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Black & Decker Inc. v. Robert Bosch Tool Corp.

December 22, 2006


The opinion of the court was delivered by: Amy J. St. Eve, District Court Judge


Plaintiffs Black & Decker Inc. and Black & Decker (U.S.) Inc. (collectively "Black & Decker") brought the present lawsuit against Defendant Robert Bosch Tool Corporation ("Bosch") alleging infringement of various claims of U.S. Patent Nos. 6,308,059 (the "'059 patent") and 6,788,925 (the "'925 patent"). Specifically, Black & Decker accused Bosch's Power Box radio of infringing each of the patents-in-suit that relate to rugged jobsite radios. On September 22, 2006, a jury returned a verdict finding that the Bosch Power Box radio chargers infringed certain claims of both patents-in-suit. The jury also found that Bosch's infringement was willful. Before the Court is Bosch's Motion for Judgment as a Matter of Law or to Alter the Judgment as to Willful Infringement and for a New Trial pursuant to Federal Rules of Civil Procedure 50(b), 59(a), and 59(e). For the following reasons, the Court denies Bosch's motion.


The law of the Seventh Circuit controls motions under Federal Rules of Civil Procedure 50 and 59 because they involve procedural issues not unique to patent law. See Primos, Inc. v. Hunter's Specialties, Inc., 451 F.3d 841, 847 (Fed. Cir. 2006); NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1324 (Fed. Cir. 2005).

I. Motion for Judgment as a Matter of Law -- Rule 50(b)

When ruling on a motion for judgment as a matter of law following a jury verdict, the Court does not re-weigh the evidence presented at trial or make credibility determinations. See Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000); see Fed.R.Civ.P. 50(b). Instead, the Court views the evidence and all reasonable inferences in a light most favorable to the non-movant, in this instance, Black & Decker. See Reeves, 530 U.S. at 150-51; Byrd v. Illinois Dep't of Pub. Health, 423 F.3d 696, 712 (7th Cir. 2005). "[T]he question is not whether the jury believed the right people, but only whether it was presented with a legally sufficient amount of evidence from which it could reasonably derive its verdict." Zelinski v. Columbia 300, Inc., 335 F.3d 633, 638 (7th Cir. 2003). "This is obviously a difficult standard to meet." Waite v. Board of Trs. of Ill. Cmty. Coll. Dist. 508, 408 F.3d 339, 343 (7th Cir. 2005).

II. Motion for a New Trial -- Rule 59(a)

"Rule 59(a), in a bit of a circular way, allows new trials in cases where new trials have been traditionally allowed at law." ABM Mktg., Inc. v. Zanasi Fratelli, S.R.L., 353 F.3d 541, 543 (7th Cir. 2003) (citing Fed.R.Civ.P. 59(a)). The Seventh Circuit has clarified this standard explaining that a "motion for a new trial should succeed only if the verdict is against the manifest weight of the evidence." Id. at 545 (quotation and citation omitted). To satisfy this standard, Bosch must demonstrate that no rational jury could have rendered a verdict against it concerning the finding of willfulness. See King v. Harrington, 447 F.3d 531, 534 (7th Cir. 2006). When making this evaluation, the Court views the evidence in a light most favorable to Black & Decker and cannot re-weigh the evidence or make credibility determinations. Id. The Court will sustain the verdict where a reasonable basis exists in the record to support the jury's finding. Id. "Because the trial judge is uniquely situated to rule on such a motion, the district court has great discretion in determining whether to grant a new trial." Kempner Mobile Elec., Inc. v. Southwestern Bell Mobile Sys., 428 F.3d 706, 716 (7th Cir. 2005).

III. Motion to Alter or Amend the Judgment -- Rule 59(e)

Rule 59(e) permits parties to file, within ten days of the entry of judgment, a motion to alter or amend the judgment. See Fed.R.Civ.P. 59(e). Motions under Rule 59(e) serve the limited function of allowing the Court to correct manifest errors of law or fact or consider newly discovered material evidence. See County of McHenry v. Insurance Co. of the West, 438 F.3d 813, 819 (7th Cir. 2006). Rule 59(e) "does not provide a vehicle for a party to undo its own procedural failures" or "introduce new or advance arguments that could and should have been presented to the district court prior to the judgment." Moro v. Shell Oil Co., 91 F.3d 872, 876 (7th Cir. 1996); see also Estremera v. United States, 442 F.3d 580, 587 (7th Cir. 2006). Whether to grant a Rule 59(e) motion "is entrusted to the sound judgment of the district court." Matter of Prince, 85 F.3d 314, 324 (7th Cir. 1996); see also Andrews v. E.I. Du Pont De Nemours & Co., 447 F.3d 510, 515 (7th Cir. 2006) (appellate court reviews denial of Rule 59(e) motion for abuse of discretion).


