Wednesday, July 11, 2018

The CAFC second guesses CD Cal on relative strength of invalidity theories; remand asks for a more complete explanation

In Polara Engineering v. Campbell, invalidity theories
of defendant Campbell were rejected, but enhanced damage
analysis by CD Cal was rejected.

Campbell Company (“Campbell”) appeals from the final
judgment of the United States District Court for the
Central District of California entering judgment in favor
of Polara Engineering Inc. (“Polara”) on its claim for
infringement of claims 1–4 (“the asserted claims”) of U.S.
Patent 7,145,476 (“the ’476 patent”) and its decision,
following a jury trial, denying Campbell’s post-trial motions
for judgment as a matter of law of invalidity and no
willfulness, and granting Polara’s motion to enhance the
damages award. See Polara Eng’g, Inc. v. Campbell Co.,
237 F. Supp. 3d 956 (C.D. Cal. 2017) (“Post-trial Motions
Opinion”); Judgment, Polara Eng’g, Inc. v. Campbell Co.,
No. SACV-13-00007 (C.D. Cal. Mar. 31, 2017), ECF No.
499 (J.A. 83–84). For the following reasons, we affirm in
part, vacate in part, and remand.1

An argument of invalidity through public use by Campbell
was rejected:

We agree with Polara that substantial evidence supports
the jury’s finding of experimental use that negates
application of the public use bar.
The jury could have properly based its finding of
experimental use on the need for testing to ensure the
durability and safety of the claimed APS. In City of
Elizabeth v. American Nicholson Pavement Co., the Supreme
Court held that testing an inventive pavement for
“usefulness and durability” for six years on a public
roadway constituted experimental use. 97 U.S. 126, 133–
34 (1877). We have similarly recognized as sufficient to
negate the statutory bar experimental use testing performed
“to perfect features inherent to the claimed invention,”
such as “durability.” Electromotive Div. of Gen.
Motors Corp. v. Transp. Sys. Div. of Gen. Elec. Co., 417
F.3d 1203, 1211–12 (Fed. Cir. 2005) (collecting cases);
accord Manville Sales Corp. v. Paramount Sys., Inc., 917
F.2d 544, 551 (Fed. Cir. 1990) (“When durability in an
outdoor environment is inherent to the purpose of an
invention, then further testing to determine the invention’s
ability to serve that purpose will not subject the
invention to a section 102(b) bar.”).
The factual situation here bears a striking similarity
to the situation in City of Elizabeth.

The relative strength of the public use defense was a factor used
by the CAFC to vacate enhanced damages:

The district court referred to Campbell’s invalidity
theories generally in the closeness of the case Read factor.
In determining that this factor was “neutral,” the district
court merely observed that “obviousness was a close call”
and that the “other invalidity theories were weaker.”
Post-trial Motions Opinion, 237 F. Supp. 3d at 993. This
explanation is insufficient for us to determine why the
court viewed this factor as “neutral.” The court’s use of
the relative term “weaker” provides little insight because
it did not explain its reasons for viewing the other defenses,
especially public use, as comparatively “weaker.” We
view the public use defense, which the court did not
explicitly address, as a closer call than obviousness.
Thus, to the extent the district court determined that the
public use defense was weak in this case, the court clearly

Accordingly, we vacate the award of enhanced damages
and remand. See, e.g., Whitserve, LLC v. Comput.
Packages, Inc., 694 F.3d 10, 37 (Fed. Cir. 2012) (remanding
“for a determination of whether enhanced damages
are warranted and an explanation of the grounds for that
determination”); S.C. Johnson & Son, Inc. v. CarterWallace,
Inc., 781 F.2d 198, 202 (Fed. Cir. 1986) (“vacat[ing]
the decision refusing [enhanced] damages under
35 U.S.C. § 284, and remand[ing] for clarification by the
district court”). On remand, we instruct the district court
to provide a more complete explanation, including a
discussion of the public use defense, in exercising its
discretion. We express no view on whether damages
should be enhanced or, if so, by what amount

Note also footnote 1:

Although Polara noticed a cross-appeal from certain
determinations of the district court, it has not pursued
those issues in its briefing before this court.
Accordingly, Polara has not properly raised any issue on
cross-appeal, and we need not address the cross-appeal.


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