The opinion of the court was delivered by: Judge James B. Zagel
MEMORANDUM OPINION AND ORDER
This is a patent infringement case involving "puddle lamps," devices installed on vehicles to illuminate the ground beside the automobile. Plaintiff Jacob Krippelz, Sr. ("Krippelz" or "Plaintiff"), the inventor and owner of U.S. Patent No. 5,017,903 (the "'903 patent"), sued Defendant Ford Motor Company ("Ford" or "Defendant") for infringement of claim 2 of the patent. In December 2008, a jury found in favor of Plaintiff, awarding him $23,000,000.00 in damages. After a bench trial on the issue, I found Ford's infringement to be willful and awarded Plaintiff an additional $21,017,400.00 in damages. Plaintiff was awarded an additional $11,685, 957.00 in prejudgment interest. Ford now moved for judgment as a matter of law, or, in the alternative, a new trial. For the following reasons, Ford's motions are denied.
A. Judgment As A Matter Of Law
Pursuant to Federal Rule of Civil Procedure 50(a)(1), judgment as a matter of law ("JMOL") may be granted against a prevailing party if, after trial, "the court finds that a reasonable jury would not have a legally sufficient evidentiary basis to find for the party on that issue[.]" JMOL is "a procedural issue not unique to patent law," and governed by "the law of the regional circuit where the appeal from the district court normally would lie." Z4 Technologies, Inc. v. Microsoft Corp., 507 F.3d 1340, 1346 (Fed. Cir. 2007) (citation and quotations omitted).
In the Seventh Circuit, JMOL "should be granted only where there can be but one conclusion from the evidence." McRoberts Software, Inc. v. Media 100, Inc., 329 F.3d 557, 564 (7th Cir. 2003) (citation omitted). I must consider the evidence in the light most favorable to the prevailing party, and should reverse the verdict "only if there is no legally sufficient evidentiary basis to support [it]." Id. In my analysis, I must be "careful to avoid supplanting [my] view of the credibility or the weight of evidence for that ... of the jury." Id. (citation and quotations omitted).
A patent is entitled to a presumption of validity. 35 U.S.C. § 282. This presumption may be overcome with clear and convincing evidence of the patent's invalidity. Finnigan Corp. v. International Trade Com'n, 180 F.3d 1354, 1365 (Fed. Cir. 1999). A patent is invalid if it is anticipated by another invention. 35 U.S.C. 102(b). Anticipation "requires the disclosure in a single piece of prior art of each and every limitation of a claimed invention." Apple Computer, Inc. v. Articulate Systems, Inc., 234 F.3d 14, 20 (Fed. Cir. 2000) (citation omitted). Anticipation is a question of fact. Id. Anticipation is measured by the knowledge of those skilled in the art. In re Baxter Travenol Labs., 952 F.2d 388, 390 (Fed. Cir. 1991) (for anticipation, the "dispositive question" is "whether one skilled in the art would reasonably understand or infer" that a reference teaches or discloses all of the elements of the claimed invention).
A patent is also invalid if it is rendered obvious by prior art. 35 U.S.C. § 103(a). A prior art patent or combination of patents renders a claim obvious "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." Ball Aerosol & Specialty Container, Inc. V. Limited Brands, Inc., 555 F.3d 984, 991 (Fed. Cir. 2009) (quoting 35 U.S.C. 103(a)). In conducting an obviousness inquiry: the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented.
KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)). "[A] patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art." Id. at 418. Obviousness is a question of law. Graham v. John Deere Co., 383 U.S. 1, 17 (1966). This question of law, however, is premised on underlying factual determinations. Dennison Mfg. v. Panduit Corp., 475 U.S. 809, 810-11 (1986).
C. Motion For A New Trial
Rule 59 of the Federal Rules of Civil Procedure allows a court to order a new trial "after a jury 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)(1). Whether to grant a new trial is a procedural issue not unique to patent law and is therefore governed by regional circuit law. z4 Technologies, Inc. v. Microsoft Corp., 507 F.3d 1340, 1347 (Fed. Cir. 2007). In deciding a motion for a new trial under Rule 59, the "district court must determine whether the verdict is against the weight of evidence, the damages are excessive, or if for other reasons the trial was not fair to the moving party." Westchester Fire Ins. Co. v. General Star Indem. Co., 183 F.3d 578, 582 (7th Cir.1999) (citations and internal quotation marks omitted).