In the present post-trial motion, Bosch argues that Black & Decker failed to present clear and convincing trial evidence of Bosch's willful infringement. When making willfulness findings, the jury must consider the totality of the circumstances in weighing and evaluating the evidence. See Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1225 (Fed. Cir. 2006) (citing Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d 1337, 1342-43 (Fed. Cir. 2004) (en banc )). "The drawing of inferences, particularly in respect of an intent-implicating question such as willfulness, is peculiarly within the province of the fact finder that observed the witnesses." Liquid Dynamics, 449 F.3d at 1225 (citation omitted). The patentee bears the burden of persuasion and must prove willful infringement by clear and convincing evidence. Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354, 1368 (Fed. Cir. 2006). Specifically, "the patentee must present threshold evidence of culpable behavior before the burden of production shifts to the accused to put on evidence that it acted with due care." Id. (citation and internal quotations omitted). After the Knorr-Bremse decision, this "threshold showing cannot be satisfied merely by proof that the accused is asserting the attorney-client privilege to withhold an opinion of counsel." Golden Blount, 438 F.3d at 1368. Instead, the "extent to which the infringer disregarded the property rights of the patentee, the deliberateness of the tortious acts, or other manifestations of unethical or injurious commercial conduct, may provide grounds for a finding of willful infringement." Id. at 1367-68 (citation omitted).

Thus, a "jury verdict of willfulness requires a finding by clear and convincing evidence in view of the totality of the circumstances that [the defendant] acted in disregard of the ... patent and lacked a reasonable basis for believing it had a right to do what it did." nCube Corp. v. Seachange Int'l, Inc., 436 F.3d 1317, 1320 (Fed. Cir. 2006) (citation and internal quotations omitted). As such, in addressing Bosch's post-trial motion, the Court must determine whether -- when viewed as a whole -- there is substantial evidence upon which the jury could find willful infringement by clear and convincing evidence. Id.

I. Bosch's Knowledge of Black & Decker's Patent Rights

First, Bosch contends that there is no evidence indicating that it willfully infringed the patents-in-suit after Black & Decker filed this lawsuit on December 8, 2004. On the other hand, Black & Decker asserts that Bosch's division of its infringement into different time periods is artificial. See nCube Corp., 436 F.3d at 1324 ("Actual notice of another's patent rights triggers an affirmative duty of due care to avoid infringement."). The Court agrees with Black & Decker because there is ample evidence that Bosch had notice of Black & Decker's patent rights before and after Black & Decker sent its notice letter and filed this lawsuit in November and December 2004, respectively. See id. (willful infringement inquiry hinges on when defendants had actual knowledge of plaintiff's patent rights and defendants' actions thereafter).

A. Bosch's Knowledge Prior to Notice Letter & Lawsuit

According to Bosch's internal documents, Bosch had specific knowledge of Black & Decker's patent rights prior to the November 1, 2004 notice letter and the filing of this lawsuit. Specifically, Bosch created a document entitled Product Concept -- Project Greenlight, RPU -Radio Power Unit -- before it launched the Bosch Power Box project. (See generally PTX # 34.) In this document, Bosch admits that "Milwaukee did not want to infringe on the Dewalt radio charger patent, therefore they provide mounting screws for the charger on the back of the radio to accommodate the charger." (See PTX #34 at B001439). The document also identified that "Dewalt and Milwaukee are the only competitors within this $20 Mil. Product category." (Id. at B001438.) In fact, this Product Concept document discusses the DeWalt radio chargers in detail. (Id. at B001438-B0011440.) Furthermore, trial testimony reveals that Bosch's witness, Richard Gray, heard about the DeWalt radio at a trade show before Bosch launched the Power Box. (Trial Tr. at 1155.) Gray subsequently talked to Bosch's engineers, Steven Cole and John DeCicco, about the DeWalt radio charger. (Id. at 1161-62.)

Nevertheless, Bosch argues that this evidence does not support the conclusion that it knew of the Domes patents prior to the notice letter because this evidence speaks to the DeWalt radio chargers, not specifically to the '059 and '925 patents. Bosch, however, fails to any cite authority -- controlling or otherwise -- in support of its argument that it must have knowledge of the actual patents. Indeed, the Federal Circuit instructs that it is the infringer's knowledge of patent rights that is relevant. See nCube Corp., 436 F.3d at 1324; Imonex Servs., Inc. v. W.H. Munzprufer Dietmar Trenner GMBH, 408 F.3d 1374, 13787 (Fed. Cir. 2005). Bosch's argument is without merit.

B. Bosch's Knowledge Pursuant to the Notice Letter and Lawsuit

The notice letter addressed to Bosch's Chief Counsel, R. Warren Comstock, and dated November 1, 2004, explicitly states that the patents-in-suit are the '059 and '925 patents issued to Joseph Domes, the inventor. (PTX # 12 at BD015664-BD015667.) Further, Black & Decker's Complaint also explicitly identifies the patents-in-suit. (R. 1-1, Compl. ¶ 2.)

II. Bosch's Willful Conduct & Copying

A. Willful Conduct

Not only is there clear and convincing evidence upon which the jury could conclude that Bosch was aware of Black & Decker's patent rights before and after the notice letter, there is also clear and convincing trial evidence to support the jury's finding of Bosch's willfulness. More specifically, Black & Decker's witness, Christine Potter, testified as follows:

Q: This is a letter to a Warren Comstock dated November 1, 2004, Chief Counsel, Intellectual Property, Robert Bosch Corporation. And it was sent by Charles Yocum, Senior Group Patent Counsel. And it indicates here that you got a copy. Do you recall receiving a copy of this letter?

A: Yes, I do.


Q: What was the purpose of this letter, as you understand it?

A: As I understand it, it was to formally put Bosch on notice of infringement. ...

Q: Now, did Bosch -- as requested by Black & Decker on this November 1, 2004, letter -- discontinue its sales?

A: No, they did not. (Trial Tr. at 243-45.)

Other trial evidence that supports the jury's willfulness finding is Cole's testimony that he was not aware of any steps Black & Decker took to ...

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