SEB SA v. Montgomery Ward & Co., Inc.

United States Court of Appeals for the Federal Circuit
2009-1099, -1108, -1119

SEB S.A.,

Plaintiff/Counterclaim Defendant-
Cross Appellant,

and

T-FAL CORPORATION,

Counterclaim Defendant,

v.

MONTGOMERY WARD & CO., INC.,

Defendant,

and

GLOBAL-TECH APPLIANCES, INC.,

Defendant-Appellant,

and

PENTALPHA ENTERPRISES, LTD.,

Defendant/Counterclaimant-
Appellant.

Norman H. Zivin, Cooper & Dunham LLP, of New York, New York, argued for
plaintiff/counterclaim defendant-cross appellant. With him on the brief was Wendy E.
Miller.

William Dunnegan, Dunnegan LLC, of New York, New York, argued for
defendant-appellant and defendant/counterclaimant-appellant. With him on the brief
was Laura Scileppi.

Appealed from: United States District Court for the Southern District of New York

Judge Stephen C. Robinson
United States Court of Appeals for the Federal Circuit

2009-1099, -1108, -1119

SEB S.A.,

Plaintiff/Counterclaim Defendant-
Cross Appellant,
and

T-FAL CORPORATION,

Counterclaim Defendant,

v.

MONTGOMERY WARD & CO., INC.,

Defendant,

and

GLOBAL-TECH APPLIANCES, INC.,

Defendant-Appellant,

and

PENTALPHA ENTERPRISES, LTD.,

Defendant-Counterclaimant-
Appellant.

Appeals from the United States District Court for the Southern District of New
York in 99-CV-9284, Judge Stephen C. Robinson.

___________________________

DECIDED: February 5, 2010
___________________________
Before RADER, BRYSON, and LINN, Circuit Judges.

RADER, Circuit Judge.

This case began in August of 1999 when Plaintiff SEB S.A. (“SEB”) sued

defendants Montgomery Ward & Co., Inc. (“Montgomery Ward”), Global-Tech

Appliances, Inc. (“Global-Tech”), and Pentalpha Enterprises, Ltd. (“Pentalpha”) for

infringement of U.S. Patent No. 4,995,312 (the “’312 patent”). Almost seven years later,

a jury found that Pentalpha had willfully infringed, and induced infringement of, claim 1

of the ’312 patent and awarded SEB $4.65 million in damages. Pentalpha filed post-trial

motions on a number of grounds. The district court granted them in part, reducing the

amount of damages by $2 million. SEB S.A. v. Montgomery Ward & Co., No. 99-9284,

2007 WL 3165783 (S.D.N.Y. Oct. 9, 2007) (“JMOL Opinion”). The district court awarded

SEB enhanced damages and attorneys’ fees, but later vacated that award in light of this

court’s decision in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en

banc). SEB S.A. v. Montgomery Ward & Co., No. 99-9284, 2008 WL 4540416

(S.D.N.Y. Oct. 1, 2008) (“Enhanced Damages Opinion”). On appeal, Pentalpha raises a

host of issues that relate to the jury verdict and the district court’s post-trial rulings. SEB

cross-appeals the district court’s enhanced damages ruling. Detecting no reversible

error in the district court proceedings, this court affirms.

I.

SEB is a French company that specializes in home-cooking appliances. It sells

products in the United States through an indirect subsidiary, T-Fal Corp. (“T-Fal”).

SEB owns the ’312 patent, entitled “Cooking Appliance with Electric Heating,” which

claims a deep fryer with an inexpensive plastic outer shell, or skirt. In the past, skirts for

2009-1099, -1108, -1119 2
deep fryers were made of plastic material capable of continuously withstanding

temperatures higher than 150º C. These heat resistant plastics, however, are

expensive and therefore incompatible with large-scale manufacture of low-priced fryers.

The skirt disclosed in the ’312 patent, labeled with the number 3 in the cross-

section shown below, is well-insulated from the heat of the fryer’s metal pan (1).

The ’312 patent explains construction of a deep fryer with a well-insulated skirt. A ring

of heat-insulating and heat-resistive material (5) joins the top edge of the skirt to the top

edge of the pan. Other than that ring, however, the skirt is “completely free with respect

to the pan.” ’312 patent col.1 l.65-col.2 l.2. The skirt and the pan are separated by “an

air space of sufficient width to limit the temperature of the skirt.” Id. at col.1 ll.60-64.

