The opinion of the court was delivered by: Judge Conner
This is a consolidated patent infringement suit in which Arlington Industries, Incorporated ("Arlington") accused Bridgeport Fittings, Incorporated ("Bridgeport") of infringing claim 8 of United States Patent Number 5,266,050 (the "'050 patent") and Bridgeport sought a declaratory judgment of non-infringement. On September 25, 2009, a jury returned a verdict of infringement and breach of contract in Arlington's favor. (See Doc. 632.) Presently before the court are a total of ten post-trial motions seeking various relief. (See Docs. 640-42, 644-49, 747.) In this memorandum, the court will address Bridgeport's renewed motion (Doc. 647) for judgment as a matter of law and its motion (Doc. 642) for a new trial.
I. Relevant Background & Procedural History
Arlington and Bridgeport manufacture and design metallic and non-metallic electrical conduit fittings, which are used to connect electrical wiring and cable. In 1992, Arlington developed a new type of fitting, intended to replace previous units whose installation required the use of two hands to screw the device into an electrical junction box.*fn1 This new connector featured a circular spring metal adaptor, to which at least two outwardly sprung members were attached at the trailing end. When the adaptor was inserted into the knock-out hole of an electrical junction box, its outwardly sprung members locked the adaptor into place. Thus, Arlington's connector allowed a user to quickly connect the device to a junction box using one hand instead of two, thereby reducing installation time and associated labor costs. Arlington eventually obtained several patents on this product, including, inter alia, the '050 patent.*fn2
In 1999, Bridgeport introduced its own product line of quick-connect fittings called the "Snap-In" and "Speed-Snap" fittings. Two years later, Arlington sued Bridgeport, arguing that the Snap-In and Speed-Snap fittings infringed the '050 patent. The litigation proceeded for three years only to settle on the eve of trial. Bridgeport and Arlington entered into a consent decree on April 7, 2004, wherein Bridgeport (1) stipulated to the '050 patent's validity, (2) admitted that its Snap-In and Speed-Snap fittings infringed the '050 patent, and (3) submitted to entry of a permanent injunction prohibiting it from making, using, selling, offering for sale, or importing the infringing products or "any colorable imitation of such products." (See Doc. 270.) A stipulation of dismissal was entered on April 15, 2004, and the matter was thereafter closed. (Doc. 251.)
In September 2005, Bridgeport designed a new product line of electrical fittings, which it denominated the "Whipper-Snap." Several months later, Arlington notified Bridgeport that various models in its Whipper-Snap line infringed claim 8 of the '050 patent. Bridgeport responded by filing a suit for declaratory judgment of non-infringement on December 19, 2005. This matter was initially assigned to the Honorable A. Richard Caputo. (See Bridgeport Fittings, Inc. v. Arlington Indus., Inc., No. 3:05-CV-2622 (M.D. Pa.), Dkt. No. 1.) In its complaint for declaratory judgment, Bridgeport averred that its Whipper-Snap products were "substantially and materially different" from the Snap-In and Speed-Snap fittings, and requested a judgment of non-infringement for the products designated by catalog numbers 38ASP, 380SP, 841SP, 846SP, 850SP, 8400SP, GF38SP, SG38ASP, and SG38SP.
On February 1, 2006, Arlington countersued, contending that the nine products identified in Bridgeport's complaint infringed its '050 patent, and that Bridgeport was in breach of the consent decree agreed-to by the parties in 2004. (See Bridgeport Fittings, Inc. v. Arlington Indus., Inc., No. 3:05-CV-2622 (M.D. Pa.), Dkt. No. 18 ¶¶ 9, 18-22.) Arlington simultaneously moved to transfer the declaratory judgment action to the undersigned, a motion which Judge Caputo granted on February 6, 2006, (see id., Dkt. No. 19.) In an order dated April 6, 2006, the undersigned consolidated the 2005 declaratory judgment action with Arlington's earlier suit for infringement, and reopened the above-captioned matter. (Doc. 267.)
On May 31, 2006, Arlington filed a separate patent infringement suit, alleging that two of Bridgeport's Whipper-Snap connectors-catalog numbers 3838ASP and 3838SP-were infringing United States Patent Number 6,521,831 (the "'831 patent"). This case was assigned to Judge Caputo, presumably because it concerned a distinct patent and different products. (See Arlington Indus., Inc. v. Bridgeport Fittings, Inc. ("Arlington II"), 3:06-CV-1105 (M.D. Pa.), Dkt. No. 1.) On June 27, 2006, Arlington amended its complaint in Arlington II, alleging that connector models 3838ASP and 3838SP (hereinafter "the duplex connectors") also infringed the '050 patent. (Arlington II, Dkt. No. 3 ¶¶ 10-14.) Although infringement of the '050 patent was now an issue in both lawsuits, neither party moved to consolidate Arlington II with the above-captioned action, and the matters proceeded on distinct, but parallel tracks. Whether this failure to seek consolidation was simply an oversight or an intentional, strategic decision, it is without question the dangling thread that unraveled a myriad of post-trial and, presumably, appellate issues.
