Accentra Inc. v. Staples, Inc. (851 F. Supp. 2d 1205, 2011)

Citations

851 F. Supp. 2d 1205

Full opinion text

ORDER RE: POST-TRIAL MOTIONS

AUDREY B. COLLINS, Chief Judge.

After the jury trial and verdict in this case, the parties have filed several post-trial motions.. The following motions are resolved by this Order: (1) Defendants and Counter-claimants Staples, Inc., and Staples The Office Superstore, LLC’s (“Staples’”) Motion for Judgment as a Matter of Law (Docket No. 487); (2) Plaintiffs and Counter-Defendants Accentra, Inc. and Worktools, Inc.’s (“Accentra’s”) Motion for Enhanced Damages and Attorney’s Fees (Docket No. 492); (3) Accentra’s Motion for Permanent Injunction (Docket No. 491); (4) Accentra’s Motion for Accounting, Pre- and PosL-Judgment Interest, and Costs (Docket No. 490); and (5) Accentra’s a Motion for Order re Findings of Fact and Conclusions of Law for Inequitable Conduct (Docket No. 489). The parties each filed oppositions and replies to the motions pursuant to the Court-ordered briefing schedule and the Court heard oral argument on several of the motions May 16, 2011. The parties also filed supplemental briefs on the issues of indefiniteness and a new trial for damages. The Court rules as follows.

BACKGROUND

Accentra alleged in this case that Staples willfully infringed three patents owned by Worktools and licensed by Accentra by selling several models of spring-powered staplers, namely, Staples’ “Executive One-Touch” stapler (model “EX-5”), its “One-Touch” staplers (models “DX-1” and “CX-1”), and its “One-Touch” 60-sheet “High Capacity” stapler. The patents at issue are U.S. Patent No. 7,178,709 (filed Feb. 24, 2005) (the “'709 patent”); Patent No. 7,080,768 (filed Aug. 23, 2004) (the “'768 patent”); and Patent No. 7,290,-692 (filed Jan. 4, 2007) (the “'692 Patent”). For its part, Staples claimed that it did not infringe any of the patents and, if it did infringe, the patents are invalid; Staples further claimed that the '709 patent is unenforceable due to Accentra’s inequitable conduct before the Patent and Trademark Office (“PTO”).

Following trial, the jury returned a verdict in Accentra’s favor, finding that the accused staplers willfully infringed the asserted claims of Accentra’s patents, that Accentra had suffered damages as a result of the infringement, and that none of the asserted claims was invalid as obvious or anticipated. (Docket No. 472.) The jury awarded Accentra a total of $2,205,192 in reasonable royalties (rejecting Accentra’s claimed lost profits) in the following proportions: $432,658 for infringement by the CX-l; $676,112 for infringement by the DX-1; $774,684 for infringement by the EX-5; and $321,738 for infringement by the High Capacity. (Id. at 12.) The jury further provided advisory findings that Staples failed to prove the factual predicates for inequitable conduct by clear and convincing evidence, namely that named inventor Joel Marks and prosecution attorney Paul Feng withheld material information from the PTO during the prosecution of the '709 patent with the intent to deceive the PTO. (Id. at 4.)

The parties now request various types of post-trial relief, and the Court addresses each of those requests below.

DISCUSSION

I. STAPLES’ MOTION FOR JUDGMENT AS A MATTER OF LAW (Docket No. 487)

Staples moves for judgment as a matter of law on several grounds. First, Staples argues that the asserted claims of the '709 are indefinite, rendering the patent invalid and requiring that the jury’s verdict of willful infringement of that patent be set aside. Second, Staples claims that there was insufficient evidence offered at trial for a reasonable jury to conclude that any of the staplers at issue infringed any of the patents-in-suit. Third, Staples argues that insufficient evidence was offered to support the jury’s reasonable royalty award. Finally, Staples argues that insufficient evidence was offered for a reasonable jury to find that Staples willfully infringed any of the patents.

As outlined below, the motion is GRANTED IN PART and DENIED IN PART. The Court concludes that the '709 patent is invalid as indefinite, so the jury’s verdict of willful infringement of that patent and award of damages must be set aside, which renders moot Staples’ alternative argument that insufficient evidence supported the jury’s finding of willful infringement of the '709 patent. The Court finds, however, that substantial evidence supports the jury’s finding of infringement of the '768 and '692 patents. The Court rejects Staples’ contention that Accentra’s expert’s testimony on damages must be excluded, but concludes that the damage award must be reduced as a matter of law because the '709 patent is invalid as indefinite. Finally, the Court concludes that insufficient evidence was offered to support the jury’s findings that Staples’ infringement of the '768 and '692 patents was willful, so the jury’s verdict on those issues must be set aside.

A. Legal Standard

Once a party has moved pre-verdict for judgment as a matter of law pursuant to Federal Rule of Civil Procedure 50(a), Rule 50(b) permits the party to renew that motion following the jury verdict. If properly raised, a Rule 50(b) motion in a patent infringement case is governed by Ninth Circuit law. Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1328 (Fed.Cir.2008). In the Ninth Circuit, “[a] jury’s verdict must be upheld if it is supported by substantial evidence.” Wallace v. City of San Diego, 479 F.3d 616, 624 (9th Cir.2007). “ ‘Substantial evidence is evidence adequate to support the jury’s conclusion, even if it is also possible to draw a contrary conclusion from the same evidence.’ ” Id. The Court is not permitted to weigh the evidence offered at trial; it must simply “ask whether the plaintiff has presented sufficient evidence to support the jury’s conclusion.” Id. In doing so, the Court must “disregard all evidence favorable to the moving party that the jury is not required to believe” and “[t]he evidence must be viewed in the light most favorable to the nonmoving party,, and all reasonable inferences must be drawn in favor of that party.” Id. In the end, “[jjudgment as a matter of law may be granted only where, so viewed, the evidence permits only one reasonable conclusion, and that conclusion is contrary to the jury’s verdict.” Id.

