section is movable from an operative position to a transport position with the head section extending longitudinally above the chassis and positioned with respect to the input hopper and material processing means so that it does not project laterally beyond the chassis.

Metso I, 681 F.Supp.2d at 326. In addition, the Court found the following structures to be necessary to carry out this function: “a pivot joint, a connecting pin, a bushing, wing plates, and a holding plate.” The HAM was therefore interpreted to incorporate these specific structures and their equivalents.

Thereafter, the Defendants did not oppose the Court’s definition of the HAM function, but did challenge the Court’s determination of which structures carry out this function. Specifically, the Defendants contended that the HAM should be construed to additionally comprise a “C-clip,” the “tapered parts” of the head and tail sections of the conveyor, and a “hydraulic ram.” In the reconsideration decision, Metso Minerals, Inc. v. Powerscreen Int’l Distribution Ltd., 722 F.Supp.2d 316 (E.D.N.Y.2010) (‘Metso II”), the Court stated that it had already discussed the basis for excluding those terms in Metso I and found no reason to alter the Court’s previous construction of the HAM. However, the Court did reverse its determination with respect to whether all of the required structures of the HAM, as laid out in Metso I, were actually present in the accused sereeners and found that the existence of two elements — wing plates and a holding plate — remained a question of fact.

At the trial, the Court instructed the jury with regard to the HAM by stating that one of the issues it had to decide with respect to infringement of the claim one was:

First, whether or not the mechanism that causes a lateral conveyor of the accused Powerscreen sereeners to fold and unfold, allows that lateral conveyor to fold into a transport position so that the lateral conveyor “does not project laterally beyond the chassis” of the screener.

Second, whether or not that mechanism has “wing plates” and “a holding plate.”

(Trial Tr„ at 5337:24-5338:12.)

The Defendants make several arguments with regard to this claim term, which are substantially the same in both their motion for a new trial and their renewed motion for judgment as a matter of law.

First, the Defendants contend that the Court did not give specific, explanatory instructions as to the “means-plus-function” limitation format so that it did not adequately inform the jury of the law. The Defendants assert that the Court should have charged the jury that to find infringement it needed to conclude that (1) the accused sereeners performed the specified function exactly, and (2) the defined structures or their equivalents were the required means for performing that function. At the outset, the Court rejects this argument. The instruction to the jury clearly delineated two steps for the jury — • first, to determine whether the function of the accused sereeners was the same as that of the HAM, and second, to determine whether the defined structures at issue were contained in the mechanism that performed that function.

Second, the Defendant argues that the accused sereeners do not perform the same exact function that was defined in the claim construction, specifically the “connecting” portion of the limitation, that the HAM was to “conneet[ ] the head section to the tail section.” Metso I, 681 F.Supp.2d at 326. The Defendants claim that the folding mechanism in the accused sereeners that causes the movement of the side conveyors does not connect the head section to the tail section, but connects the head section to the plant support frame. Thus, because the Court did not instruct the jury with regard to this particular function, the Defendants allege that this led the jury to an incorrect result that warrants a new trial or judgment as a matter of law of non-infringement.

The Court agrees with the Plaintiff that its instruction was not improper.

In its summary judgment decision, the Court agreed that the function of the HAM was to connect the head and tail sections so that the conveyors do not protrude laterally beyond the chassis when folded and deemed there to be no genuine issue of material fact as to whether the structures carried out the recited function of the HAM or its equivalent. However, in the reconsideration decision, the Court determined that the only factual issue remaining with regard to the HAM’s function was whether the conveyors on the accused screeners “protrude[d] laterally beyond the chassis,” and that a structure that failed to carry out this function was not a HAM within the meaning of the '618 patent. The Court explicitly said that “there are issues of fact as to whether the alleged [HAM] on the accused screeners carry out this function,” implicitly rejecting any other issue of fact with regard to the function of the HAM. Therefore, the Court properly instructed the jury to make a determination only as to this aspect of the HAM’s function and a new trial or judgment as a matter of law is not warranted on this basis.

