Medisim Ltd. v. Bestmed, LLC

United States Court of Appeals
for the Federal Circuit
______________________

MEDISIM LTD.,
Plaintiff-Appellant,

v.

BESTMED, LLC,
Defendant-Appellee.
______________________

2013-1451
______________________

Appeal from the United States District Court for the
Southern District of New York in No. 10-CV-2463, Judge
Shira Ann Scheindlin.
______________________

Decided: July 14, 2014
______________________

SCOTT S. CHRISTIE, McCarter & English, LLP, of
Newark, New Jersey, argued for plaintiff-appellant. With
him on the brief were KEITH J. MCWHA, MARK H. ANANIA,
MATTHEW A. SKLAR, and ELINA SLAVIN. Of counsel was
GERALD LEVY, of New York, New York.

DAN L. BAGATELL, Perkins Coie, LLP, of Phoenix, Ari-
zona, argued for defendant-appellee. With him on the
brief were MATTHEW B. DU MÉE; and DAVID R. PEKAREK
KROHN, of Madison, Wisconsin.
______________________
2 MEDISIM LTD. v. BESTMED, LLC

Before PROST, Chief Judge, TARANTO and CHEN, Circuit
Judges.
PROST, Chief Judge.
Plaintiff-Appellant Medisim Ltd. (“Medisim”) appeals
the grant of judgment as a matter of law (“JMOL”) by the
United States District Court for the District of New York
that U.S. Patent No. 7,597,668 (“’668 patent”) is antici-
pated by Medisim’s own prior art FHT-1 thermometer.
See Medisim Ltd. v. BestMed LLC, 959 F. Supp. 2d 396,
425 (S.D.N.Y. 2013). It also appeals the district court’s
grant of JMOL in BestMed, LLC’s (“BestMed”) favor on
Medisim’s unjust enrichment claim. Id. at 426. Because
BestMed failed to preserve its right to JMOL on anticipa-
tion under Federal Rule of Civil Procedure 50, we vacate
the district court’s grant of JMOL on that claim. Howev-
er, we affirm the district court’s grant of JMOL on Medi-
sim’s unjust enrichment claim and its conditional grant of
a new trial on anticipation. We remand this case for
further proceedings.
I. BACKGROUND
Medisim owns the ’668 patent, which is directed to a
fast non-invasive thermometric device that displays a core
body temperature. ’668 patent col. 2 ll. 13-15. The
claimed device is placed against an external skin surface,
takes temperature readings from one or more tempera-
ture sensors, determines time-dependent parameters of
temperature change responsive to those readings, and
calculates a deep tissue temperature. Id. at col. 1 l. 57-
col. 2 l. 5. The claimed device then calculates a core body
temperature by correcting for the difference between the
deep tissue temperature and the core body temperature.
Id. at col. 2 ll. 6-12. Claim 1 is representative:
1. A thermometric device, comprising:
a probe, comprising:
MEDISIM LTD. v. BESTMED, LLC 3

a membrane configured to be applied to an ex-
ternal surface of a body of a subject; and
one or more temperature sensors located within
the probe in thermal contact with the mem-
brane; and
a processing unit configured to receive a plurality
of temperature readings from the one or more
temperature sensors, to determine time-
dependent parameters of temperature change
responsively to the plurality of temperature
readings, to calculate, a deep tissue tempera-
ture of the body at a location under the skin
that is a source of heat conducted to the one or
more temperature sensors, and to calculate a
core body temperature by correcting for a dif-
ference between the core body temperature and
the deep tissue temperature.
Id. at col. 10 ll. 2-18. The other independent claim, 21,
recites the same concept in method format. Id. at col. 11
ll. 25-41.
More than a year before filing the application that
eventually issued as the ’668 patent, Medisim marketed
and sold the FHT-1 thermometer. Therefore, Medisim’s
own product qualifies as prior art to the ’668 patent under
35 U.S.C. § 102(b). 1 The FHT-1 thermometer uses a heat-
flux algorithm disclosed in another Medisim patent, U.S.
Patent No. 6,280,397 (“’397 patent”), which covers a
method of quickly estimating a local body temperature.
See ’397 patent col. 2 l. 60-col. 3 l. 6.