The gravamen of the instant matter is the meaning and application of claim 8 of the '050 patent. In its entirety, the claim reads:
A quick connect fitting for an electrical junction box comprising: a hollow electrical connector through which an electrical conductor may be inserted having a leading end thereof for insertion in a hole in an electrical junction box; a circular spring metal adaptor surrounding said leading end of said electrical connector which has a leading end, a trailing end, and an intermediate body; at least two outwardly sprung members carried by said metal adaptor near said trailing end of said adaptor which engage the side walls of the hole in the junction box into which said adaptor is inserted; at least two spring locking members carried by said metal adaptor that spring inward to a retracted position to permit said adaptor and locking members to be inserted in a hole in an electrical junction box and spring outward to lock said electrical connector from being withdrawn through the hole; and an arrangement on said connector for limiting the distance said connector can be inserted into the hole in the junction box. (Doc. 384, Ex. A col. 10.) On February 25, 2008, the court issued a Markman order and held that (1) "'Circular spring metal adaptor' means 'an adaptor made of spring metal that has circular cross sections"; and (2) "'Outwardly sprung members carried by said metal adaptor near said trailing end of said adaptor' means 'members bent outward at an angle relative to the normal plane of the metal adaptor that are part of said adaptor with a portion of each member located near said trailing end of said adaptor.'" (Doc. 376.)
Subsequent to the court's claim construction, the infringement dispute focused upon claim 8's limitation that the quick-connect fitting possess "at least two outwardly sprung members" attached to its spring metal adaptor. Indeed, Bridgeport stipulated that its Whipper-Snap products contained each limitation of claim 8 except the "outwardly sprung members" limitation. (See Doc. 383 ¶ 5.) Each of Bridgeport's Whipper-Snap connectors features at least four tensioning tangs attached to the leading end of the adaptor. Arlington attempted to prove that at least two of these tangs were "outwardly sprung," or, more specifically, that they were "bent outward at an angle relative to the normal plane of the adaptor." In support of its motion for summary judgment, Arlington's infringement expert, Christopher Rahn ("Rahn"), proffered measurements that he performed on 60 individual 38ASP connectors. According to Rahn, the average diameter between the trailing end of the tensioning tangs was greater than the diameter across the connector's anchoring tabs. Therefore, Rahn concluded that the 38ASP's tensioning tangs "have a larger diameter at the trailing end than the main body of the adaptor, and are therefore bent away from the main body." (Doc. 471 at 16.) Arlington went on to argue that because each of the Whipper-Snap products shared an identical design, Rahn's findings were not limited to the 38ASP, but instead held for each of the fifteen accused products. Bridgeport defeated summary judgment in part by asserting that the "connector bodies and adaptors for these various models [the accused products] are manufactured using different dies, and there is no evidence that the dimensions of all the models are identical." (See id. at 19-20.)
On September 14, 2009, this matter proceeded to a jury trial on a total of thirty Whipper-Snap connector models.*fn3 Arlington alleged that the accused products literally infringed the '050 patent, and also infringed under the doctrine of equivalents. In addition, Arlington levied a breach of contract claim, contending that the Whipper-Snap connector models were colorable imitations of the enjoined Snap-In and Speed-Snap products. After ten days of trial, the jury returned a verdict of literal infringement on twenty-nine of thirty products, and determined that one connector model infringed under the doctrine of equivalents. The jury also determined that Bridgeport's infringement was willful, and found it liable for breach of contract on twenty-six of the connectors models. The court entered non-final judgment on October 7, 2009 and post-trial briefing thereafter followed.
Bridgeport moves for renewed judgment as a matter of law and seeks a new trial. A motion for renewed judgment as a matter of law may be granted in a party's favor if "a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue." FED. R. CIV. P. 50(a), (b). The court should grant such a motion "only if, viewing the evidence in the light most favorable to the non-movant and giving it the advantage of every fair and reasonable inference, there is insufficient evidence from which a jury reasonably could find liability." Lightninig Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993). In assessing the sufficiency of the evidence, the court may not weigh the evidence, determine the credibility of witnesses, or substitute its version of facts for the jury's version. Id.