Third, the Defendants acknowledge that part of the function, to enable to the head section to be moved from the operative position to the transport position, is accomplished by the accused screener’s folding mechanism at issue. However, the Defendants claim that the function of the accused folding mechanism is not exactly the same because “the arrangement of the struts in combination with the hydraulic cylinders ... at the same time provides support for the lateral conveyer in the operating position when the conveyors have a load on them.” Thus, the Defendants argue that the accused folding mechanism operates in an entirely different manner and does not achieve the same result as required by the claimed function of the HAM. The Court disagrees.

The fact that the folding mechanism in the accused screeners performs the claimed function and also performs an additional function, does not change the finding that the structure actually performs the recited function. “[A]n accused device that contains the same feature as the patented device cannot escape infringement because in it that feature performs an additional function it does not perform in the patented device.” Radio Steel & Mfg. Co. v. MTD Products, Inc., 731 F.2d 840, 848, 221 U.S.P.Q. 657 (Fed.Cir.1984).

Fourth, the Defendants reassert their earlier and rejected argument that the Court’s determination of the structures required to perform the claimed function were unduly narrow, and should include elements such as tapered parts and a hydraulic ram. The Court sees no reason to alter its earlier decision in this regard.

d. “Not Project Laterally Beyond the Chassis”

The last claim term that forms the basis for several arguments in the Defendants’ motion for a new trial and renewed motion for judgment as a matter of law is that the side conveyors “not project laterally beyond the chassis” when in the transport position.

At trial, the jury found that six of the accused screeners infringed the Plaintiffs patent under the doctrine of equivalents. In the Defendants’ motions, they assert that as a matter of law, there could not be a theory of infringement by equivalence for the limitation that the side conveyors “not project laterally beyond the chassis” when in the transport position. The Defendants have two bases for this argument.

The first contention of the Defendants is that the vitiation doctrine applies, so that the trier of fact could not have reached an equivalence analysis. The claim-vitiation doctrine provides that “an element of an accused product or process is not, as a matter of law, equivalent to a limitation of the claimed invention if such a finding would entirely vitiate the limitation.” Freedman Seating Co. v. Am. Seating Co., 420 F.3d 1350, 1358 (Fed.Cir.2005) (citing Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997)). “There is no set formula for determining whether a finding of equivalence would vitiate a claim limitation.... Rather, courts must consider the totality of the circumstances of each case and determine whether the alleged equivalent can be fairly characterized as an insubstantial change from the claimed subject matter without rendering the pertinent limitation meaningless.” Freedman, 420 F.3d at 1359. “Claim vitiation applies when there is a ‘clear, substantial difference or a difference in kind’ between the claim limitation and the accused product.” Trading Techs. Int’l, Inc. v. eSpeed, Inc., 595 F.3d 1340, 1355 (Fed.Cir.2010) (quoting Freedman, 420 F.3d at 1360). “It does not apply when there is a ‘subtle difference in degree.’ ” Id. The doctrine of equivalents does not allow recapture of subject matter excluded by a deliberate claim-drafting decision. Planet Bingo, LLC v. GameTech Int’l, Inc., 472 F.3d 1338, 1344 (Fed.Cir.2006).

The Court agrees with the Defendants that the “doctrine of equivalence cannot be used to erase ‘meaningful structural and functional limitations of the claim on which the public is entitled to rely in avoiding infringement.’ ” Conopco, Inc. v. May Dep’t Stores Co., 46 F.3d 1556, 1562 (Fed.Cir.1994) (internal citation omitted); see, e.g., Tronzo v. Biomet, Inc., 156 F.3d 1154, 1160 (Fed.Cir.1998) (noting that the finding of all shapes to be equivalent structures would entirely vitiate the limitation requiring a “generally conical shape”). However, the Court finds that the vitiation doctrine is not applicable in the present case.