B. Indefiniteness of the '709 Patent

Staples’ claim that the '709 patent is indefinite arises in the unusual circumstance here of a post-trial motion for judgment as a matter of law, although Staples raised the same indefiniteness argument at the claim construction stage (Docket No. 58 at 14-23) and at summary judgment (Docket No. 155 at 31). Given this procedural posture, there is some concern that Accentra may be prejudiced by the Court addressing indefiniteness now, so the Court ordered the parties to file supplemental briefs on the issues of indefiniteness and prejudice. The Court concludes that no prejudice would arise from adjudicating indefiniteness following trial and that the '709 patent is, indeed, invalid as indefinite.

1. Prejudice

Indefiniteness is a “ ‘legal conclusion that is drawn from the court’s performance of its duty as the construer of patent claims,’ ” not a question for the jury. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.Cir.2005). As a result, “ ‘district courts may engage in a rolling claim construction, in which the court revisits and alters its interpretation of the claim terms as its understanding of the technology evolves.’” Pressure Prods. Med. Supplies, Inc. v. Greatbatch Ltd., 599 F.3d 1308, 1316 (Fed.Cir.2010). In Pressure Products, for example, the court approved the district court’s further construction of claims during trial because the court, and not the jury, had the obligation to resolve disputes over claim construction, even though they arose during trial. Id. Moreover, trial testimony educated the court on the proper construction of the claims, and the patentee was not prejudiced because it had the opportunity to adjust to the claim construction during trial. Id. at 1315-16.

There is even less of a risk of prejudice to Accentra here than there was in Pressure Products. Unlike Pressure Products, where the court was concerned about prejudice from adopting a different claim construction, finding claims indefinite is not a matter of adopting a different construction in the midst (or after) trial to which the patentee needs to adjust, but a matter of concluding that no construction of the disputed claims is possible. If the risk of prejudice was not enough to prevent the court in Pressure Products from adopting a different construction during trial, then the risk of prejudice to Accentra in finding the claims indefinite is largely nonexistent.

Even if prejudice could arise in this circumstance, Accentra has not shown that it has. First, Staples has repeatedly raised the indefiniteness of the '709 patent, most recently in the parties’ Pre-Trial Conference Order (Docket No. 411 at 9) and at the pre-trial conference (Cuomo Supp. Deck, Ex. 6 (Pre-Trial Conf. Tr.) at 10-13), so Accentra can claim no unfair surprise from Staples raising the issue again after trial. Second, Accentra was permitted to present its infringement case to a jury, so ruling now that the '709 patent is indefinite would simply reverse the parties’ positions on appeal, and if the Federal Circuit reverses the Court’s indefiniteness ruling, it can reinstate the jury’s verdict as to the '709 patent. Indeed, Staples may have been more prejudiced than Accentra, as it was forced to trial to defend against claims of infringement of a patent that the Court now concludes is invalid as indefinite. Thus, there is no prejudice that would preclude addressing indefiniteness now.

2. Indefiniteness

The definiteness requirement appears in 35 U.S.C. § 112, ¶ 2: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” “Because the claims perform the fundamental function of delineating the scope of the invention ... the purpose of the definiteness requirement is to ensure that the claims delineate the scope of the invention using language that adequately notifies the public of the patentee’s right to exclude.” Datamize, 417 F.3d at 1347. In the face of indefinite claims, “competitors cannot avoid infringement, defeating the public notice function of patent claims.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed.Cir.2008). Definiteness does not command “absolute clarity” in the claim terms, but only enough clarity that “those terms can be given any reasonable meaning,” and “[o]nly claims ‘not amenable to construction’ or ‘insolubly ambiguous’ are indefinite.” Datamize, 417 F.3d at 1347. A claim raising difficult issues “does not ipso facto result in a holding of indefiniteness”; “ ‘[i]f the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree,’ ” it is not invalid as indefinite. Id.

An issued patent is subject to a presumption of validity in the face of a claim of indefiniteness, id., and an infringer must prove by clear and convincing evidence that “a skilled artisan could not discern the boundaries of the claim based on the claim language, the specification, and the prosecution history, as well as her knowledge of the relevant art area.” Halliburton, 514 F.3d at 1249-50. In determining indefiniteness, general principles of claim construction apply; thus, the Court relies primarily on intrinsic evidence, such as the claim language itself, the patent specification, and the file history. Datamize, 417 F.3d at 1348. The Court may also consider extrinsic evidence, such as expert testimony, keeping in mind that “ ‘what matters is for the court to attach the appropriate weight to be assigned to those sources in light of the statutes and policies that inform patent law.’ ” Id.

The issue here involves the claims in the '709 patent covering a “pressing area” “near” the front end of the handle that, in claims 24, 25, and 28, moves “about 0.9 to 1 inch” as the handle moves from the “rest position” to the “pre-release position,” and in claim 27, moves “about double” the distance the striker moves from the “rest position” to the “pre-release position.” (Cuomo Deck, Ex. 1 ('709 Patent) col. 18,11.15-18, 36-38, col. 19,11. 5-10, col. 20, 11. 1-4.) In order to determine infringement, then, one must identify the pressing area according to the measurements in the claims to determine whether it travels the required distance and is “near” the front end of the handle.

At claim construction, Staples contended that there were at least two valid ways to measure the handle travel distance, either vertically on an axis perpendicular to the base, or point-to-point, and because there was no way for a person of ordinary skill to determine which measurement was warranted to identify the pressing area, the claim was indefinite. (Docket No. 58 at 18.) Staples alternatively argued that, if the Court were to reject its indefiniteness argument, the Court should adopt a construction that would make the pressing area “as small as possible to permit one of ordinary skill in the art to determine the scope of the claims.” (Docket No. 58 at 15.)

The Court rejected Staples’ indefiniteness argument and construed the term “pressing area” to call for both methods of measurement of handle travel. The Court further found that the method that produced the “smaller” pressing area was the method to be used to determine placement of the pressing ai-ea on the handle. Thus, the pressing area was construed as follows:

“Pressing area” means “the surface area on the handle which moves about 0.9 to 1 inch toward the base as the handle moves from the rest position to the prerelease position, measured by whichever creates a smaller area of (a.) the distance traveled along an axis perpendicular to the base or (b.) the straight line distance traveled by a point between the two positions.”

(Docket No. 87 at 29.) Despite the Court’s attempt to construe the claims in the '709 patent to provide a workable way to measure the handle travel at the pressing area, it has become clear that the claims are “insolubly ambiguous” because there is no way to determine the proper method to measure the handle travel distance and no claim construction could provide that answer.