Under Rule 59, the district court may order a new 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). The court's power to grant a new trial is not unlimited, and may only be exercised "to prevent injustice or to correct a verdict that was against the weight of the evidence." Am. Bearing Co. v. Litton Indus., Inc., 792 F.2d 943, 948 (3d Cir. 1984); see also Olefins Trading, Inc. v. Han Yang Chem. Corp., 9 F.3d 282, 289 (3d Cir. 1993) (stating that district court may only grant new trial on weight of evidence "where a miscarriage of justice would result if the verdict were to stand"). When the exclusion of evidence is at issue, a new trial should be granted where "substantial errors" in the rejection of evidence occurred. Goodman v. Pa. Turnpike Comm'n, 293 F.3d 655, 676 (3d Cir. 2002). When a jury instruction is at issue, a new trial should be granted when the error is fundamental or may cause a miscarriage of justice. See Wagner by Wagner v. Fair Acres Geriatric Ctr., 49 F.3d 1002, 1018 n.17 (3d Cir. 1995). A litigant must meet a "high threshold" to obtain a new trial, Grazier v. City of Phila., 328 F.3d 120, 128 (3d Cir. 2003), and absent "a showing of substantial injustice or prejudicial error, a new trial is not warranted and it is the court's duty to respect a plausible jury verdict," Montgomery City v. MicroVote Corp., 152 F. Supp. 2d 784, 795 (E.D. Pa. 2001).
Bridgeport has filed its renewed motion for judgment as a matter of law concurrently with its motion for a new trial. The motions overlap significantly. Both identify several of the same alleged errors of law, and question the sufficiency of the evidence pertaining to similar aspects of the jury's verdict. The court is cognizant that different standards of review apply to the two motions; for example, a new trial may be granted even when judgment as a matter of law on a similar question is inappropriate. See Wagner, 49 F.3d at 1017. For the sake of efficiency, however, the court will simultaneously address issues raised in both of Bridgeport's motions. The court will then address those concerns which are unique to the renewed motion for judgment as a matter of law and the motion for a new trial, respectively.
Fourteen days prior to commencement of trial in the above-captioned matter, the court in Arlington II entered a final judgment of non-infringement in favor of Bridgeport. (See Arlington II, Dkt. Nos. 349-51.) Specifically, Arlington II held that the duplex connector models-3838ASP and 3838SP-did not infringe the '050 patent as a matter of law. Upon receipt of this order, Bridgeport immediately filed a motion to stay trial in the above-captioned matter, and to fully brief the applicability of issue and claim preclusion. Two days after Bridgeport filed its motion to stay, the court conducted a pretrial conference with the parties during which Bridgeport's res judicata claims were extensively discussed.*fn4 At the conclusion of the pretrial conference, the court orally denied Bridgeport's motion for stay, excised the duplex connectors from the instant trial, and permitted the parties to submit additional letter briefing on claim and issue preclusion. On September 10, 2009, the court issued an order setting forth in more detail its rationale for denying Bridgeport's motion for a last-minute stay. (See Doc. 584.)
As the court has attempted to explain on previous occasions, much of the difficulty regarding issue and claim preclusion derives from the inconsistent claim constructions furnished in the matter sub judice and Arlington II. (See id. at 5-6.) Under Federal Circuit law, a Markman order is typically interlocutory in nature; thus, a court's claim construction does not necessarily engender collateral estoppel effects until a case proceeds to final judgment. See RF Del., Inc. v. Pac. Keystone Techs., Inc., 326 F.3d 1255, 1261-62 (Fed. Cir. 2003). The undersigned therefore was not bound by the earlier Arlington II claim construction as a matter of law, (see Doc. 584 at 6), nor were the parties incorrect to advocate their own positions. That neither party was required to advocate for adherence to the Arlington II claim construction, however, does not render the failure to do so the most prudent of litigation strategies. There is Federal Circuit authority that endorses a "law of the case" approach to preclude redetermination of a claim's construction in a second infringement suit on an identical claim. See Del Mar Avionics, Inc. v. Quinton Instrument Co., 836 F.2d 1320, 1324 (Fed. Cir. 1987); (see also Doc. 584 at 6). Furthermore, the Federal Circuit has intimated that when a court conducts a thorough Markman hearing, complete with the presentation of witnesses and evidence, parties may reasonably request that the resulting claim construction be afforded collateral estoppel effects in a second suit on the same patent claim. See RF Del., Inc., 326 F.3d at 1262. The pertinent point at this juncture is not to gaze back with the crystal clarity of hindsight, but simply to note that neither party urged the undersigned to construe claim 8 in a manner consistent with the Arlington II construction or forewarned the court of the potential for future, res judicata complications.*fn5
Bridgeport complains that in denying its motion for stay, the court erroneously precluded it from briefing res judicata issues and "ruled sua sponte that Bridgeport was estopped from raising issue and claim preclusion with respect to its remaining Whipper-Snap connectors under the doctrine of unclean hands." (Doc. 689 at 2-3.) Bridgeport mistakes the court's ruling on the request for stay with one directed to the merits of the res judicata arguments. (See Doc. 584 at 9-10 (denying last-minute stay and citing Landis v. N. Am. Co., 299 U.S. 248, 254-55 (1936), for the proposition that a district court maintains the inherent power to control its docket)). As the court explained in its September 10, 2009 order, the decision to deny Bridgeport's stay request was driven by several factors, including the timing of the motion, the pretrial expense incurred by both parties and the court, and the then-uncertain applicability of res judicata to the instant matter. (See Doc. 584.) The court attempted to balance these factors with an eye toward advancing the case-and the legal questions involved therein-to the Federal Circuit, where the differing Markman orders will receive de novo review. (See Doc. 571 at 30-31.) In the end, the court concluded that a stay of several months was both inefficient and inequitable. However, the parties have now fully briefed matters of res judicata, and the court has considered those arguments on their merits.