There are several possible grounds for setting aside a verdict and granting a new trial. A verdict will be set aside as "contrary to the manifest weight of the evidence only if no rational jury could have rendered the verdict." BP Amoco Chem. Co. v. Flint Hills Resources, LLC, 697 F. Supp. 2d 1001, 1015 (N.D. Ill. 2010) (citation and internal quotation marks omitted). Federal courts will not "set aside a jury verdict if a reasonable basis exists in the record to support the verdict, viewing the evidence in the light most favorable to the prevailing party, and leaving issues of credibility and weight of evidence to the jury." Id. (citation and internal quotation marks omitted).
To obtain a new trial based on an evidentiary ruling, the movant must show that: (1) a timely objection or motion to strike appears in the record, stating specific grounds for the objection if the specific ground is not apparent; (2) the erroneous ruling prejudiced the movant's substantial rights. FED. R. EVID. 103(a). Because evidentiary rulings are reviewed for abuse of discretion, a judge's erroneous ruling may be deemed harmless if the outcome of the trial would have been unchanged. Alverio v. Sam's Warehouse Club, Inc., 253 F.3d 933, 942 (7th Cir. 2001).
A party may also move for a new trial based on an erroneous jury instruction. The Federal Circuit has noted that "[t]here may be some question as to whether [the Federal Circuit] reviews jury instructions relating to patent law under [its] own law or regional circuit law." Amgen Inc. v. F. Hoffman-LA Roche Ltd., 580 F.3d 1340, 1368 n.13 (Fed. Cir. 2009). The Federal Circuit reviews "the legal sufficiency of jury instructions on an issue of patent law without deference to the district court." Broadcom Corp. v. Qualcomm Inc., 543 F.3d 683, 697 (Fed. Cir. 2008) (quotation marks omitted). The court "reviews jury instructions in their entirety and only orders a new trial when errors in the instructions as a whole clearly mislead the jury." Id. (quotation marks omitted). "[A] party seeking to alter a judgment based on erroneous jury instructions must establish that (1) it made a proper and timely objection to the jury instructions, (2) those instructions were legally erroneous, (3) the errors had prejudicial effect, and (4) it requested alternative instructions that would have remedied the error." NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1311-12 (Fed. Cir. 2005) (quotation marks omitted).
In the Seventh Circuit, "A district court has substantial discretion to formulate jury instructions so long as they represent a complete and correct statement of the law." Warfield v. City of Chicago, 679 F. Supp. 2d 876, 884 (N.D. Ill. 2010) (citations, internal quotation marks, and brackets omitted). "In order to receive a new trial based on erroneous instructions, a defendant must show both that the instruction did not adequately state the law and that the error was prejudicial to him because the jury was likely to be confused or misled." Id. (citations, internal quotation marks, and brackets omitted); see also Lasley v. Moss, 500 F.3d 586, 589 (7th Cir. 2007) (reversal is justified "only if the instruction misguides the jury so much that a litigant is prejudiced") (citation omitted). In considering whether the movant has been prejudiced, courts must examine the instructions as a whole, all of the evidence and arguments presented, and whether the jury was misinformed on the applicable law. Warfield, 679 F. Supp. 2d at 884 (citation omitted).
D. Motion for Reconsideration
"As the Seventh Circuit has repeatedly observed, '[m]otions for reconsideration serve a limited function: to correct manifest errors of law or fact or to present newly discovered evidence.'" Phipps v. Sheriff of Cook County, 681 F. Supp. 2d 899, 924 (N.D. Ill. 2009) (quoting Caisse Nationale de Credit Agricole v. CBI Industries, Inc., 90 F.3d 1264, 1269 (7th Cir. 1996)). "[A] reconsideration motion is appropriate where: (1) the court has patently misunderstood a party; (2) the court has made a decision outside the adversarial issues presented to the court by the parties; (3) the court has made an error not of reasoning but of apprehension; (4) there has been a controlling or significant change in the law since the submission of the issue to the court; or (5) there has been a controlling or significant change in the facts since the submission of the issue to the court." Hamilton v. O'Connor Chevrolet, Inc., 2005 WL 1189589, at *3 (N.D. Ill. Mar. 23, 2005) (citing Bank of Waunakee v. Rochester Cheese Sales, Inc., 906 F.2d 1185, 1191 (7th Cir. 1990)).