The inability to determine which method of measurement to use is critical to definiteness because the method used can determine whether the pressing area is “near” the front end of the handle and whether an accused stapler has a handle that moves the required distance at the pressing area. For example, Novak testified at his deposition that the pressing area on the EX-5 accused stapler created by using the point-to-point measurement method was not “near a front end of the handle,” whereas the pressing area creating by using the vertical measurement method was. (Trial Tr. at 71-74 (Day 2 Afternoon).) Although he contradicted himself at trial when he testified that the pressing area on the EX-5 produced by both measurement methods was “near” the front end of the handle and the jury was entitled to disregard this impeachment in deciding the factual issues of anticipation, obviousness, and infringement, this still suggests that the method of measurement could very well determine whether a device is covered by the claims in the '709 patent.

Perhaps more important, the method of measurement proved outcome-determinative at summary judgment on the issue of invalidity. In moving for summary judgment, Staples argued that the prior art EasyShot stapler invalidated the '709 patent because it had a pressing area in a nearly identical place as the accused staplers, when comparing the EasyShot’s point-to-point pressing area to the CX-l’s point-to-point pressing area; the same was true with the vertical measurements. (Docket No. 155 at 29.) Accentra defeated summary judgment on this point by arguing that, consistent with the Court’s construction of the claims over handle travel distance, the relevant comparison was the pressing area on the CX-1 produced by the vertical measurement method (which produced the smaller pressing area) and the pressing area on the EasyShot produced by the point-to-point measurement method (which produced the smaller pressing area). (Docket No. 175 at 12-13.) When the pressing areas were compared in this way, there was at least a jury question whether the pressing area on the EasyShot was not near the front end of the handle, while the pressing area on the CX-1 was. (Docket No. 211 at 27-31.) Although arguably consistent with the Court’s claim construction at the time, this approach demonstrates that the method of measurement could very well determine whether a person skilled in the art was practicing the invention disclosed in the '709 patent or merely practicing the prior art.

There is nothing in the claims language or specification to suggest the proper method of measuring the handle travel distance. The claims language prescribes only the travel distance of the pressing area on the handle (“0.9 to 1 inch” and “about double”), and the specification refers to the pressing area in only two places, neither of which discusses how the pressing area should be measured. (Cuomo Decl., Ex. 1 ('709 Patent), col. 1, 11. 51-54, col. 6, 11. 54-56.) Likewise, at trial, the parties’ experts agreed that both methods were legitimate ways to measure handle travel in order to determine the location of the pressing area. (Trial Tr. at 70 (Day 2 Afternoon); Trial Tr. at 73 (Day 5 Afternoon).)

Tellingly, Accentra points to no intrinsic evidence to suggest that one method of measurement is required over any others. Instead, Accentra now argues — for the first time — that the proper construction of the claims covering handle travel distance call for the point-to-point measurement, pointing first to a single comment by its expert Novak at trial that, despite admitting that there are two legitimate ways to measure handle travel, “[tjhere may be a scientific basis that I personally would favor the point to point.” (Trial Tr. at 70-71 (Day 2 Afternoon).) Accentra has now submitted an entirely new declaration from Novak in conjunction with its supplemental brief, in which Novak conceded that “there is no intrinsic or extrinsic evidence that would indicate to a person of ordinary skill in the art which of at least two possible methods of measurement is required to measure the handle travel distance, or that would support the construction that a person of ordinary skill in the art would use the smaller pressing area produced by those methods to place the pressing area on the handle.” (Novak Decl. ¶ 5.) He nevertheless opines that the point-to-point measurement is the only proper measure because it “is the only type of measurement that can be used in assessing infringement of the asserted claims.” (Id. ¶ 6.)

There are several reasons why Accentra’s evolving interpretation of the '709 patent does not support a construction to render the claims definite. First, Novak’s testimony at trial carries little weight at claim construction because Novak’s own preference of the point-to-point method over the vertical method is not probative of how a person skilled in the art would have understood how to measure handle travel. See Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d 1279, 1290-91 (Fed.Cir.2008) (finding expert testimony did not support limited claim construction of “computer” and “computer system” because “[t]hat testimony simply recites how each expert would construe the term ‘computer system’ based on his own reading of the specification,” and “[s]uch expert testimony, which does not identify the ‘accepted meaning in the field’ to one skilled in the art, is unhelpful.”); Sinorgchem Co., Shandong v. Int’l Trade Comm’n, 511 F.3d 1132, 1137 n. 3 (Fed.Cir.2007) (according “little or no weight” to expert testimony of meaning of term because the experts “did not identify any evidence that those skilled in the art would recognize [the disputed term], or any term used in the specification, has an accepted meaning in the field of chemistry.”); see also Gen. Protecht Group, Inc. v. Int’l Trade Comm’n, 619 F.3d 1303, 1310-11 (Fed.Cir.2010) (“None of the experts identified a particular meaning in the art, and an expert’s subjective understanding of a patent term is irrelevant.” (citing Symantec and Sinorgchem)).

Second, Novak’s new testimony must be disregarded because it is procedurally improper. Unsurprisingly, Staples vehemently objects to the Court considering this new evidence at this stage, and rightly so. (Docket No. 523.) As the Federal Circuit “has repeatedly explained, ‘litigants waive their right to present new claim construction disputes if they are raised for the first time after trial.’ ” Lazare Kaplan Int’l, Inc. v. Photoscribe Techs., Inc., 628 F.3d 1359, 1376 (Fed.Cir.2010) (citing Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 694 (Fed.Cir.2008)). As noted above, Staples raised the indefiniteness of the handle travel limitation at the claim construction stage and Accentra did not urge the Court to construe the claims to require a particular method of measurement. Instead, Accentra defended against indefiniteness at the claim construction stage simply by arguing that no construction of any of the terms in the '709 patent was necessary (Docket No. 57 at 19, 22) and that Staples’ expert’s vertical and point-to-point measurements of the handle travel distance yielded differing results of the location of the pressing area that amounted only to a “rounding error,” suggesting that the method of measurement made no difference to the claims (Docket No. 69 at 23). And adopting a new claim construction now would prejudice Staples, which had no opportunity to defend against Accentra’s proposed construction at trial (or by cross-examining Novak on his new opinions). See Pressure Prods., 599 F.3d at 1315-16.