The claim to “not project laterally beyond the chassis” can lead to several variations of infringement, from insubstantial projection so that the doctrine of equivalents is applicable, to substantial projection so that the vitiation doctrine could apply. The Court has previously rejected the Defendants’ argument that there is a binary difference between conveyors that extend beyond the chassis and those that do not. Cf. Moore U.S.A., Inc. v. Standard Register Co., 229 F.3d 1091, 1106 (Fed.Cir.2000). The Court at that time found that “even if minimally protruding conveyers were deemed to be equivalent to non-protruding conveyors, the term ‘does not project laterally beyond the chassis’ would still limit the patent.” Metso I, 681 F.Supp.2d at 332. In addition, the Plaintiffs expert witness stated that the projection of the lateral conveyors was “so minimal that it is of no consequence.” (Trial Tr., at 2368:9-2369:19.) While the Defendants contend that the Plaintiff expands the scope of their limitation to the exact opposite — “does project” — this is not the case. Rather, it is a question of degree. The Plaintiffs expert merely testified that the projection was so minimal that it was essentially the same as not projecting. This would likely not have been the case had the projection been more substantial.

The second contention of the Defendants is that Metso is estopped from asserting infringement by equivalence of the claim limitation that the lateral conveyors “not project laterally beyond the chassis” while in the transport position because of arguments made to the Patent and Trademark Office (“PTO”) during the prosecution of the '618 patent. In particular, the Defendants point to the following statements:

— “Claims 1 and 12 are further amended to more clearly indicate what constitutes the operative position and the transport position, the former having elements extending laterally of the chassis, the latter having no elements extending laterally of the chassis”

— “[I]t is more clearly recited that:

• the tail section is connected to the plant frame, and it extends laterally for operation and substantially upright without projecting laterally beyond the chassis for transport

• the head articulation means renders the head section movable to extend longitudinally above the chassis and thereby be positioned with respect to other parts of the plant so that it does not project laterally beyond the chassis.

Prosecution history estoppel may, as a matter of law, prevent a patentee from subsequently relying on the doctrine of equivalents for a particular claim limitation. Bai v. L & L Wings, Inc., 160 F.3d 1350, 1354 (Fed.Cir.1998). The Defendants in the present case rely on estoppel by argument, not by amendment. In order for this form of estoppel to apply, there must be a “clear and unmistakable” surrender of the equivalent asserted by the patentee. See Litton Sys. v. Honeywell, Inc., 140 F.3d 1449, 1458 (Fed.Cir.1998) (requiring a “clear and unmistakable surrender” in order for argument-based estoppel to apply).

Here, the Court does not find that any of the statements made to the PTO or by Mr. Rafferty’s lawyers at trial, clearly and unmistakably abandoned an infringement claim of mere minimal projection beyond the chassis under the doctrine of equivalents. The only thing indicated by these statements is the importance of the actual claim to not project laterally beyond the chassis. They do not simultaneously preclude an eventual finding that a minimal projection beyond the chassis could be found to equivalently infringe.

In sum, the Court does not find that a new trial or JMOL is warranted in light of this claim term.

2. As to the Alleged Errors Regarding Obviousness

The next subject area that forms the basis for several arguments in the post-trial motions of the Defendants is the defense of obviousness. Because it is addressed extensively in both the motion for a new trial and the renewed motion for judgment as a matter of law, each will be addressed separately.

a. Motion for a New Trial

In the Defendants’ motion for a new trial, the Defendants claim that the Court committed highly prejudicial errors in instructing the jury on the rules governing the Defendants’ obviousness defense. First, the Defendants allege that the Court erred in failing to instruct the jury that the Defendants needed only to show obviousness by a preponderance of the evidence in view of Defendants’ reliance on prior art not cited to the PTO. Second, the Defendants allege that the Court erred in instructing the jury that only fully operational or functional products could be considered prior art.