1 The America Invents Act (“AIA”), Pub. L. No. 112-
29, took effect on March 18, 2013. Because the applica-
tion for the patent at issue in this case was filed before
that date, we refer to the pre-AIA version of § 102.
4 MEDISIM LTD. v. BESTMED, LLC

From November 2004 to May 2007, BestMed market-
ed and sold several of Medisim’s thermometers in the
United States under an “International Distribution
Agreement” (“IDA”). While the IDA was in effect, Best-
Med was privy to technical information concerning many
of Medisim’s thermometers and its testing procedures,
including its water bath testing protocol. This water bath
testing protocol enabled Medisim’s thermometers to be
approved by the Food and Drug Administration for sale in
the United States.
In 2008, the parties entered into a new “Purchase and
Sale Agreement” (“PSA”), which set out the terms govern-
ing the parties’ separation. The PSA authorized the
parties to offer competing products to current customers
as long as delivery occurred after May 1, 2009. The
parties also released all claims that had arisen or might
arise out of their past performance or disputes regarding
the IDA.
After the expiration of the PSA, BestMed began sell-
ing competing thermometer products made by K-Jump
Health Co. Ltd.
II. PROCEDURAL HISTORY
Medisim filed suit against BestMed in the Southern
District of New York on March 17, 2010, accusing Best-
Med, inter alia, of directly and indirectly infringing the
’668 patent by selling the K-Jump thermometers and of
benefitting from unjust enrichment. Before the case was
submitted to the jury, both parties made several motions
requesting JMOL under Federal Rule of Civil Procedure
50(a). In opposing Medisim’s motion for JMOL of no
anticipation, BestMed’s counsel stated: “On . . . anticipa-
tion, I submit that the jury can readily find that the FHT-
1 product, Medisim’s own product, is anticipatory.
There’s clear and convincing evidence, we submit, on that
issue. Also [Medisim’s witnesses’] testimony support[s]
MEDISIM LTD. v. BESTMED, LLC 5

that position. But, again, it’s definitely something for the
jury.” J.A. 4530.
In addition, BestMed expressly moved for JMOL un-
der Rule 50(a) of no unjust enrichment at the close of
Medisim’s case-in-chief, generally contending that “[t]here
is no evidence of unjust enrichment” and particularly
challenging Medisim’s evidence on each element of the
claim. J.A. 4141. The district court denied all JMOL
motions, and the jury found the ’668 patent to be not
invalid and infringed. See Medisim¸ 959 F. Supp. 2d at
398. The jury awarded Medisim $1.2 million in patent
infringement damages and $2.29 million in damages for
its unjust enrichment claim. Id.
Following the jury verdict, BestMed moved for JMOL
of anticipation and no unjust enrichment under Rule
50(b). Medisim¸ 959 F. Supp. 2d at 399. The district
court granted those motions, overturning the verdict and
finding that the asserted claims of the ’668 patent are
anticipated by the FHT-1 thermometer. Id. at 425.
Further, the district court noted that to the extent that
BestMed’s sales of the accused products occurred during
the operation of the contracts between the parties (i.e.,
before May 1, 2009), any claim for unjust enrichment was
waived by those contracts. Id. It then found that Medi-
sim’s remaining unjust enrichment claim for any period
after May 1, 2009, was not grounded in the record, as
“there was no evidence to support a finding that BestMed
received an incremental benefit over that compensable by
the patent laws.” Id. at 426. The district court also
granted BestMed a new trial on anticipation, “conditioned
on an appellate court determining that [BestMed] failed
to preserve its right to bring a post-trial motion for
JMOL.” Id. at 421.
The district court’s ruling vacated Medisim’s entire
damages award, and Medisim has appealed to this court.
We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
6 MEDISIM LTD. v. BESTMED, LLC