Thus, because of the insulation provided by air space, the skirt “can be fabricated from

inexpensive ordinary-grade plastic material [that] does not afford resistance to high

temperatures.” Id. at col.4 ll.32-35.

Claim 1 of the ’312 patent, the only claim at issue, reads as follows (emphasis

added):

An electrical deep fryer comprising a metal pan (1) having a wall, and an
electric heating resister [sic] (2) that heats said wall directly by conductive
heating to a temperature higher than 150º C., said pan (1) being

2009-1099, -1108, -1119 3
 surrounded by a plastic skirt (3), wherein said skirt (3) is of plastic material
which does not continuously withstand a temperature of 150º C., said skirt
(3) entirely surrounding the lateral wall (1a) and the base (1b) of the pan
and being separated from said wall and said base by an air space (4) of
sufficient width to limit the temperature of the skirt (3) to a value which is
compatible with the thermal resistance of the plastic material of the skirt
(3), said skirt (3) being completely free with respect to the pan (1) with the
exception of a ring (5) which joins only the top edge (3a) of the skirt to the
top edge (1c) of the pan and to which this latter is attached, said ring (5)
being of heat-insulating material which is continuously resistant to the
temperature of the top edge (1c) of the pan (1).

Defendant Pentalpha is a Hong Kong corporation and a subsidiary of defendant

Global-Tech, a British Virgin Islands corporation, which was formerly known as Wing

Shing International, Ltd. (For convenience, this opinion will refer to Pentalpha and

Global-Tech collectively as “Pentalpha.”) Pentalpha began selling its accused deep

fryers to non-party Sunbeam Products, Inc. (“Sunbeam”) in 1997. In developing its

deep fryer, Pentalpha purchased an SEB deep fryer in Hong Kong and copied its “cool

touch” features. Shortly after agreeing to supply Sunbeam, Pentalpha obtained a “right-

to-use study” from an attorney in Binghamton, New York. The attorney analyzed 26

patents and concluded that none of the claims in those patents read on Pentalpha’s

deep fryer. Pentalpha, however, did not tell the attorney that it had copied an SEB deep

fryer.

Sunbeam resold the Pentalpha deep fryers in the United States under its own

trademarks, “Oster” and “Sunbeam.” On March 10, 1998, SEB sued Sunbeam in the

United States District Court for the District of New Jersey, alleging that Sunbeam’s sales

infringed the ’312 patent (the “Sunbeam Suit”). See SEB S.A. v. Sunbeam Corp., No.

2:98-CV-1050 (date closed May 28, 2002). Pentalpha was notified of the Sunbeam Suit

on April 9, 1998. That suit ended in a settlement in which Sunbeam agreed to pay SEB

$2 million.
2009-1099, -1108, -1119 4
 Pentalpha also sold the same deep fryers to non-party Fingerhut Corp.

(“Fingerhut”) and defendant Montgomery Ward. These sales to Fingerhut and

Montgomery Ward occurred after Pentalpha learned of the Sunbeam Suit. Like

Sunbeam, Fingerhut and Montgomery Ward also sold the products under their own

trademarks, CHEF’S MARK and ADMIRAL. Pentalpha sold these deep fryers to its

three customers free on board Hong Kong or mainland China. “Free on board,” or

“f.o.b.,” is a “method of shipment whereby goods are delivered at a designated location,

usually a transportation depot, at which legal title and thus the risk of loss passes from

seller to buyer.” Litecubes, LLC v. N. Light Prods., Inc., 523 F.3d 1353, 1358 n.1 (Fed.

Cir. 2008).

II.

SEB filed a motion for a preliminary injunction on September 10, 1999. Following

a claim construction hearing, the district court granted SEB’s motion, holding that SEB

was likely to prove at trial that Pentalpha’s deep fryers infringe at least claim 1 of the

’312 patent. SEB S.A. v. Montgomery Ward & Co., 77 F. Supp. 2d 399 (S.D.N.Y. 1999)

(“Preliminary Injunction Opinion”). This court affirmed the preliminary injunction order

without opinion. SEB, S.A. v. Montgomery Ward & Co., Inc., 243 F.3d 566 (Fed. Cir.

2000) (Rule 36).