"A fundamental precept of common-law adjudication, embodied in the related doctrines of collateral estoppel and res judicata, is that a right, question or fact distinctly put in issue and directly determined by a court of competent jurisdiction . . . cannot be disputed in a subsequent suit between the same parties or their privies . . . ." Montana v. United States, 440 U.S. 147, 153 (1979). Collateral estoppel, also referred to as issue preclusion, specifically bars relitigation of an issue that was conclusively determined in a prior adjudication and that was essential to the original judgment. Witkowski v. Welch, 173 F.3d 192, 198 (3d Cir. 1999); Venuto v. Witco Corp., 117 F.3d 754, 758 (3d Cir. 1997). By foreclosing subsequent disputes over issues on which a court has ruled, collateral estoppel promotes fairness and certainty, while preventing the wasteful expenditure of resources upon issues already resolved through adversarial proceedings. See Allen v. McCurry, 449 U.S. 90, 94 (1980); Montana, 440 U.S. at 153-54; Witkowski, 173 F.3d at 198-99.
Bridgeport contends that the construction of claim 8 reached by Judge Caputo has collateral estoppel effects in the matter sub judice, and this court is therefore obligated to apply Arlington II's interpretation of "spring metal adaptor." (Doc. 689 at 5.) According to Bridgeport, the parties fully litigated the construction of claim 8 in Arlington II, leading to the entry of final judgment on September 1, 2009, and the same issue was presented for adjudication in the matter sub judice. In Arlington II, "spring metal adaptor" was construed to require a split in the circular metal adaptor ring. (See Arlington II, Dkt. No. 98 at 17.) Bridgeport argues that not one of the thirty accused Whipper-Snap devices adjudicated infringing in the above-captioned matter possesses a split in its adapter ring. Thus, Bridgeport asserts that the accused products cannot read on claim 8's "spring metal adaptor" limitation when the Arlington II claim construction is applied.
A finding of issue preclusion*fn6 is appropriate when (1) "the issue sought to be precluded is the same as that involved in the prior action; (2) th[e] issue was actually litigated; (3) it was determined by a final and valid judgment; and (4) the determination was essential to the prior judgment." Peloro v. United States, 488 F.3d 163, 175 (3d Cir. 2007) (quoting Burlington N. R.R. v. Hyundai Merch. Marine Co., 63 F.3d 1227, 1231-32 (3d Cir. 1995)). In addition, defensive collateral estoppel requires that "the party to be precluded must have had a 'full and fair' opportunity to litigate the issue in the first action." Id. at 175. The party seeking to invoke collateral estoppel bears the burden to prove each of its elements. Dici v. Pennsylvania, 91 F.3d 542, 548 (3d Cir. 1996). Arlington does not dispute that the claim construction issue was actually litigated or that it was determined by a final and valid judgment in Arlington II. Therefore, the court need not analyze these factors.
The court finds that issue preclusion applies to the construction of claim 8. When a court provides a Markman interpretation of a claim's language, and that interpretation was essential to a final resolution of a dispute over infringement, a party to the suit is precluded from seeking a different interpretation of the same language in a subsequent dispute. See Molinaro v. Fannon/Courier Corp., 745 F.2d 651, 655 (Fed. Cir. 1984); Dynacore Holdings Corp. v. U.S. Philips Corp., 243 F. Supp. 2d 31, 35 (S.D.N.Y. 2003), aff'd, 363 F.3d 1263 (Fed. Cir. 2004). In other words, the scope of the claims cannot be altered in the second lawsuit. Molinaro, 745 F.2d at 655. Arlington argues that the issues presented in Arlington II were dissimilar because the claim constructions derived by the two courts "are diametrically opposed." (Doc. 740 at 5-6.) This contention misses the point. The issue presented to both courts, for purposes of collateral estoppel, was the scope and meaning of claim 8 of the '050 patent. The parties in both matters requested construction of the "spring metal adaptor" limitation, they presented identical evidence and argument with respect to this limitation, and received an interpretation of "spring metal adaptor" in Arlington II that was essential to the judgment of non-infringement. (See Doc. 689 at 6 (providing comparison citations to parties' reliance on identical arguments in both Markman hearings)). When the Arlington II judgment became final, the construction of claim 8 arrived at therein acquired issue preclusive effect in subsequent suits on the same patent claim.