III. DISCUSSION
This appeal concerns Medisim’s challenges to the dis-
trict court’s grant of JMOL on anticipation and unjust
enrichment. Medisim argues that BestMed forfeited its
right to JMOL under Rule 50(b) for both claims when it
failed to properly move for JMOL under Rule 50(a) at the
close of evidence. Medisim also challenges the district
court’s grant of JMOL on anticipation and unjust enrich-
ment on the merits. Finally, Medisim argues that the
district court abused its discretion by granting a condi-
tional new trial on anticipation. We address each of
Medisim’s challenges in turn.
A. Forfeiture of JMOL
Federal Rule of Civil Procedure 50 sets forth the pro-
cedural requirements for challenging the sufficiency of the
evidence in a civil jury trial and establishes two stages for
such challenges. Rule 50(a) allows a party to challenge
the sufficiency of the evidence prior to submission of the
case to the jury. See Fed. R. Civ. P. 50(a). Rule 50(b), by
contrast, sets forth the procedural requirements for
renewing a sufficiency of the evidence challenge after the
jury verdict. See id. 50(b); see generally Unitherm Food
Sys., Inc. v. Swift-Eckrich, Inc., 546 U.S. 394, 399-400
(2006). These two provisions are linked together, as “[a]
motion under Rule 50(b) is not allowed unless the movant
sought relief on similar grounds under Rule 50(a) before
the case was submitted to the jury.” Exxon Shipping Co.
v. Baker, 554 U.S. 471, 486 n.5 (2008).
In the past we have found that parties forfeited the
right to move under Rule 50(b) by failing to first properly
move under Rule 50(a). For example, in Duro-Last, Inc. v.
Custom Seal, Inc., we rejected the appellant’s contentions
that its specific JMOL motions at the close of evidence
regarding inequitable conduct and the on-sale bar encom-
passed broader motions that the patents were not invalid
for obviousness. 321 F.3d 1089, 1107-08 (Fed. Cir. 2003).
MEDISIM LTD. v. BESTMED, LLC 7

We then explained that “[s]ince a post-trial motion for
JMOL can be granted only on grounds advanced in the
pre-verdict motion, Duro-Last was precluded from making
a post-trial motion under Rule 50(b) for JMOL that its
patents were not invalid for obviousness.” Id. at 408.
Similarly, in i4i Limited Partnership v. Microsoft Corp.,
we concluded that the appellant waived its right to chal-
lenge the factual findings underlying the jury’s implicit
obviousness verdict because it did not file a pre-verdict
JMOL on obviousness for three specific references. See
598 F.3d 831, 845 (Fed. Cir. 2010) aff’d, 131 S. Ct. 2238
(2011). With this precedent in mind, we can now turn to
the questions of whether BestMed failed to properly move
for JMOL on anticipation and unjust enrichment.
1. Forfeiture of JMOL on Anticipation
Medisim first argues that BestMed failed to move for
JMOL on anticipation under Rule 50(a), so it was fore-
closed from doing so under Rule 50(b). Therefore, Medi-
sim claims that the district court should have refrained
from ruling on anticipation after the jury verdict under
Rule 50(b).
BestMed denies such forfeiture. In support of its ar-
gument, it points to a statement it made on the record at
the close of evidence in opposition to Medisim’s JMOL
motion for no anticipation. Its counsel stated: “On . . .
anticipation, I submit that the jury can readily find that
the FHT-1 product, Medisim’s own product, is anticipa-
tory. There’s clear and convincing evidence, we submit,
on that issue. Also [Medisim’s witnesses’] testimony
support[s] that position. But, again, it’s definitely some-
thing for the jury.” J.A. 4530.
While BestMed concedes that this statement was “not
a model of clarity,” it argues that Medisim was on notice
of BestMed’s position. Appellant’s Br. 59. Further,
BestMed notes that when Medisim moved to strike Best-
Med’s Rule 50(b) motion on anticipation, the district court
8 MEDISIM LTD. v. BESTMED, LLC

recognized that BestMed had “asserted its present inva-
lidity contentions on the record, and the Court ha[d]
stated that all of its contentions had been re-asserted and
preserved.” Order at 3, Medisim Ltd. v. BestMed LLC,
No. 1:10-cv-02463 (S.D.N.Y. Mar. 18, 2013), ECF No. 190.
The district court concluded that Medisim had not been
unfairly surprised by BestMed’s anticipation contentions.
Id. The district court explained:
[T]he rule of Duro-Last, Inc. v. Custom Seal, Inc.,
which i4i Partnership applies, is based on the
proposition that it would be impermissible under
the Seventh Amendment to re-examine the jury’s
verdict upon grounds not raised prior to the ver-
dict. Here, this rule is easily met: BestMed has
pressed its invalidity contentions since well before
the jury was sworn, the jury was instructed as to
invalidity, and BestMed presented its present in-
validity contentions, and its supporting evidence,
on the record.
Id. at 4.
While Medisim may not have been surprised by
BestMed’s invalidity contentions, the Supreme Court has
held previously that our Federal Rules of Civil Procedure
are to be strictly followed in circumstances such as this
one. In Unitherm, for example, a party moved for a
directed verdict under Rule 50(a) prior to the district
court’s submission of the case to the jury, but following
the verdict the party failed to renew its motion for JMOL
pursuant to Rule 50(b). See 546 U.S. at 398. In prevent-
ing the party from challenging the sufficiency of the
evidence on appeal, the Supreme Court stated that “a
party is not entitled to pursue a new trial on appeal
unless that party makes an appropriate postverdict
motion in the district court.” Id. at 404. While the issue
here is whether BestMed failed to move under Rule 50(a),
the principle of forfeiture articulated in Unitherm re-
MEDISIM LTD. v. BESTMED, LLC 9