A. Judgment as a Matter of Law
Ford argues that the DuBois patent anticipates the '903 patent. Claim 2 of the '903 patent reads:
An emergency warning light for an automotive vehicle having a window on one side thereof, comprising in combination a housing mounted in a fixed, substantially unadjustable position on said vehicle adjacent to said window, said housing having an opening in the bottom thereof, a source of light mounted within said housing for directing a conical beam of light downwardly through said opening along said side of said vehicle below said window so as to be visible from in front of and from behind said vehicle, and said opening and said source of light being positioned to prevent said beam of light from directly impinging on said side of said vehicle. (U.S. Patent 5,017,903 ("'903 patent") at col. 3, line 19-col. 4, line 3.).
In order to prove that the DuBois patent anticipated the '903 patent, Ford was required to show that the DuBois patent contains each limitation of claim 2. At trial, the parties disputed whether the DuBois patent discloses the "adjacent" and "conical beam of light" limitations. Ford maintains that it proved by clear and convincing evidence that DuBois discloses both of these limitations.
First, Ford argues that DuBois' drawings show lamps placed in many locations on different kinds of vehicles. According to Ford, Figure 5 of the patent shows a light "adjacent" to the side window of a vehicle, and Ford's expert, Dr. John Van Derlofske, testified at trial that this is just what the DuBois patent discloses. Krippelz' expert, Dr. Richard Hansler, testified that while in one illustrated position the device "might be" adjacent, "it certainly is not clearly adjacent to a side window." Dr. Hansler also testified that "[t]here is no mention of mounting a device adjacent to a side window" in the written text of the DuBois patent. The patent does not disclose the proper placement of the light. Based on this evidence, a jury could reasonably find that DuBois did not disclose a "housing . . . adjacent to . . . [a] window."
Second, Ford argues that DuBois discloses a "conical beam of light." At trial, I instructed the jury that a "conical beam of light" is "a beam of light that diverges," and that a "beam of light" is "light that both is directed and has a defined sweep range." In support of its argument, Ford points to Dr. Hansler's testimony on cross examination that: (1) DuBois shows "a very defined sweep range;" (2) at least some of the light from the reflector would be directed downward onto the ground; and (3) the light diverges. DuBois also states that a "headlight" may be used as the light source, and Dr. Hansler testified that "[a] headlight typically makes a beam of light[.]" Ford argues that this represents clear and convincing evidence that DuBois teaches a conical beam of light. Furthermore, the Court ruled that elliptical reflectors may form conical beams of light. One drawing included in the DuBois patent, Figure 17, did not have a parabolic reflector, but Krippelz offered no proof that the reflector in Figure 17 is not elliptical. Dr. Hansler admitted that the shape of the DuBois reflector could be either parabolic or elliptical. Therefore, Ford claims, no evidence was presented that the drawing does not depict a conical beam of light.
These arguments are problematic for several reasons. First, Ford focuses on excerpts of Dr. Hansler's testimony in which he was asked on cross examination, to divide the claim construction into individual parts and apply each part, rather than applying the claim as a whole. Significantly, Ford did not include the term "conical," but substituted for it entirely the word "diverging." On direct and re-direct examination, Dr. Hansler indicated that when the claim construction is applied as a whole, DuBois does not disclose a conical beam of light. On page 503 of the trial transcript, Dr. Hansler explains that a conical beam of light is one that is axially symmetrical. In his testimony, Dr. Van Derlofske explained that "[a]lmost any beam that would be made in the real world would be a conical beam[.]" Transcript at 257. He testified that a cone can be any shape and may be asymmetrical. Transcript at 258. According to Dr. Van Derlofske, conical means diverging and only diverging. On more than one occasion during his testimony, Dr. Hansler testified that DuBois does not teach a conical beam of light. The ray trace he conducted shows that the rays pictured are "simply a scattering of rays" that do not meet the requirements of a conical beam of light in that they were not "directed [and] diverging with limited sweep range[.]"*fn1 The patent makes no mention of a "beam of light" or a "conical beam."