Third, even if Novak’s new testimony is not proeedurally improper, like his trial testimony, it lends little support to Accentra’s claim that a person skilled in the art of stapler design would know to use only the point-to-point method to measure the handle travel distance as disclosed in the '709 patent. In his new declaration, Novak claimed that, “barring any instructions or other factors to the contrary,” “one of ordinary skill in the mechanical arts in general, and stapler design in particular,” would measure the distance any mechanical component travels by using the “straight-line distance traveled by a point on the component.” (Novak Decl. ¶ 7.) He explained that he “see[s] no reason why one of ordinary skill in the art of stapler design would deviate from” the point-to-point method “when determining the distance the pressing area moves as the handle moves from the rest position to the pre-release position (as recited in claim 24), or when determining a handle pressing distance defined by the distance between the pressing area at the handle rest position and the pressing area at the handle pre-release position (as recited in claim 27).” (Id. ¶ 8.) He further contended that the specification supports this conclusion because, in the invention covered by the '709 patent, “[i]t is desirable to store sufficient energy in the power spring so that the stapler can drive a staple through multiple sheets of paper,” and the point-to-point measurement encompasses the “total displacement of the handle,” whereas the vertical measurement “does not reflect the total amount of energy stored in the power spring as a result of the displacement of the handle.” (Id. ¶¶ 9-11.) Finally, he noted that both he and Staples’ expert Feeley measured the travel of the striker with the point-to-point method, which he claims supports his position that the same measurement method should be used to measure the handle travel. (Id. ¶ 12.)

Yet, Novak cited no actual evidence to support his opinions other than his own statements, which alone warrant little weight in the claim construction context. See Sinorgchem, 511 F.3d at 1137 n. 3. Indeed, even his interpretation of the specification indicated that the point-to-point measurement method would merely “best” reflect the desirable characteristic of storing energy in the power spring, not that this method was required, and the value of his own subjective view of the specification is minimal, given that he provided no evidence that a person skilled in the art would similarly view the specification as requiring the point-to-point method. See Symantec, 522 F.3d at 1290-91.

Moreover, Novak’s opinions are subject to reasonable dispute, undermining the value of Novak’s testimony as extrinsic evidence that the point-to-point measurement method is required by the claims and specification. In addition to objecting to Novak’s new testimony, Staples offered rebuttal opinions from its expert Feeley that raise serious questions about the persuasive value of Novak’s views. For example, Feeley explained that Novak’s comparison to the method of measuring the striker travel was irrelevant to selecting the proper method of measuring the handle travel because the striker moves within a linear channel, which produces an identical travel distance whether the point-to-point or vertical measurement method is used. (Feeley Deck ¶¶ 7-10.) Feeley also disagreed with Novak’s opinion that a person of skill in the art would view the claim language and specification as requiring the point-to-point method of measurement because the method of measurement would be dictated largely by the measuring equipment available and readily available equipment (such as the computer-assisted drawing (or “CAD”) program) could measure in any of the ways at issue here-. {Id. ¶ 12.) Moreover, Feeley believed that Novak’s interpretation of the portion of the specification focused on the stored energy in the power spring was suspect because the stored energy is dictated by the design of the power spring itself, not the handle travel distance. {Id. ¶ 14.) Finally, Feeley disagreed with Novak’s opinion that the point-to-point measurement method was required in light of the “interrelationship between the handle displacement and energy storage” because the concept of the handle moving independently of the striker is not new with the '709 patent. {Id. ¶ 15.) Thus, there is no intrinsic evidence and little extrinsic evidence to indicate the method to use to measure the handle travel.

Because no intrinsic or extrinsic evidence illuminates the outcome-determinative issue of which method of measurement should be used to measure the handle travel distance in order to locate the pressing area, the Court finds this case to be indistinguishable from Honeywell International, Inc. v. International Trade Commission, 341 F.3d 1332 (Fed.Cir.2003). In that case, the patent-in-suit covered a process for treating a particular type of yarn; the parties disputed the method by which to prepare yarn samples to measure the “melting point elevation” (“MPE”), a claimed feature of the invention that required the yarn to fall within a specified MPE range at some point during the process. Id. at 1334-35. There were four possible methods to prepare samples in order to test the melting point, and each method could cause the MPE to vary greatly; as a result, some of the test-preparation methods would have given rise to infringement, while others would not have. Id. at 1336.

The court invalidated the patent as indefinite, finding that “neither the claims, the written description, nor the prosecution history reference any of the four sample preparation methods that can be used to measure the MPE.” Id. at 1339. The court identified three possible claim constructions: the “any one method” construction, which would have required that the MPE fall within the claimed values using any one test-preparation method; the “all methods” construction, which would have required that the MPE fall within the claimed values using all test-preparation methods; and the “ball method” construction, which would have required that the MPE fall within the claimed values using the “ball method” of test preparation, regardless of the results using the other methods. Id. The court found all the methods problematic: the “ball method” construction would have improperly imported limitations outside the bounds of the patent; the “any one method” construction would have produced some results that infringed and some that did not, so competitors would not have known whether they were practicing the invention; and the “all methods” construction would have rendered the invention inoperable. Id. at 1341-42. The court suggested that the “any one method” construction might have been permissible if the different methods produced “essentially identical results,” but they did not. Id. at 1341.

As in Honeywell, there is nothing in the intrinsic and extrinsic evidence related to the '709 patent to indicate which of several possible measurement methods should be used. Allowing for any method of measurement suffers from the same problem identified in Honeywell: the method used (point-to-point or vertical) can dictate whether a competitor’s stapler is practicing the invention with a pressing area that is “near” the front end of the handle and that moves the required handle travel distance. Similarly, Accentra’s newly proposed construction limited to the point-to-point method would improperly import a limitation not provided by the patent, just as the “ball only method” construction would have improperly imported a limitation into the patent in Honeywell. Just as the court in Honeywell concluded, the Court concludes that the '709 patent must be invalidated as indefinite.