mains the same. See, e.g., Yakus v. United States, 321
U.S. 414, 444 (1944) (“No procedural principle is more
familiar to this Court than that a . . . right may be forfeit-
ed . . . by the failure to make timely assertion of the right
before a tribunal having jurisdiction to determine it.”).
With that principle in mind, we conclude that Best-
Med forfeited its right to move for JMOL on anticipation.
The statement that BestMed now relies on as evidence of
a motion for JMOL actually indicates the opposite—
BestMed’s counsel stated that anticipation was “definitely
something for the jury.” J.A. 4530. Further, BestMed’s
counsel made this statement in opposition to Medisim’s
motion for JMOL under Rule 50(a); BestMed never moved
on its own for JMOL on anticipation before the case was
submitted to the jury. See id. Indeed, BestMed’s counsel
conceded that BestMed “did not expressly say [that] we
cross-move for JMOL when they moved for JMOL on the
anticipation issue . . . .” Oral Arg. 22:59-23:08 available
at http://www.cafc.uscourts.gov/oral-argument-recordings/
13-1451/all. Finally, regarding the district court’s state-
ment that BestMed had “preserved the record, [and]
renewed all the motions previously made,” we note that
this statement was made following a discussion of Best-
Med’s unjust enrichment claims. See J.A. 4398. The
district court’s later statement that “the [c]ourt ha[d]
stated that all of its contentions had been re-asserted and
preserved” came only after Medisim requested that the
district court strike BestMed’s Rule 50(b) motion regard-
ing validity. See Order at 3, Medisim Ltd. v. BestMed
LLC, No. 1:10-cv-02463 (S.D.N.Y. Mar. 18, 2013), ECF
No. 190. But by then it was too late—BestMed had
already forfeited the right to move for JMOL under Rule
50(b). Therefore, we conclude that the district court
legally erred in ruling on any validity issues after the jury
verdict under Rule 50(b).
Because we vacate the district court’s grant of JMOL
on anticipation due to forfeiture, we need not consider
10 MEDISIM LTD. v. BESTMED, LLC

whether the district court erred in granting JMOL on
anticipation on the merits.
2. No Forfeiture of JMOL on Unjust Enrichment
We next turn to Medisim’s procedural challenge to the
district court’s grant of JMOL on unjust enrichment.
Again, Medisim argues that BestMed forfeited its right to
move for JMOL under Rule 50(b) when it failed to proper-
ly move for JMOL under Rule 50(a). Medisim claims that
although BestMed did move for JMOL under Rule 50(a),
the basis for its pre-verdict motion bears no resemblance
to the basis for its post-verdict Rule 50(b) motion.
BestMed responds that it expressly moved for JMOL
of no unjust enrichment at the close of Medisim’s case-in-
chief, generally contending that “[t]here is no evidence of
unjust enrichment” and particularly challenging Medi-
sim’s evidence on each element of the claim. J.A. 4141.
BestMed alleges that the district court cut BestMed’s
counsel off and denied the motion. When BestMed’s
counsel tried to renew BestMed’s JMOL motions later, the
district court barred any further discussion, saying “you
preserved the record.” J.A. 4398.
We conclude that BestMed did not forfeit its right to
move for JMOL on unjust enrichment under Rule 50(b)
because it adequately made such a motion under Rule
50(a). On appeal, Medisim bases its unjust enrichment
argument on misappropriation of its allegedly proprietary
water bath testing procedure, but during a two-week trial
Medisim did not present much evidence on this issue. In
fact, during oral argument, we asked Medisim’s counsel to
show us where in the record it had presented an unjust
enrichment claim based on its water bath testing proce-
dure. Medisim’s counsel responded by saying, “At this
point I couldn’t specifically say where . . . .” Oral Arg.
18:07-11 available at http://www.cafc.uscourts.gov/oral-
argument-recordings/13-1451/all. He then admitted that
“[s]ometimes things are not as precise as you would like.”
MEDISIM LTD. v. BESTMED, LLC 11