As to the first ground, at the trial, the Court instructed the jury that in light of all of the prior art of the '618 patent, obviousness must be shown by clear and convincing evidence. The Defendants claim that this was not the appropriate standard with respect to prior art that was not disclosed to the PTO. In support of this argument, the Defendants cite to KSR Intern. Co. v. Teleflex, Inc., 550 U.S. 398, 426, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007), in which the Supreme Court found that while there is a presumption of validity when the PTO approves a claim in light of the prior art, that presumption is much diminished where the PTO never considered certain prior art. However, the Supreme Court explicitly did not address whether the failure to disclose prior art to the PTO voided the presumption of validity. Id More importantly, the Supreme Court did not hold that the standard of evidence was lowered for a defense of obviousness when certain prior art was not disclosed to the PTO.

Moreover, since the filing of the post-trial motions, the Supreme Court has decided the exact issue it declined to decide in KSR. In Microsoft Corp. v. i4i Limited Partnership, 564 U.S. ---, ---, 131 S.Ct. 2238, 2244-45, 180 L.Ed.2d 131 (2011), the Supreme Court rejected the contention that a preponderance standard must apply when an invalidity defense rests on evidence that was never considered by the PTO in the examination process. Thus, there is no longer any basis for the Defendants’ argument that the instruction of a clear and convincing evidentiary standard was improper.

Although the Defendants make much out of the Supreme Court’s dicta that “the challenger’s burden to persuade the jury of its invalidity defense by clear and convincing evidence may be easier to sustain,” the Supreme Court did not hold that this particular language was essential to include in a jury instruction. Rather, the Supreme Court stated that “[i]n this respect ... we have no occasion to endorse any particular formulation.” The Court went on only to state that “a jury instruction on the effect of new evidence can, and when requested, most often should be given ... to consider that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent.” Id. at 2251 (emphasis added).

The Court in this case rejected the Defendants’ requested charge that “[w]hile Defendants must still prove invalidity by clear and convincing legal evidence, Defendants may more easily do so if the prior art that they contend renders a claim obvious and invalid was not considered by the examiner and is more pertinent that the prior art that was considered.” (DE No. 469.) However, the Court instructed the jury as follows:

A granted patent is presumed to be valid, but that presumption of validity can be overcome if clear and convincing evidence is presented that proves the patent is invalid. One example of a way in which the presumption can be overcome is if the United States Patent Office has not considered, for whatever reason, prior art that would invalidate the patent.”

(Trial Tr., at 5323-4.) This instruction sufficiently complied with the Supreme Court’s direction to instruct the jury “to consider that it has heard evidence that the PTO had no opportunity to evaluate before granting the patent.” Microsoft Corp., 131 S.Ct. at 2251.

As for the second ground, the Defendants claim that the following instruction to the jury was erroneous: (Trial Tr., at 5369:3-9.) The Defendants argue that this instruction was erroneous because there is no requirement that a preexisting machine be “fully operational and functional” for it to qualify as prior art for purposes of obviousness. They further assert that because they had no obligation to prove that the Dominator or Master-Stock conveyors were fully operational and functional, they did not do so at trial, and therefore the imposition of this requirement of proof after all the evidence had been submitted was manifestly unfair.

For any machine that you may determine is prior art, the Defendants must prove by clear and convincing evidence how that particular machine operated before September 7, 1993, in the manner that the Defendants allege is pertinent to the claims of the '618 patent, and that that machine, if any, was fully operational and functional in that respect.

Under 35 U.S.C. § 103(a), a patent is invalid “if the differences between the [claimed] subject matter ... and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” The Federal Circuit has recently expressly noted that “a reference need not work to qualify as prior art.” Geo M. Martin Co. v. Alliance Machine Sys. Intern. LLC, 618 F.3d 1294, 1302 (Fed.Cir.2010). Thus, the Defendants are correct that the Court’s instruction in this regard was erroneous.