Just before oral argument in this case, Accentra cited a recent Federal Circuit opinion in which the Federal Circuit distinguished Honeywell and found the claims at issue to be definite. See Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1368 (Fed.Cir.), reh’q and reh’q en banc denied (Aug. 11, 2011), petition for cert. filed (Nov. 9, 2011). In Wellman, the patents-in-suit covered resins for use in plastic beverage containers, and one limitation required that the resin “has a heating crystallization exotherm peak temperature (Tch ) of more than about 140° C. at a heating rate of 10° C. per minute as measured by differential scanning calorimetry [‘DSC’].” Id. at 1358. The district court found the claim indefinite for its failure to disclose sample conditions and testing parameters essential for obtaining consistent DSC measurements, particularly with regard to measurement of moisture content and thermal history. Id. at 1359.

The Federal Circuit reversed, finding the claims were definite. Id. at 1366. With regard to moisture content, while there was no intrinsic evidence to indicate how to control the specific moisture conditions of the covered resin, there was published standard industry guidance on conditioning plastics for DSC and the patentee’s expert explained that a person skilled in the art would have interpreted the claims at issue “in view of the internationally recognized” guidance. Id. at 1367-68. In light of this evidence, “nothing suggests that a person of skill in the art would fail to account for moisture or otherwise deviate from the standard conditions set forth in” the guidance. Id. at 1368.

Based on this factual record, the court distinguished Honeywell:

In Honeywell, a person of skill in the art had to choose among four different sample preparation methods, with each method influencing whether the accused products fell within the scope of the asserted claims. This court concluded that the claims were insolubly ambiguous, and hence indefinite, because no intrinsic or extrinsic guidance indicated a single preferred method of sample preparation. Notably, the patentee’s preferred construction in that case favored an unpublished method documented only in the patentee’s proprietary files.

This case is very different. While the claims do not recite specific moisture conditions, the well-known practice in this field as illustrated by the [published guidance] made this a routine concern to a person of ordinary skill in the art. This court has repeatedly stated that a patent application need not include in the specification that which is already known to and available to a person of ordinary skill in the art. Because a person of ordinary skill in the art would have followed published industry standards, the asserted claims of the Well-man patents are not indefinite for failing to specify moisture conditions.

Id. (internal citations omitted). The court further found that the industry guidance would have indicated to a person skilled in the art how to test the resins to account for thermal history. Id.

Honeywell, and not Wellman, remains the controlling ease here because Accentra has offered nothing close to the standard industry guidance in Wellman that a person skilled in the art would have used to interpret the claims at issue. The only extrinsic evidence to even suggest that a person might use the point-to-point method of measuring handle travel distance over other methods was the conclusory opinion of Accentra’s expert, which was procedurally improper, uncorroborated, and subject to strenuous dispute. In the end, the instant case is no different from Honeywell, which, as recognized by Well-man, found the claims indefinite because multiple outcome-determinative sample preparation methods could have been used and there was no intrinsic or extrinsic evidence to indicate which one was proper.

Therefore, the Court GRANTS Staples’ motion for judgment as a matter of law that the '709 patent is invalid and the jury’s verdict of infringement and damages must be set aside as to that patent.

C. Sufficiency of Evidence of Infringement

Staples also moves for judgment as a matter of law on the issue of infringement of all three of the patents-in-suit. Because the Court has found the '709 patent invalid as indefinite, Staples’ challenge to the jury’s infringement finding for that patent is moot and the Court addresses only Staples’ arguments as to the other two patents. The Court concludes that substantial evidence supported the jury’s verdict of infringement of those patents.

1. '768 Patent

Staples challenges the sufficiency of the evidence of infringement of the '768 patent, which requires that “the base sidewalls surround the track pull in the closed stapler position.” (Cuomo Decl., Ex. 13 ('768 Patent), col. 12, 11. 15-16.) At claim construction, the Court construed the term “surround” to mean “to enclose or confine so as to bar escape.” (Docket No. 87 at 21.) Based on a dispute between the parties at summary judgment over whether the term “sidewalls” could include other features, the Court construed the term “sidewalls” to mean “vertical walls that are extending from the base, which can include additional structures or features.” (Docket No. 219 at 14-15.)

Staples raises several challenges to the sufficiency of the evidence that supported the jury’s verdict of infringement, none of which is availing. First, Staples argues that a latch holds the track pull in place in the accused staplers, so the sidewalls of those staplers do not “surround” the track pull so as “to enclose or confíne so as to bar escape.” However, the evidence at trial amply demonstrated that the sidewalls, in fact, bar the track pull from escaping, even if a latch also exists. For example, Novak testified that, consistent with the Court’s construction, the projections attached to the sidewalls of the accused staplers “block or surround or prevent the track pull from being withdrawn” and “[t]he track pull can’t move backwards or up and down because contact is made between [the projections] and between the track pull, and the feature is structured that it’s attached and extends from the sidewall.” (Trial Tr. at 70-71 (Day 2 Morning).) Even Staples’ expert testified that the projections attached to the sidewalls existed “to create a restrictive space to prevent the stapler track pull from inadvertently being operated, you know, accidentally operated.” (Trial Tr. at 97 (Day 5 Afternoon).)

Second, Staples argues that the connecting “bridge” structure in the accused staplers designed to confine the track pull is not itself a “sidewall.” At its essence, this argument is little more than an objection to the Court’s construction of the term “sidewalls,” which allowed for additional structures or features. As the claim was construed, however, the jury’s verdict of infringement was supported by substantial evidence. For example, Novak testified that each accused stapler model has features attached to the sidewalls (i.e., “little steps”) that bar the track pull from escaping. (Trial Tr. at 71 (Day 2 Morning).) In the CX-1, DX-1, and High Capacity models, those structures are molded into a single piece of plastic that spans the entire bottom of the stapler, which Staples calls a “bridge.” Staples’ expert testified that this structure exists in part to “keep the sidewalls from splaying outwardly or from towing in during the manufacturing process.” (Trial Tr. at 97 (Day 5 Afternoon).)

Novak testified that the “little steps” connected to the sidewalls fell within the '798 patent’s claim limitations despite the presence of the additional connecting “bridge” because, as a “comprising” claim, an accused device could have additional features and still be infifinging. (Trial Tr. at 71 (Day 2 Morning).) In his words, the continuous bar was “an extra feature that’s beyond the sidewalls, beyond the structure that’s part of the sidewall, that prevents [or] bars from escape of the track and track pull. We have this additional structure, but it doesn’t affect my opinion.” (Id.) On cross-examination, Novak admitted that he was not sure whether the entire “bridge” itself was a “sidewall,” but indicated that it was adjoining the features extending from the sidewall that he considered part of the sidewalls:

Q. Now, you testified in your direct examination that there was a bar on the underside of the stapler, the CX-1; is that right?