Id. at 18:46-49. After reviewing the record, we too could
not find a precise presentation of an unjust enrichment
claim based on the water bath testing procedure. Instead,
Medisim used its unjust enrichment claim to request a
disgorgement-of-profits remedy without explaining its
basis for the actual claim. Faced with a generic case,
BestMed could only make a generic motion under Rule
50(a). And it clearly accomplished that—its motion
explained why Medisim was not entitled to prevail on
unjust enrichment because it had failed to show that it
had been denied a legitimate expectation of compensation,
a necessary element of the claim. Since we conclude that
there was no forfeiture of JMOL under Rule 50(b), we
next review whether the district court erred in granting
BestMed’s motion on the merits.
B. Grant of JMOL on Unjust Enrichment
The Second Circuit reviews “a district court’s resolu-
tion of a motion for judgment as a matter of law” de novo
and applies “the same standard as the district court itself
was required to apply.” Diesel v. Town of Lewisboro, 232
F.3d 92, 103 (2d Cir. 2000) (citations omitted). In doing
so, the Second Circuit will “consider the evidence in the
light most favorable to the non-moving party and give
that party the benefit of all reasonable inferences from
the evidence that the jury might have drawn in that
party’s favor,” id. (citation omitted), but “cannot assess
the weight of conflicting evidence, pass on the credibility
of the witnesses, or substitute its judgment for that of the
jury,” LeBlanc-Sternberg v. Fletcher, 67 F.3d 412, 429 (2d
Cir. 1995) (citations omitted). Unjust enrichment re-
quires “1) that the defendant benefited; 2) at the plain-
tiff’s expense; and 3) that equity and good conscience
require restitution.” Kaye v. Grossman, 202 F.3d 611, 616
(2d Cir. 2000) (citation omitted).
Below, the district court found that there was no evi-
dence in the record to support the jury’s award of damag-
12 MEDISIM LTD. v. BESTMED, LLC

es to Medisim for unjust enrichment. Medisim, 959 F.
Supp. 2d at 425-26. It noted that “[t]o the extent that
BestMed’s sales of the accused products occurred during
the operation of the IDA and the PSA, any claim for
unjust enrichment is waived by those contracts,” which
Medisim conceded. Id. at 425 n.180. Therefore, the only
issue that remains is whether Medisim is entitled to
damages for unjust enrichment following the expiration of
the IDA and PSA.
Medisim argues that its unjust enrichment claim is
based on the enrichment that BestMed obtained from
selling thermometers developed through the unauthorized
use of Medisim’s proprietary, non-public information, to
Medisim’s detriment. Specifically, Medisim argues that it
developed a successful water bath testing procedure,
which was a prerequisite to selling thermometers in the
United States. It claims that it was particularly difficult
to develop a reliable procedure for devices that calculated
approximations of core body temperatures rather than
temperatures measured at the surface of the skin.
BestMed responds that although Medisim now makes
water bath testing the focus of its unjust enrichment case,
that issue was only a small part of Medisim’s overall
unfair competition case below, and Medisim never asked
the jury to find unjust enrichment on that basis. Indeed,
BestMed argues that the unjust enrichment claim “fell in
the interstices” of Medisim’s other claims. See Medisim,
959 F. Supp. 2d at 417.
We agree with BestMed. During trial, Medisim failed
to present any evidence to support a finding that BestMed
received an incremental benefit from Medisim’s allegedly
proprietary water bath testing procedure over that com-
pensable by the patent laws. It grouped together its
patent and non-patent damages claims, relying on Best-
Med’s profits from all of the accused products. See Medi-
sim, 959 F. Supp. 2d at 426 n.182. Medisim offered no
MEDISIM LTD. v. BESTMED, LLC 13