Arlington also had a full and fair opportunity to litigate its claim in Arlington II. According to the Supreme Court, "[r]edetermination of issues is warranted if there is reason to doubt the quality, extensiveness, or fairness of procedures followed in prior litigation." Montana, 440 U.S. at 164 n.11. Other courts have inquired whether (1) there were significant procedural limitations in the prior proceeding, (2) the party had an incentive to fully litigate the issue, and (3) effective litigation was hindered by the nature or relationship of the parties. See Banner v. United States, 238 F.3d 1348, 1354 (Fed. Cir. 2001). Arlington does not dispute that it was permitted ample opportunity to litigate the construction of claim 8 before Judge Caputo, but instead argues that "Judge Caputo failed to understand the prosecution history of the '050 Patent and its parent, the '164 Patent." (Doc. 740 at 7.) This is an argument for appeal, not one directed at the fairness of the procedures provided in Arlington II. After all, were Arlington correct, it is difficult to imagine an instance in which issue preclusion would apply to a subsequent suit involving an identical patent claim.
Although the court finds that the claim construction in Arlington II would otherwise be entitled to issue preclusive effect, the court declines to apply the doctrine in light of the unique circumstances presented in this case. Application of collateral estoppel is premised on fairness. See Smith v. Pittsburgh Gage & Supply Co., 464 F.2d 870, 874 (3d Cir. 1972) ("While the doctrine of res judicata is meant to foster judicial efficiency and protect defendants from the oppression of repeated litigation, it should not be applied inflexibly to deny justice."); see also In re Freeman, 30 F.3d 1459, 1467 (Fed. Cir. 1994) ("The doctrine of issue preclusion is premised on principles of fairness."); Title v. Immigration & Naturalization Serv., 322 F.2d 21, 24 (9th Cir. 1963) (holding that collateral estoppel "should not be exercised in such a manner as to work an injustice"). Typically, the doctrine prevents relitigation of issues already decided. In this matter, however, the construction of claim 8 has been already been litigated before the undersigned and a jury trial completed; in short, relitigation has already occurred. As a result of the parties' failure to seek consolidation of the instant matter and Arlington II and Bridgeport's delay in pursuing this affirmative defense, see Blonder-Tongue Labs., Inc. v. Univ. of Ill. Found., 402 U.S. 313, 350 (1971) (stating that collateral estoppel is "an affirmative defense that must be pleaded"), inconsistent constructions have been rendered and await de novo review by the Federal Circuit. It is now for the Federal Circuit to resolve the inconsistent Markman constructions. Given the unique procedural posture in which counsel presented this issue-i.e., on the eve of a complex trial with witnesses, advocates, and the court assembled at significant expense, and the merits of the res judicata issue in doubt-and that a judgment has already been entered herein, the court finds that application of issue preclusion is inappropriate. See Freeman, 30 F.3d at 1467 (explaining that "a court is not without some discretion to decide whether a particular case is appropriate for application of [issue preclusion]"); see also 18 CHARLES A. WRIGHT ET AL., FEDERAL PRACTICE AND PROCEDURE § 4426, at 688 & n.12 (2d ed. 2002) (noting that some courts have denied preclusion "in order to implement individually particularized concerns of justice" and citing cases). Judicial economy and basic fairness require that the jury's verdict be upheld.
Under the doctrine of claim preclusion, "a judgment on the merits in a prior suit bars a second suit involving the same parties or their privies based upon the same cause of action." Parklane Hosiery Co. v. Shore, 439 U.S. 322, 326 n.5 (1979). For a party to succeed on a defense of claim preclusion, it must be shown that there has been (1) a final judgment on the merits in a prior suit, (2) that involves the same parties or their privies, and (3) there is a subsequent suit based on the same cause of action. Elkadrawy v. Vanguard Group, Inc., 584 F.3d 169, 172-73 (3d Cir. 2009). The question herein is whether the matter sub judice constitutes the same cause of action as that litigated to conclusion in Arlington II. Federal Circuit law dictates that "an infringement claim in a second suit is the 'same claim' as in an earlier infringement suit if the accused products in the two suits are 'essentially the same.'"*fn7 Roche Palo Alto LLC v. Apotex, Inc., 531 F.3d 1372, 1379 (Fed. Cir. 2008). Bridgeport contends that the duplex connectors adjudged non-infringing in Arlington II are "essentially the same" as the accused Whipper-Snap devices adjudicated herein. (See Doc. 689 at 12-15.) As the party asserting claim preclusion, Bridgeport bears the burden of establishing that the accused Whipper-Snap connectors are essentially the same as the duplex connectors. Foster v. Hallco Mfg. Co., Inc., 947 F.2d 469, 478 (Fed. Cir. 1991).