Pentalpha then redesigned its deep fryer by replacing the ring that separated the

skirt and the pan with six blocks or ring segments. SEB sought to supplement the

original preliminary injunction to include Pentalpha’s modified deep fryer. The district

court granted SEB’s application for supplemental injunctive relief in 2001, finding that

SEB was likely to prove at trial that the modified fryer infringes at least claim 1 of the

2009-1099, -1108, -1119 5
’312 patent under the doctrine of equivalents. SEB S.A. v. Montgomery Ward & Co.,

137 F. Supp. 2d 285 (S.D.N.Y. 2001) (“DOE Opinion”). Pentalpha’s primary argument,

which the district court did not adopt, was based on prosecution history estoppel.

Pentalpha did not appeal the district court’s ruling of infringement by equivalents.

Discovery closed on October 30, 2001. On April 17, 2006, the district court

commenced a trial. During trial, the record shows that the jury received evidence of

Pentalpha’s sales to Sunbeam, Fingerhut, and Montgomery Ward. Following the close

of evidence, Pentalpha moved for judgment as a matter of law (“JMOL”) on SEB’s claim

that Pentalpha had induced infringement of the ’312 patent through those sales.

Pentalpha’s JMOL motion was based on the lack of evidence that anyone at Pentalpha

“had any knowledge whatsoever with respect to the existence of the patent.” J.A. 2209.

The district court noted at the Rule 50(a) motion proceedings that “there is no evidence

that [Pentalpha] was aware of [the ’312] patent” before April 9, 1998. Nonetheless, the

court held that there was evidence to support SEB’s theory of inducement, which the

court characterized as follows:

[SEB is] saying that you could infer the specific intent to . . . encourage the
infringement by the fact that [Pentalpha’s president] doesn’t disclose that
[Pentalpha copied the SEB product] to the people doing the [patent]
search. [Pentalpha] wants them to do a search that . . . is doomed to
failure, and that that is enough, that a reasonable jury could infer that,
specific intent. . . . . Here is the argument. There are a zillion patent
attorneys in New York City, [yet] [t]hey go to this guy in the middle of
nowhere to do this patent search. . . . I don’t know what happened. I’m
not in [Pentalpha’s President’s] head. I don’t know what he did. . . . I
think it is . . . a reasonable argument, could a jury infer from those actions,
if they chose to believe them in the way the plaintiffs want, that that was
an indication that [he] understood that he was likely violating a patent, in
fact violating a patent.

The district court therefore allowed SEB’s inducement claim to reach the jury.

2009-1099, -1108, -1119 6
 The jury found that Pentalpha, with both its original and modified deep fryers,

willfully infringed claim 1 of the ’312 patent. The jury also found that Pentalpha induced

others to infringe with both versions of the fryers. As damages, the jury awarded SEB a

total of $4.65 million as a reasonable royalty, with $3.6 million attributable to Sunbeam’s

sales of Pentalpha’s deep fryers, $540,000 to Fingerhut’s sales, and $510,000 to

Montgomery Ward’s sales.

Pentalpha then renewed its motion for JMOL and moved for a new trial, arguing

that SEB did not adequately prove inducement under 35 U.S.C. § 271(b). Pentalpha

also sought an offset of damages in an amount equal to the $2 million that SEB

received in its settlement with Sunbeam. SEB filed a cross motion for enhanced

damages, attorneys’ fees, prejudgment interest, and injunctive relief.

In response to Pentalpha’s post-trial motions, the district court reduced the

damages award by $2 million. JMOL Opinion, 2007 WL 3165783, at *5. The trial court

denied the rest of Pentalpha’s post-trial motions. Id. at *12. The district court granted

SEB’s cross-motion in part, based on the reduced award, id. at *10-12, but later vacated

its award of enhanced damages and attorneys’ fees based on Seagate, Enhanced

Damages Opinion, 2008 WL 4540416, at *4. Thus, the district court entered judgment

against Pentalpha in the amount of $4,878,341. These appeals followed.

III.

As a threshold matter, this court needs to address a claim construction issue.

The district court, as a part of its preliminary injunction order in 1999, construed the

limitation “completely free with respect to the pan” in claim 1 to mean “there are no

thermal bridges between the skirt and the pan.” Preliminary Injunction Opinion, 77 F.