evidence to show why BestMed had reason to think that
Medisim’s procedures for water bath testing were confi-
dential or otherwise proprietary. Thus, even when view-
ing all the evidence in the light most favorable to
Medisim, we cannot conclude that equity and good con-
science require restitution.
C. Conditional Grant of New Trial on Anticipation
Finally, we turn to the district court’s conditional
grant of a new trial. A court may set aside the verdict
and order a new trial even if no motion for JMOL was
made under Rule 50(a). See Bracey v. Bd. of Educ. of City
of Bridgeport, 368 F.3d 108, 117-20 (2d Cir. 2004) (grant-
ing Rule 59 motion in the absence of a Rule 50(a) motion);
MacQuesten Gen. Contracting, Inc. v. HCE, Inc., 128 F.
App’x 782, 784 (2d Cir. 2005) (“While MacQuesten failed
during the trial to make a motion for judgment as a
matter [of] law pursuant to Rule 50(a), that is no impedi-
ment to a Rule 59(a) motion.”). In the Second Circuit, “[a]
motion for new trial ordinarily should not be granted
unless the trial court is convinced that the jury has
reached a seriously erroneous result or that the verdict is
a miscarriage of justice.” Townsend v. Benjamin Enters.,
Inc., 679 F.3d 41, 51 (2d Cir. 2012) (citation omitted). The
Second Circuit reviews whether a district court properly
granted a new trial under an abuse of discretion stand-
ard. Binder v. Long Island Lighting Co., 57 F.3d 193, 202
(2d Cir. 1995).
Below, the district court did not elaborate on its rea-
sons for granting BestMed’s motion for a new trial, condi-
tioned on our determination that BestMed failed to
preserve its right to bring a post-trial motion for JMOL on
anticipation. Instead, it made its ruling in a footnote. See
Medisim, 959 F. Supp. 2d at 421 n.158.
Medisim challenges the district court’s reasoning, or
more accurately the lack thereof, arguing that the district
court failed to state the grounds for conditionally granting
14 MEDISIM LTD. v. BESTMED, LLC

the motion for a new trial as required in Federal Rule of
Civil Procedure 50(c)(1). Medisim argues that in address-
ing the request for a new trial only in a footnote, the
district court did not provide any legal or evidentiary
grounds to support the conditional grant. It claims that
in its brevity, the district court abused its discretion. See,
e.g., Portage II v. Bryant Petroleum Corp., 899 F.2d 1514,
1524 (6th Cir. 1990) (stating that “[t]he district court’s
failure to state a basis for conditionally granting the new
trial, provides another reason for finding that a new trial
is unwarranted”).
However, BestMed argues this was not a case where
the court found the verdict against the weight of the
evidence without further elaboration. It notes that the
district court provided a detailed explanation as to why it
found that BestMed had proven anticipation. See Medi-
sim, 959 F. Supp. 2d at 420-25.
We agree with BestMed. Given the context and the
surrounding discussion, the district court’s reasoning is
clear enough to pass Rule 50(c)(1) muster. The section of
its opinion where the district court conditionally granted
the new trial is entitled “The ’668 Patent Is Anticipated
by the FHT-1 Thermometer.” Medisim, 959 F. Supp. 2d
at 420. In that section, the district court calls BestMed’s
anticipation argument overwhelmingly strong. Id. The
district court then proceeds to discuss all of the evidence
which supports its conclusion, which we summarize here.
Id. at 420-25.
The record shows that Medisim’s expert witness, Dr.
Lipson, conceded that the FHT-1 calculated an intermedi-
ate temperature and that if “the intermediate tempera-
ture calculated by . . . the prior art FHT-1 thermometer, is
a deep tissue temperature,” then the FHT-1 anticipates
claim 1 of the ’668 patent and “whatever [other claims]
require[] the deep tissue limitation.” J.A. 4442-43.
Therefore, as the district court correctly noted, anticipa-
MEDISIM LTD. v. BESTMED, LLC 15