In describing how a flashlight produces a conical beam of light, Dr. Hansler spoke of axial symmetry (Transcript at 503) and characterizes a conical beam of light as "light that is both directed and converging and with a limited sweep range." (Transcript at 506).
All of this is consistent with my construction of the patent. On cross examination, Dr. Hansler was referred to the premise that "the Court has said that conical beam of light is a beam of light that diverges." He responded by saying that "my belief is that the definition of a conical beam implies that the shape is, in fact, conical or a cone shape . . . which means that the cross-section of such a beam would, in fact, be neither a circle or ellipse. And for it to be a rectangle is not possible. And, therefore, that's one of the items of evidence that I looked at when looking at the DuBois patent to conclude that it does not produce a conical beam, and that's part of the reasoning for what we have said about it."
I would not necessarily conclude that, in context, Dr. Hansler concluded that DuBois did not produce a conical beam (the cross-section of the beam being neither ellipse nor circle) and , for this reason, and others, he reached his conclusion about DuBois. But if I assume he did so, then the most that can be said is that his answers on cross were inconsistent with his answers on direct and re-direct which were fully in concord with the claim construction. A fact finder is free to determine which of two inconsistent answers is reliable (or that neither is). The trier of fact credited the direct and redirect testimony and its decision is to be accepted.
Even if this particular drawing does not depict a conical beam of light, Ford argues it may still prevail since DuBois notes that the figure in question is merely an "example," and the light may be "the image of a headlight[.]" Dr. Hansler testified that "[a] headlight typically makes a beam of light." But Dr. Hansler also testified that such a beam would only be wide enough "in some case" to suit DuBois' purpose, which is to light a wide area of pavement alongside the vehicle where an approaching vehicle must pass. Dr. Hansler explained that using a beam to illuminate such a wide area would be hazardous to passing drivers, and that a conical beam of light would generally be too small to illuminate such an area. Whether a beam generated by a headlight could light an area this large would depend on the distance between the light source and the ground. From this testimony, a rational jury could have concluded that the passing mention of a headlight in the long list of examples is not clear and convincing evidence that DuBois discloses a beam of light as required in claim 2 of the '903 patent.
Ford next argues that "DuBois teaches using reflectors and lenses to form the light[,]" pointing to the sentence:
The present invention has as its object a system of lamps and optical devices such as reflectors, screens or even lenses equipping any kind of vehicle, whether automobile, tractor or towed vehicle, the purpose of which is to light, at night, that portion of the pavement extending along the side of the vehicle on the side where an approaching vehicle must pass.
Dr. Hansler testified that a person skilled in the art knows how to use lenses and reflectors to form conical beams of light. But Dr. Hansler also testified that there are many different types of lenses, and that some focus light and others spread it out. According to Dr. Hansler, using a lense to create a conical beam of light "probably wouldn't be a very effective way to accomplish the purpose of DuBois." A reasonable finder of fact could have agreed that the DuBois patent does not disclose a beam of light, but rather, in light of the stated purpose, actually teaches away from using a beam.
In further support, Ford argues that because "Krippelz offered no proof that Fig. 17's reflector is not elliptical," a reasonable finder of fact must find that DuBois discloses a conical beam of light. Ford relies on the court's ruling that elliptical reflectors form conical beams, and on Dr. Hansler's testimony that the shape of the DuBois reflector could be either parabolic or elliptical. Dr. Hansler testified only as to whether the reflector depicted in Fig. 17 was parabolic, not whether it was elliptical. Therefore, Ford contends, because "Krippelz had no evidence that Fig. 17 does not produce a conical beam of light[,]" there is no evidence to support a finding that Fig. 17 does not disclose a conical beam of light. But this shifts the burden of proof to Krippelz, who has no obligation to disprove that Figure 17 discloses a conical beam. Moreover, the ray trace conducted by Dr. Hansler, and his testimony that using a beam would be inconsistent with DuBois' purpose support the assertion that Figure 17 does not disclose a conical beam.
For the foregoing reasons, I find that the there was sufficient evidence for a rational finder of fact to find that Ford did not meet its burden to prove by clear and convincing evidence that DuBois disclosed both (1) a "housing . . . ...