"Accused devices are 'essentially the same' where the differences between them are merely 'colorable' or 'unrelated to the limitations in the claim of the patent.'" Acumed LLC v. Stryker Corp., 525 F.3d 1319, 1324 (Fed. Cir. 2008). Bridgeport argues that none of the accused Whipper-Snap connectors possess a "spring metal adaptor," as that term was construed by the court in Arlington II.*fn8
(See Doc. 689 at 13-15.) However, the court has ruled that the Arlington II claim construction is not applicable in this matter. Thus, the appropriate inquiry is whether the difference between the duplex connectors and the Whipper-Snap connectors at issue herein are merely colorable or unrelated to the claims of the patent. See Nystrom v. Trex Co., Inc., 580 F.3d 1281, 1285 (Fed. Cir. 2009) (stating that in order for claim preclusion to apply, there must not be "material differences" between the accused devices).
The court finds that Bridgeport has made an insufficient evidentiary showing with respect to the material differences between each Whipper-Snap connector model and the duplex connectors. It is not enough to state that none of the Whipper-Snap devices possess a "spring metal adaptor" as construed in Arlington II. Bridgeport makes no attempt to show that each of the thirty accused Whipper-Snap devices is essentially the same as the duplex connector models. Consequently, Bridgeport fails to meet its burden of proof and its claim preclusion argument must fail. See Foster, 947 F.2d at 478.
In sum, neither the doctrine of issue or claim preclusion warrant summary judgment of non-infringement, nor does the court's failure to apply either precept necessitate a new trial. Bridgeport's renewed motion for judgment as a matter of law and its motion for a new trial on these grounds will accordingly be denied.
Section 284 of the Patent Act allows the court to "increase the damages up to three times the amount found or assessed." 35 U.S.C. § 284. Such an award is punitive in nature and "depends on a showing of willful infringement or other indicium of bad faith warranting punitive damages." Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1574 (Fed. Cir. 1996). In order to demonstrate that infringement was willful, a patentee must make a two-pronged showing. First, "a patentee must show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent." In re Seagate Tech. LLC, 497 F.3d 1360, 1371 (Fed. Cir. 2007) (en banc). If this threshold inquiry is satisfied, a patentee must then establish that "this objectively-defined risk (determined by the record developed in the infringement proceeding) was either known or so obvious that it should have been known to the accused infringer." Id.
Under the first prong of the Seagate inquiry, the accused infringer's state of mind is irrelevant and it is inappropriate to consider evidence of copying. See Depuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1336 (Fed. Cir. 2009) (citing Seagate, 497 F.3d at 1371). Furthermore, legitimate defenses to infringement-even if unsuccessful-may be sufficient to rebuff a finding of objective recklessness. See id. at 1336-37; OPTi, Inc. v. Apple, Inc., No. 2:07-CV-21- CE, 2009 WL 4727912, at *2 (E.D. Tex. Dec. 3, 2009) (explaining that "strong, but unsuccessful noninfringement and invalidity defenses presented during litigation weigh against a finding of objective recklessness"). A legitimate defense can include reasonable positions on claim construction, even if those positions are ultimately rejected. See Cohesive Techs., Inc. v. Waters Corp., 543 F.3d 1351, 1374 (Fed. Cir. 2008).
Bridgeport contends that it presented "a reasonable, credible and legitimate defense to infringement based in part on its claim construction arguments." (Doc. 689 at 31.) In particular, Bridgeport argues that it presented identical claim construction arguments to Judge Caputo and the undersigned, which resulted in inconsistent claim constructions. According to Bridgeport, the fact that two judges examined claim 8 and interpreted the "spring metal adaptor" limitation differently legitimizes the reasonableness of its proposed claim construction. Because it presented what it characterizes as a reasonable interpretation of claim 8, Bridgeport implores the court to overturn the jury's conclusion that its infringement was objectively unreasonable.