A. I said there was a bar adjoining the features on the sidewall extending ■from the sidewall, yes.

Q. And that bar is substantially parallel to the base.

A. Yes.

Q. So when you found infringement, you’d agree that that bar itself is not a sidewall; right?

A. Well, it’s not clear to me where the feature on the sidewall begins and the bar begins or whether it’s the same. It’s — it’s—it can’t be a part of the left sidewall and part of the right sidewall at the same time; so as far as language and definitions are concerned, I don’t know, but what I do know is that coming off the sidewall, the structures that are attached to the sidewall are part of the sidewall.

Q. So let me just see if I understand what you’re saying. You’re cutting the structure, you’re considering this portion here (indicating), the portion underneath the sidewall, you’re saying that is a feature, an additional feature of the sidewall?

A. It’s part of the sidewall.

Q. And you’re saying it’s separate from the bar structure as a whole?

A. I think I said I don’t know.

Q. You don’t know whether they’re two structures or one structure?

A. Well, it’s all molded. It looks like it’s all molded as one piece.

Q. But all of it is on the underside of the track pull; right?

A. It looks like it, yes.

(Trial Tr. at 49-51 (Day 2 Afternoon).)

Staples argues that Novak was attempting to improperly modify a “unitary structure” of the “bridge” at the bottom of the accused staplers to find infringement, which is not permitted. See, e.g., Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330 (Fed.Cir.2001) (“[Tjhat a device is capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement.”). But that is not what Novak did. He opined that the addition of the complete bridging structure did not alter his opinion that the portions of the structure attached to the sidewalls met the claim limitations.

The jury was entitled to credit Novak’s opinion that the complete “bridge” was merely an addition that did not defeat the “comprising” claim in the '768 patent. See Genentech, Inc. v. Chiron Corp., 112 F.3d 495, 501 (Fed.Cir.1997) (“ ‘Comprising’ is a term of art used in claim language which means that the named elements are essential, but other elements may be added and still form a construct within the scope of the claim.”). Even Staples’ expert Feeley’s opinion of no infringement supports Novak’s conclusion that the complete “bridge” was merely an additional feature that did not affect infringement. He explained that the complete bridge on the CX-1, DX-1, and High Capacity models served a purpose of preventing the sidewalls from splaying, whereas the EX-5 model did not have a complete “bridge” because it was a metal stapler and had “less of a need for controlling the towing out and towing in of the sidewalls during manufacturing, so it doesn’t have a bridge running from one side to the other. So it only contains that portion which was necessary — two little shelves to prevent the latch from being unintentionally actuated.” (Trial Tr. at 98 (Day 5 Afternoon) (emphasis added).) Thus, the complete bridge was unnecessary to “surround” the track pull as required by the '768 patent and the jury could have credited Novak’s testimony that the bridge was simply an additional structure that did not affect infringement.

Finally, Staples contends that the projections in the EX-5 model (and the end portions of the “bridge” on the CX-1, DX-1, and High Capacity models) are not “sidewalls” or even “additional structures” as required by the '768 patent, relying entirely on its own expert’s opinion on the issue. Of course, the Court must disregard Staples’ evidence in ruling on a motion for judgment as a matter of law, since the jury was entitled to (and did) reject it. See Wallace, 479 F.3d at 624. As discussed, Novak testified that the structures on the accused staplers were sidewalls that fell within the claim language and therefore infringed the '768 patent. There was substantial evidence to support the jury’s verdict of infringement and Staples’ motion with regard to the '768 patent is DENIED.

2. '692 Patent

Claims 6 and 7 of the '692 patent cover a safety mechanism in a spring-powered stapler. Independent claim 6 discloses in relevant part:

A safety mechanism for a self-powered tool that ejects and drives fasteners into a working surface, comprising: ... a locking means disposed at the front end of the body and having a first portion that is biased out from the bottom of the body, the locking means having a second portion that is biased to advance into at least one of the power spring, striker, and handle to prevent at least one of the power spring, striker, and handle respectively from moving to complete a cycle to eject the fasteners from the guide track, wherein the first portion of the locking means presses the cover plate adjacent to the depression while in the pressed position of the base to retract the second portion; and

a biasing means biasing the locking means.

(Cuomo Deck, Ex. 12, col. 13, ll. 34-45.)

Independent claim 7 discloses in relevant part:

(Id., col. 14, ll. 12-18.)

At the claim construction stage, the Court found the term “locking means” to be a means-plus-function element pursuant to 35 U.S.C. § 112, ¶ 6 and construed the function as “locking or interfering with at least one of the power spring, striker, and handle to prevent or block at least one of the power spring, striker, and handle respectively from moving to complete a cycle.” (Docket No. 87 at 16.) Based on the parties’ general agreement, the Court construed the structure as:

a safety hook (structure 70 in Figures 1, 2, 4, and 5-9), a sensing end of a button bar (structure 306 in Figures 1, 2, 4 and 5-9), a bottom pivoting lock bar (180a in Figures 11-13); a pivoting lock bar (180b in Figures 14-18); a lock bar that undergoes a cam action (structure 280 in Figures 19-20).

(Id. at 17.) At trial, Accentra presented evidence and argued that the safety mechanisms in the accused staplers were equivalent under 35 U.S.C. § 112, ¶ 6. In finding the '692 patent infringed by each of the accused staplers, the jury must have agreed. Staples now moves to set aside that finding.

In order for an accused product to infringe pursuant to § 112, ¶ 6, it must be “equivalent,” that is, it must “perform the identical function” as the patented invention and must “be otherwise insubstantially different with respect to structure.” Kemco Sales, Inc. v. Control Papers Co., 208 F.3d 1352, 1364 (Fed.Cir.2000). Structures are equivalent under § 112, ¶ 6, then, “if they perform the identical function, in substantially the same way, with substantially the same result.” Id.

