Fed Cir Identifies Flaws in Model Jury Instructions on Willfulness
Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc., __ F.3d __, 2020 WL 130439 (Fed. Cir. Jan. 13, 2020) (DYK, Reyna (CIP/DIP), Hughes) (W.D. Wash.: Donohue) (3 of 5 stars)
Fed Cir affirms invalidity judgment and fee award as to ARM’s patent and judgment of non-willful infringement as to Eko’s. ARM’s patent relates an adapter to permit coffee machines using cup-shaped cartridges (e.g., Keurig) to use disk-shaped “pods” instead. Eko’s relates to a cartridge-based coffee machine that does not need to pierce the cartridge to work.
ARM’s patent: The district court did not err in construing a key term. ARM’s narrower construction was not appropriate in view of several contrary embodiments, including one “preferred” embodiment. Per SynQor, 709 F.3d 1365 (Fed. Cir. 2013), preferred embodiments are rarely to be excluded. The record was sufficient to support the jury’s determination that the claims were obvious. The district court did not abuse its discretion in declaring the case exceptional under § 285. The district court’s construction correctly included a limitation for the claimed “passageway” that no reasonable jury could find present in Eko’s accused product. That the district court had previously denied Eko’s motion for summary judgment of obviousness did not preclude the exceptional case determination, and Checkpoint, 858 F.3d 1371 (Fed. Cir. 2017), is not contrary.
Eko’s patent: The record was sufficient to support the infringement determination, and ARM’s attempt to distinguish its product was misdirected. Though Eko’s claim referred to a “beverage brewer,” such a brewer was not a claim requirement per se, but only served as a reference point for various features of the claimed “beverage brewing device for use with a single serve beverage brewer.”
The district court sufficiently instructed the jury on the standards for willfulness. The instructions were primarily based on the Federal Circuit Bar Association’s National Patent Jury Instructions (NPJI). Those instructions’ statements that willfulness requires a determination that infringement is “especially worthy of punishment” or is “egregious behavior” were improper, as they directed the jury to determinations that are not part of its role. “Under Halo, [136 S. Ct. 1923 (2016),] the concept of ‘willfulness’ requires a jury to find no more than deliberate or intentional infringement.” Op. at 16. The determination of whether intentional infringement warrants enhanced damages is for the court. However, the instruction elsewhere sufficiently informed the jury that “it could make a finding of willful infringement if it found that ARM deliberately or intentionally infringed [ ].” Id. at 19. The opinion also notes that Eko’s objections “would not have cured the problem that Eko identified” because Eko did not object to references to “malicious,” “consciously wrongful,” and “bad faith” conduct in the instructions. Per Verizon, 503 F.3d 1295 (Fed. Cir. 2007), there can be no legal error if the proposed instruction would not have remedied the error.
Dissent: Judge Reyna would have revised the construction of “passageway” in ARM’ patent, and thus would have vacated the noninfringement summary judgment and thus the award of attorney fees.
KEYWORDS: INVALIDITY (YES); INFRINGEMENT (NO); INFRINGEMENT (YES); WILLFULNESS (NO); JURY INSTRUCTIONS; ATTORNEY FEES; EXCEPTIONAL CASE