In spite of the jury's verdict, the court cannot ignore the contrary claim construction issued by Judge Caputo. The Markman hearings were hotly contested. The parties presented identical evidence and arguments to two different federal judges in the same district; the parties thereafter received conflicting interpretations of the "spring metal adaptor" limitation. Although the undersigned disagrees with the claim construction provided by Judge Caputo, I cannot characterize his conclusions as unreasonable. Consequently, the court finds that Bridgeport maintained a reasonable non-infringement defense, one that entitles it to a finding of non-willfulness. Indeed, it would be difficult to conjure up a defense which would be more "reasonable" than one expressly adopted by a federal judge, albeit in conflict with a second federal judge. See Cohesive Techs., Inc., 543 F.3d at 1374 (invalidating willfulness finding when the proper claim construction was the subject of a reasonable dispute); Centocor Ortho Biotech, Inc. v. Abbott Labs., No. 2:07-CV-139-TJW, slip op. at 6-8 (E.D. Tex. Oct. 1, 2009) (finding no objective recklessness when claim construction issues were "hotly contested, close, and required an intensely factual inquiry"). Accordingly, there was not legally sufficient evidence to find that Bridgeport acted with an "objectively high likelihood" that it would infringe a valid patent, and Bridgeport is entitled to a verdict of nonwillfulness as a matter of law.*fn9
The court is also required to conditionally rule upon Bridgeport's motion for a new trial on non-willfulness pursuant to Federal Rule of Civil Procedure 50. See FED. R. CIV. P. 50(c)(1) (explaining that "[i]f the court grants a renewed motion for judgment as a matter of law, it must also conditionally rule on any motion for a new trial by determining whether a new trial should be granted if the judgment is later vacated or reversed"). Even if the court had denied Bridgeport's renewed motion for judgment as a matter of law of non-willfulness, it would nonetheless grant a new trial for the reasons stated above. Bridgeport presented a reasonable position on the construction of the "spring metal adaptor" limitation. See Cohesive Techs., 543 F.3d at 1374 (stating that a "legitimate defense" may include a reasonable position on claim construction). The Arlington II court adopted Bridgeport's position. To subject Bridgeport to the treble damage provision of § 284 when it proffered a legitimate defense to claim construction would result in a miscarriage of justice. Consequently, the court will conditionally grant Bridgeport's motion for a new trial on non-willfulness pursuant to Federal Rule of Civil Procedure 50(c)(1).
An accused product is a colorable imitation of an enjoined product if it is the substantial equivalent of the enjoined product. An accused device is the substantial equivalent of an enjoined device if it performs substantially the same function in substantially the same way with substantially the same result. See Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 608 (1950); KSM Fastening Sys., Inc. v. H.A. Jones Co., Inc., 776 F.2d 1522, 1527-28 (Fed. Cir. 1985). Changes to the accused product that do not pertain to elements of the patent claim at issue, however, are irrelevant to the product-to-product comparison. See Additive Controls & Measurement Sys. v. Flowdata, Inc., 154 F.3d 1345, 1350 (Fed. Cir. 1998) (affirming district court's holding that variations in an accused product were colorable when the modifications did not pertain to "elements of the pertinent patent claim"); KSM, 776 F.2d at 1528-29 (stating that it may "only be necessary to determine that the modified device has not been changed from the adjudged device in a way which affects an element of a claim"); Contempo Tobacco Prods., Inc. v. McKinnie, No. 95-1265, 1997 WL 862528, at *1973 (C.D. Ill. Apr. 8, 1997) (disregarding changes in accused product that are unrelated to the patent claims). Consequently, an accused product is a colorable imitation of an enjoined product when both products literally infringe the same patent claim, for there can be no substantial differences between the products that are relevant to the claims of the patent at issue.
Bridgeport admitted that its Snap-In and Speed-Snap connectors infringed the '050 patent in 2004 and it was enjoined from making, using, or selling these devices or any colorable imitation thereof. (See Doc. 270.) Bridgeport further stipulated that the accused Whipper-Snap products meet each limitation of claim 8 except the "outwardly sprung members" limitation. Hence, a finding that a Whipper-Snap connector model possessed outwardly sprung members meant that the model in question literally infringed claim 8, and was a colorable imitation as a matter of law. If a Whipper-Snap connector model was found not to literally infringe claim 8, however, then only a product-to-product equivalency analysis would properly reveal whether the connector in question was a colorable imitation of one of the enjoined products. See KSM, 776 F.2d at 1527-28.
With these principles of law in mind, the court instructed the jury on colorable imitation as follows:
To prove [colorable imitation,] Arlington must demonstrate that each model Whipper Snap device is a colorable imitation of one of the enjoined Snap-In or Speed-Snap fittings. In order to determine whether an accused product is a colorable imitation of one of Bridgeport's enjoined Snap-In products you must find one of the following is true. First, if an accused Whipper Snap product literally infringes claim 8 of the '050 patent, then it is a colorable imitation under the law.
You may apply the test for literal infringement that I explained to you earlier and determine whether the accused Whipper Snap model contains each limitation found in claim 8. Remember, however, that the parties have stipulated that each model Whipper Snap connector contains each claim 8 limitation except outwardly sprung members. Thus, if you find that an accused Whipper Snap model contains outwardly sprung members, it is a colorable imitation of the previously enjoined Bridgeport products. If you do not find that an accused Whipper Snap connector literally infringes claim 8 of the '050 patent, then you must determine whether the accused Whipper Snap connector is the substantial equivalent of one of the enjoined Snap-In or Speed-Snap fittings. (Doc. 663 at 151-52.) Bridgeport contends that provision of this instruction constitutes an error of law entitling it to both judgment as a matter of law and a new trial. Its central complaint relates to the initial portion of the charge-informing the jury that a Whipper-Snap product which literally infringes claim 8 is a colorable imitation as a matter of law. In light of the colorable imitation law discussed above, Bridgeport's arguments are unpersuasive. As the court has explained, if two products-in this case the enjoined and accused products-literally meet each limitation of the same patent claim, any differences between the products are merely colorable, and any alterations unrelated to the claim at issue are irrelevant.*fn10 See Additive Controls, 154 F.3d at 1350. Accordingly, the court's jury instruction was an accurate statement of colorable imitation law and Bridgeport is not entitled to judgment as a matter of law or a new trial on this basis.