Staples contends that Accentra’s expert Gary Novak “never expressly compared the safety in the accused products to that described in the patent and never explained how or why a person of ordinary skill in the art would consider them to be equivalent.” (Mot. 12.) Staples’ view of the record is both unduly narrow and factually incorrect. Novak opined that the structures were, in fact, equivalent and explained how that was so. The jury was free to accept his testimony, which was substantial evidence to support the jury’s finding of infringement.

At trial, Novak testified that the structure of the safety mechanisms in the accused staplers (which did not materially vary among the different models) was substantially equivalent to the structures disclosed in Figures 1-10 and Figures 19 and 20 in the '692 patent. (Trial Tr. at 5, 14 (Day 2 Afternoon).) He drew these conclusions based upon his detailed explanation of the way in which the structure of the safeties in the accused staplers performed the function of “locking or interfering with at least one of the power spring, striker, and handle to prevent or block at least one of the power spring, striker, and handle respectively from moving to complete a cycle,” which he opined was substantially similar to the way in which the structures disclosed in the '692 patent performed the identical function. For example, Novak presented an animated demonstrative as to the way the cam-driven lock bar structure disclosed in Figures 19 and 20 moved horizontally to perform the required function (Id. at 5-8 (Day 2 Afternoon)) and then used a similar animated demonstrative of the EX-5 stapler model to show how the camming structure of the accused staplers also moved in a substantially horizontal way, which was substantially the same as the structure disclosed in Figures 19 and 20 (Id. at 8-11). Novak also testified that the two-piece rigid structure in Figures 1-10 moves horizontally to perform the required function and opined that the structures of the safeties in the accused devices performed the same function in substantially the same way. (Id. at 12-14.) Although Novak did not explicitly compare the accused safeties to the structures in Figures 1-10, the jury had already been presented with his testimony on the structure of the accused safeties, so the jury had the evidence upon which to draw the conclusion that the structures were equivalent. The jury was entitled to rely on Novak’s explanation of how the safeties in the '692 patent and the accused devices worked and rely upon his ultimate opinion of equivalence to conclude that the safeties in the accused devices were, in fact, equivalent.

For this reason, the two published cases cited by Staples are distinguishable because in both, the patentee lacked evidence on equivalence of the structures at issue. See Toro Co. v. Deere & Co., 355 F.3d 1313, 1324 (Fed.Cir.2004) (affirming summary judgment because patentee “fail[ed] to articulate the technical similarities” between the structures alleged to be equivalent, “or why the differences between the two systems are insubstantial, particularly with respect to the way the claimed function is performed.” (emphasis in orig.)); Alpex Computer Corp. v. Nintendo Co., 102 F.3d 1214, 1222 (Fed.Cir.1996) (rejecting equivalence because patentee’s expert opined only on the similarity of function, not structure). Here, by contrast, Novak explained how the structures were similar by, for example, demonstrating that the structure in Figures 19 and 20 called for a cam action and horizontal movement, which was present in the EX-5 safety mechanism (and other accused stapler models). The evidence was sufficient to sustain the jury’s finding of equivalence.

Staples argues that Novak’s testimony was nevertheless insufficient because its expert Feeley testified that the safety mechanisms in the accused staplers were not equivalent. (Trial Tr. at 105-17 (Day 5 Afternoon).) Feeley opined that the accused staplers had safeties with two pieces that slide in different directions, which are substantially different from the structures in the patent that disclose essentially one-piece structures that pivot. (Id.) Once again, though, the jury was entitled to reject Feeley’s testimony, and the Court must disregard it in ruling on Staples’ motion.

In any case, while Novak agreed on cross-examination that there were differences between pivoting and sliding generally and that a one-piece mechanism provides limitations that a two-piece mechanism does not (Trial Tr. at 33-34 (Day 4 Morning)), he testified that the key movement of the safety disclosed in Figures 19 and 20 was horizontal: “When the cam or lock bar is pushed up, the blocking surface moves horizontally.” (Trial Tr. at 7 (Day 2 Afternoon).) This interpretation was confirmed by the '692 patent specification, which, rather than being limited to pivoting action, discloses that in Figures 19 and 20, the “[l]ock bar 280 is slidably and pivotably fitted to body 210 and undergoes a cam action,” and “[i]n its cam action, lock bar 280 slides, jogs, and/or pivots along a path defined by guides 218 formed inside body 210.” (Cuomo Deck, Ex. 12, col. 11, 11. 21-28 (emphasis added).) Novak also testified that the key movement for the structure disclosed in Figures 1-10 was horizontal, explaining that the structure converts vertical motion to horizontal motion. (Trial Tr. at 12-13 (Day 2 Afternoon); Trial Tr. at 33 (Day 4 Morning).) As for the two-piece mechanism, while Novak testified that it might have been different from a one-piece mechanism, he did not specifically testify that any difference was substantial (Trial Tr. at 33-34 (Day 4 Morning)), and, in any case, he testified that the structures in Figures 1-10 teach that a two-piece structure could be used and still be equivalent (Trial Tr. at 10, 12 (Day 5 Afternoon)).

Under § 112, ¶ 6, the issue of whether an accused structure is equivalent to the structure in a patent “is a question of fact.” Utah Med. Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376, 1383 (Fed.Cir.2003). The jury was free to reject Feeley’s testimony and credit Novak’s testimony, which provided substantial evidence for the jury to find that the safeties in the accused staplers infringed the '692 patent pursuant to § 112, ¶ 6. Staples’ motion with respect to the '692 patent is DENIED.

D. Sufficiency of Evidence of Reasonable Royalty

Staples moves to reduce the jury’s total reasonable royalty award of $2.2 million for several reasons. First, Staples argues that only a reasonable royalty of $229,000 is supported by the evidence — which was the amount testified to by Staples’ damages expert Christopher Barry — because Accentra’s expert Glen Newman’s testimony was unreliable under Daubert and cannot be properly considered in determining whether sufficient evidence supported the jury’s verdict. Second, Staples contends that, even if Newman’s testimony was not deficient, he testified to a reasonable royalty of at most $1.7 million, so the additional $505,192 awarded by the jury was not supported by the evidence. Finally, Staples argues that the jury’s royalty award of $321,738 for infringement by the High Capacity stapler must be reduced because Newman applied the same royalty rate of 10% to that stapler as he applied to the other accused staplers, even though the High Capacity model was accused of infringing only the '768 and '692 patents. Accentra briefly responds to these points, and primarily requests that, if the Court finds any reason to reduce or set aside the jury’s verdict, it be granted a new trial on damages.