tion turns on one issue in this case: whether the interme-
diate temperature concededly calculated by the FHT-1
using the heat-flux algorithm of the ’397 patent qualifies
as a deep tissue temperature as claimed in the ’668 pa-
tent.
The specification of the ’668 patent relies on the ’397
patent to provide the algorithm to compute its deep-tissue
temperature. The ’668 patent defines a local, deep-tissue
temperature as “a temperature at a location under the
skin that is the source of heat conducted to the sensors in
the probe.” ’668 patent col. 6 ll. 59-62. It also expressly
describes the “heat flux calculation” of the ’397 patent as
a method “to rapidly compute a deep tissue temperature of
the body.” Id. at col. 1 ll. 65-67 (emphasis added). The
specification further describes a processing unit that uses
the heat-flux algorithm of the ’397 patent to generate the
deep-tissue temperature. Id. at col. 6 ll. 55-59 (“Using the
heat flux algorithm described in the above-mentioned
U.S. Pat. No. 6,280,397 . . . , the processing unit calculates
from the temperature readings a local temperature.”); col.
7 ll. 16-17 (“[T]he value of local body temperature deter-
mined by the ’397 algorithm.”). In the preferred embodi-
ment, the deep-tissue temperature is converted to a core-
body temperature using an equation that includes the
output of the heat-flux algorithm of the ’397 patent,
denoted Tavg. Id. at col. 9 ll. 34-36 (equation); col. 9 ll.
62-63 (defining Tavg as the output of the heat-flux algo-
rithm of the ’397 patent). This intrinsic evidence, all
discussed by the district court, heavily supports the
conclusion that the FHT-1 calculates a deep tissue tem-
perature and, therefore, anticipates the ’668 patent.
BestMed’s expert, Mr. Goldberg, also offered support-
ing testimony, which the district court considered. For
example, Mr. Goldberg identified particular portions of
code that shows a calculation of a deep tissue tempera-
ture. Additionally, Medisim produced and distributed
many pre-litigation documents stating that its R.A.T.E. TM
16 MEDISIM LTD. v. BESTMED, LLC

technology as found in the FHT-1 thermometer measures
the temperature under the skin. While not dispositive in
and of themselves, 2 these documents further support the
district’s court conclusion that BestMed is entitled to a
new trial. For example, one such document stressed that
“[i]n R.A.T.E TM technology we do not use [a] prediction for
getting the final temperature, but we use [a] calculation
in real time of the temperature beneath the skin.” J.A.
9454. Medisim tried to dismiss this evidence as market-
ing fluff, but the documents addressed sophisticated
audiences and contained equations and other technical
descriptions. This too supports the conclusion that the
R.A.T.E TM technology found in the FHT-1 used the heat-
flux algorithm of the ’397 patent in the same way de-
scribed in the ’668 patent.
While we acknowledge that the district court’s discus-
sion of the aforementioned evidence ends with the grant
of JMOL on anticipation, we conclude that this same
reasoning is applicable to the conditional grant of a new
trial. Therefore, the district court’s conditional grant of a
new trial was amply supported by the evidence. It did not
abuse its discretion in granting BestMed’s motion for a
new trial.
Medisim also challenges the district court’s statement
that, should the case be remanded for a new trial, it
would “then entertain a motion for summary judgment on
anticipation.” Medisim, 959 F. Supp. 2d at 421 n.158. It
argues that the district court has already “pre-judged this

2 A trademark acts as an identifier of the source of
goods or services and does not automatically evidence
meaning as to functionality. 15 U.S.C. §§ 1052 & 1127;
Christian Louboutin S.A. v. Yves Saint Laurent Am.
Holding, Inc., 696 F.3d 206, 218 (2d Cir. 2012) (citing
Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 165
(1995)).
MEDISIM LTD. v. BESTMED, LLC 17

summary judgment motion in BestMed’s favor.” Appel-
lant’s Br. 57. But Medisim’s contention is premature. We
repeat, however, what we said in a previous case: “In
remanding for a limited new trial [on literal infringement
and obviousness] . . . we do not foreclose the district court
from entertaining a motion for summary judgment on
these issues that might obviate the need for a further
trial.” ArcelorMittal Fr. v. AK Steel Corp., 700 F.3d 1314,
1326 (Fed. Cir. 2012).
IV. CONCLUSION
For the foregoing reasons, we affirm the district
court’s grant of JMOL regarding Medisim’s unjust en-
richment claims. We vacate the district court’s grant of
JMOL regarding Medisim’s anticipation claims but affirm
its conditional grant of a new trial. We remand this case
to the district court for further proceedings consistent
with this opinion.
AFFIRMED-IN-PART, VACATED-IN-PART, AND
REMANDED