However, the Court does not find that this error resulted in substantial prejudice. An erroneous jury instruction is prejudicial unless “the court is convinced that the error did not influence the jury’s verdict.” Gordon v. N.Y.C. Bd. of Educ., 232 F.3d 111, 116 (2d Cir.2000). In this case, even if the Dominator mobile screen-er and the MasterStock 70/80 conveyors were considered prior art to the '618 patent, there was still sufficient evidence from which the jury could conclude that the '618 patent was not obvious in view of these two machines. The Defendants’ own expert, Frank Loeffler, acknowledged that combining these references would not result in the invention claimed in the '618 patent because the combination omitted any teaching of a stop to prevent the head section of the folded lateral conveyor from folding beyond 90°. The Defendants contend that this addition of a stop, to make the patent nonobvious, cannot be sufficient because the Court did not construe the patent claims to require stops. They also point out that stops were well-known to one of ordinary skill in the relevant field. However, this was an issue of fact for the jury, and they concluded, notwithstanding the instruction with regard to functionality and optionality, that the defense of invalidity on the ground of obviousness was without merit.

In addition, there was sufficient evidence to conclude that the Defendants proved by a clear and convincing standard that the Dominator and MasterStock 70/80 were fully operational and functional. For example, Anthony Parascando testified that he and his father purchased the Dominator machine in August 1993, had it for five or six years, and then gave the machine to a man named Bill Griffits. (Trial Tr., at 3593:7-24.) Though testified to explicitly, there is nothing to indicate that this machine was not fully operational and functional, and the clear implication of Parascando’s testimony is that the machine worked for its intended purpose. In addition, Richard Byrne testified to invoices of MasterStocks and Dominators being sold into the U.S. about 1990. (Trial Tr. 3323:4-7.; 3340:19-21.) Again, the clear implication of this testimony is that these two conveyors were fully operational and functional.

Thus, the addition of the instruction to the jury to find that the machines qualified as prior art only if they were fully operational and functional was not substantially prejudicial. The jury’s conclusion as to whether the Dominator and the Master-stock conveyors were prior art was not influenced by the imposition of an “operability” requirement, because that was not a point of contention in this case. Therefore a new trial is not warranted on this ground.

b. Renewed JMOL

In the Defendants’ renewed motion for judgment as a matter of law, the Defendants assert that no reasonable jury, properly instructed on the governing law, would have had a legal basis for finding the '618 patent was not invalid as obvious. The Defendants further advance the contention that consistent with the teachings of KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416, 127 S.Ct. 1727, 167 L.Ed.2d 705 (2007), that the claimed invention in the present case was a combination of familiar elements which yielded no unexpected results. The Court has previously rejected this argument, agreeing with the Plaintiff that it was a proper issue for the jury as to whether the results were unexpected or not. The Court sees no reason to now disturb a decision that was properly in the province of the jury. Therefore, the Defendants’ motion for summary judgment as a matter of law on the ground that no reasonable jury could have concluded that all asserted claims were not invalid as obvious under 35 U.S.C. § 103 is denied.

3. As to the Alleged Errors Regarding Willful Infringement

At trial, the Court charged the jury with regard to willful infringement as follows:

Willful infringement is established where it is shown that:

The Defendant was aware of the [Plaintiffs] patent.

The Defendant had no reasonable basis for reaching a good faith conclusion that its making, using or selling its device avoided infringement of the patent.

Willful infringement may also be established where it is shown that a defendant did not exercise due care to determine whether or not it was infringing Plaintiffs patent, once the Defendant acted in reckless disregard of the claims of the Plaintiffs patent.

One factor to consider with respect to a Defendant’s good faith and due care is whether the Defendant obtained and followed competent legal advice from counsel after having actual notice of Plaintiffs patent, and before beginning or continuing the allegedly infringing activities. Competent legal advice means an opinion by counsel based on a reasonable examination of the facts and law relating to the validity and infringement issues, consistent with the standards and practices generally followed by competent lawyers.

No factor by itself requires a finding of willful or nonwillful infringement. In considering whether the Defendant’s infringement was willful, you should consider the totality of the circumstances, and all of the evidence demonstrating the Defendant’s intentions.

(Trial Tr., at 5392:1-5393:16.) Again, because this issue is addressed extensively in both the motion for a new trial and the renewed motion for judgment as a matter of law, each will be addressed separately.

a. Renewed Judgment as a Matter of Law

In the Defendants’ re