The Court finds that Staples waived most of its objections to Newman’s testimony and the objections not waived did not render his testimony inadmissible and insufficient to support a reasonable royalty rate of 10%. However, the jury’s damages award exceeded even that rate, and it must be reduced to 10%, which is the highest reasonable royalty rate supported by the evidence at trial. Moreover, the jury’s apportionment of damages was not supported by substantial evidence because Newman failed to apportion damages among the patents, which was necessary because the Court has found the '709 patent to be invalid and the High Capacity stapler was accused of infringing only the '769 and '692 patents. However, because Staples’ damages expert apportioned the royalty rate among patents, albeit using a much lower rate than 10%, the Court can apportion the 10% royalty rate per patent, per product, and enter a damage award accordingly. Finally, because the reduction of the damages award is based on a legal defect in the evidence, not on the Court’s reweighing of the evidence, no new trial is necessary.

1. Admissibility of Newman’s Testimony

Staples argues that the Court must ignore Newman’s testimony in ruling on its Rule 50(b) motion because it is inadmissible under Daubert. See Weisgram v. Marley Co., 528 U.S. 440, 453, 120 S.Ct. 1011, 145 L.Ed.2d 958 (2000) (noting that inadmissible expert testimony cannot support a verdict because inadmissible evidence “contributes nothing to a ‘legally sufficient evidentiary basis’ ” under Rule 50(a)). Staples identifies several objections to support this contention: (1) Newman did not provide sufficient testimony on the Georgia-Pacific factors to support his royalty calculation; (2) he failed to tie the reasonable royalty to the patented features of the accused staplers; (3) he relied on a so-called “25% Rule of Thumb,” which was recently disapproved by the Federal Circuit; (4) he testified to matters to which he had no personal knowledge; and (5) he applied the same royalty rate to the High Capacity stapler as he applied to the CX-1, DX-1, and EX-5 models, even though the High Capacity was accused of infringing only two of the three patents-in-suit. The Court concludes that Staples waived objections (1), (3), and (4) by failing to raise them before now and concludes that objections (2) and (5) do not render Newman’s testimony inadmissible, although they affect whether substantial evidence supported the jury’s damages award.

a. Objections (1), (3), and (U) Are Waived

In order to advance a post-verdict judgment as a matter of law under Rule 50(b), a party must comply with Rule 50(a), which strictly requires that the motion first be made after the close of all evidence, but before the verdict. Zhang v. Am. Gem Seafoods, Inc., 339 F.3d 1020, 1029 (9th Cir.2003). The failure to timely raise an issue constitutes “a complete waiver, precluding [the] consideration of the merits of the issue.” Id. at 1028-29. Specifically with regard to expert testimony, “the appropriate time to raise Daubert challenges is at trial” and failing to do so results in waiver, even when the argument is “couche[d] ... in terms of insufficiency of the evidence.” Marbled Murrelet v. Babbitt, 83 F.3d 1060, 1067 (9th Cir.1996). This failure deprives the opposing party of the chance to remedy the defect or shore up the showing with other evidence. See Bartleson v. United States, 96 F.3d 1270, 1277-78 (9th Cir.1996) (finding objections to expert’s testimony after trial waived for failure to object to evidence before it was admitted or before judgment was entered). And the ability to challenge certain evidence is not preserved merely by lodging any objection before or during trial; the specific grounds advanced for exclusion must have been raised. Price v. Kramer, 200 F.3d 1237, 1252 n. 16 (9th Cir.2000) (“The fact that the defendants made the other evidentiary objection at trial does not preserve the objection they failed to make.”).

Nothing in the record indicates that Staples raised grounds (1), (3), and (4) at any point before the jury returned its verdict. Before trial, Staples filed a motion in limine to exclude Newman’s testimony, but that motion was limited to two alleged flaws in Newman’s opinion of reasonable royalties: (1) Newman failed to tie his royalty calculation to the specific patented features of the accused staplers; and (2) Newman’s testimony as to the High Capacity model was flawed because he applied the same royalty rate to it, even though that model was accused of infringing only the '768 and '692 patents. (Docket Nos. 239, 309.) After the close of Aecentra’s case, and again at the close of all testimony, Staples moved for judgment as a matter of law on damages, referring back to those two grounds raised in the motion in limine. (Trial Tr. at 129-30 (Day 5 Afternoon); Trial Tr. at 24 (Day 6 Morning).) At no point before the verdict did Staples challenge Newman’s testimony based on the “25% Rule of Thumb,” his lack of personal knowledge, or the sufficiency of Newman’s testimony on the Georgia-Pacific factors. As a result, those objections are waived.

b. Objection (2): Tying Royalty to Patented Features

Expert testimony on a reasonable royalty rate “must ‘carefully tie proof of damages to the claimed invention’s footprint in the market place.’ ” Uniloc, 632 F.3d at 1317. On a post-verdict motion for judgment as a matter of law, the Court “must scrutinize the evidence carefully to ensure that the ‘substantial evidence’ standard is satisfied, while keeping in mind that a reasonable royalty analysis ‘necessarily involves an element of approximation and uncertainty.’ ” Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1336 (Fed.Cir.2009).

Staples argues that Newman’s testimony must be excluded because he did not attempt to tie demand to any individual patent, but analyzed the patents collectively to determine the reasonable royalty. (See, e.g., Trial Tr. at 78 (Day 5 Morning).) The Court already rejected this argument in Staples’ motion in limine and there is nothing in the trial record to change that conclusion. There was nothing inherently unreliable about Newman’s assumption that all three patents were infringed in determining the reasonable royalty rate that would have arisen from hypothetical negotiations between the parties; he testified that damages experts routinely assume infringement liability in order to assess damages. (Trial Tr. at 63 (Day 5 Morning).) As Newman suggested, in reconstructing the hypothetical negotiation, Accentra would have come to the negotiating table with the patents at issue and would have negotiated a reasonable royalty for all of those embodied in the accused products. (Trial Tr. at 57 (Day 5 Morning).) In fact, Newman testified that Worktools took a