What The Jury Didn’t Hear

Submitted by patentadmin on Wed, 04/13/2011 - 22:52

It is often said, by trial lawyers, that if the jury didn’t hear it, it doesn’t count. Well, not always! (Bruce N. Saffran, M.D., PH.D. v. Johnson & Johnson and Cordis Corporation)

Dr. Saffran sued J&J and Cordis, alleging infringement of a patent directed to a medicated stent. The jury found the patent-in-suit to be valid and infringed and determined the damages to be $482 million. They further found the infringement to be willful. The defendants, as might be expected, requested that the trial judge grant them judgment as a matter of law (JMOL) that the infringement was not willful.

A finding of willful infringement requires both “clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent” and that this objectively defined risk “was either known or so obvious that it should have been known to the accused infringer.” The defendants asserted that they had presented “credible” invalidity and noninfringement defenses and, in addition, that they had presented “reasonable” claim construction arguments that would have been “dispositive” if they had been adopted by the Court. Dr. Saffran, quite naturally, took the opposite position, arguing that the defendants did not present credible defenses.

The Court said this was a close one, “[a] reasonable jury could find for either party on the issues of validity and infringement in this case, and although that fact does not automatically immunize an accused infringer from a finding of willfulness, the record developed in this case shows the Defendants presented objectively reasonable and substantial defenses to infringement and validity.” Moreover – this is the important point – “the fact that certain facts were not presented to the jury, such as the close issue of claim construction, does not preclude the court to consider them in its determination, as a matter of law, whether [the infringement was willful]. The Court is aware that the jury did not have the claim construction issues in front of them. The Court, however, takes judicial notice that the claim construction issues were closely contested, and the Court considers this evidence when deciding as a matter of law that there was no willful infringement. Defendants’ proposed interpretation for the claims, although eventually not adopted, was reasonable and based upon the specification and prosecution history of the [patent-in-suit].”

Bye bye, enhanced damages!

THE LESSON TO BE LEARNED: The Court may rely on evidence the jury never heard to overturn a finding of willfulness.

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