In addition, the court did not err when it instructed the jury that not every possible alteration to the Whipper Snap product is relevant.
The only requirements that are important in this analysis are those that relate to claim 8 of the '050 patent. . . . Moreover, because Bridgeport admits that the Whipper Snap products contain all of the limitations of claim 8 except outwardly sprung members, you may restrict your focus to this limitation when you compare Whipper Snap products with corresponding Snap-In and Speed-Snap products. (Doc. 663 at 152-53.) Bridgeport argues that it should have been permitted to present "all the multiple differences between the previously enjoined and [accused] products," even if those differences were unrelated to the elements of claim 8. (See Doc. 690 at 37.) Differences unrelated to the limitations of the patent claim, however, are not relevant. See Additive Controls, 154 F.3d at 1350; KSM, 776 F.2d at 1528-29; Contempo Tobacco, 1997 WL 862528, at *1973. Bridgeport stipulated that its Whipper-Snap products contained each limitation of claim 8 except outwardly sprung members. Bridgeport further admitted that the enjoined products met all of the claim 8 limitations. The outwardly sprung members limitation was the lone remaining difference-relevant to the limitations of claim 8-between the enjoined and accused products. Accordingly, the court's instruction to this effect was not in error.*fn11
Bridgeport also argues the jury should have been instructed that its ownership of five United States patents was relevant to the colorable imitation inquiry. Specifically, Bridgeport owns United States Patent Numbers 6,916,988 (the "'988 patent); 7,057,107 (the "'107 patent"); 7,064,272 (the "'272 patent"); 7,075,007 (the "'007 patent"); and 7,151,223 (the "'223 patent"). (See Doc. 691, Exs. 6-10.) Bridgeport requested an instruction reading, "The fact Bridgeport has its own patents on the 'Whipper Snap' products is relevant to your determination of whether any 'Whipper Snap' product is substantially different from its alleged corresponding 'Snap-In' product. The fact that patents were issued to Bridgeport suggests the Patent Office considered the new design substantially different than the earlier, older design." (Doc. 587 at 43.) As an initial matter, Bridgeport was unable to present any competent evidence that the Whipper-Snap connectors practiced the '107, '272, '007, or '233 patents. (See Doc. 660 at 251-58.) Thus, with respect to these four patents, Bridgeport laid no foundation to support its proffered instruction.
Bridgeport presented some evidence, albeit slight, that its '988 patent covered the Whipper-Snap connectors.*fn12 Separate patentability, however, does not avoid equivalency as a matter of law. Fiskars, Inc. v. Hunt Mfg. Co., 221 F.3d 1318, 1324 (Fed. Cir. 2000). More importantly, the jury was provided with no evidence that Bridgeport patented any difference between the enjoined devices and its Whipper-Snap models relevant to the limitations of claim 8. See Additive Controls, 154 F.3d at 1350 (holding that variations in an accused product were colorable when the modifications did not pertain to "elements of the pertinent patent claim"). If Bridgeport wished to secure the jury instruction that it proffered, it should have presented additional testimony that the '988 patent encompassed a non-colorable difference between the enjoined and accused products; it did not do so, and the court properly rejected its colorable imitation instruction.*fn13
Bridgeport's final colorable imitation argument attacks the weight and legal sufficiency of the evidence presented at trial. The jury found that twenty-six Whipper-Snap products were colorable imitations of the enjoined Snap-In or Speed-Snap products, (see Doc. 632), and the evidence presented at trial was more than sufficient to support such a finding. Arlington executive Thomas Gretz ("Gretz") and its infringement expert, Rahn, examined the Whipper-Snap devices and their enjoined counterparts to demonstrate the absence of any fundamental differences pertinent to the limitations of claim 8. (See, e.g., Doc. 655 at 164-66, 173-82; Doc. 660 at 12-22.) Arlington presented side-by-side comparisons of the products and Rahn opined that each of the twenty-six Whipper-Snap devices was a colorable imitation of a Snap-In or Speed-Snap model. Although Bridgeport's expert, Dr. Brian Williamson ("Williamson"), disagreed with these opinions, the jury was entitled to weigh his ...