2009-1099, -1108, -1119 7
Supp. 2d at 405. A thermal bridge is an element that conducts heat. As a matter of

context, this court notes that a vertical stabilizing screw secures the skirt of Pentalpha’s

fryer to the base of the pan. This screw, however, is not a thermal bridge. Thus, the

stabilizing screw does not preclude the conclusion that the skirt is “completely free with

respect to the pan” under the district court’s claim construction. But if “completely free”

means instead “no solid material between the pan and the skirt,” as Pentalpha

contends, then the stabilizing screw absolves Pentalpha’s deep fryer of infringement.

This court, of course, reviews claim construction without deference. Cybor Corp.

v. FAS Techs., Inc., 138 F.3d 1448, 1455-56 (Fed. Cir. 1998) (en banc). This court’s

prior affirmance of the district court’s preliminary injunction order does not make the

district court’s claim construction in its 1999 opinion the law of the case. See Int’l

Commc’n Materials, Inc. v. Ricoh Co., 108 F.3d 316, 319 (Fed. Cir. 1997) (claim

construction for a preliminary injunction is not definitive “without the more complete

record that the district court deemed necessary to its own final decision”). The words of

a claim receive the meaning discernible by a person of ordinary skill in the art who has

read the entire patent, including the specification, at the time of the invention. Phillips v.

AWH Corp., 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) (en banc). The claims

themselves, both asserted and unasserted, govern the meaning of claim terms. Id. at

1314.

This court perceives a slight internal inconsistency with the district court’s claim

construction of “completely free” in the phrase “said skirt (3) being completely free with

respect to the pan (1) with the exception of a ring (5).” The claim requires the ring to be

“heat-insulating” and “continuously resistant to the temperature of the . . . pan.” Thus,

2009-1099, -1108, -1119 8
the ring is not a thermal bridge. If “completely free” merely meant “no thermal bridges

between the skirt and the pan,” the claim would not need to exclude expressly the ring

from the completely free limitation.

Despite this minor inconsistency, the district court’s construction of “completely

free” rings true. Claim 8 of the ’312 patent, which depends from claim 1, adds an

insulated stabilizing screw between the base of the pan and the base of the skirt. ’312

patent col.6 ll.19-24. With this context, a person of ordinary skill in the art would not

read the “completely free” limitation of claim 1 to mean “no solid material between the

pan and the skirt” because that reading would not allow for the vertical rod of claim 8.

See Phillips, 415 F.3d at 1314 (“Differences among claims can . . . be a useful guide in

understanding the meaning of particular claim terms.”).

Moreover, the only embodiment in the specification includes solid material

between the pan and the skirt, namely, the vertical rod, id. at col.3 ll.55-65, as well as a

thermostat attached to the base of the pan, id. at col.4 ll.3-7. “[A] construction that

would not read on the preferred embodiment would rarely if ever be correct and would

require highly persuasive evidentiary support.” Chimie v. PPG Indus., Inc., 402 F.3d

1371, 1377 (Fed. Cir. 2005) (internal quotations and alterations omitted). Thus, with the

preferred embodiment showing a vertical stabilizing screw, the “completely free”

limitation cannot be read so broadly as to exclude this preferred embodiment.

Finally, the specification repeatedly highlights the inventiveness of eliminating

thermal bridges to prevent heat transfer to the plastic skirt. For example, the

specification notes that in the prior art, “the attachment of the metal pan within the

plastic skirt is such that numerous thermal bridges exist between said pan and said

2009-1099, -1108, -1119 9
skirt.” ’312 patent col.1 ll.38-40. Those thermal bridges required the skirt to be “formed

of [costly] plastic material.” Id. at col.1 ll.41-42. Following the theme of preventing heat

transfer, the specification discusses a thermostat between the pan and the skirt but

emphasizes its placement “remote from the base 21 of the skirt 3 of plastic material in

order to prevent any thermal bridge which would be liable to heat this plastic material to

an excessive extent.” Id. at col.4 ll.3-8. Thus, the patent stresses that eliminating

thermal bridges is not the same as eliminating any solid material.

Read in light of the entire specification and with an eye to the preferred

embodiment, then, the term “completely free” means “practically or functionally free.”

Indeed, the specification uses the two terms “completely” and “practically”

interchangeably. Compare ’312 patent col. 1 ll.65-66 (“Said skirt is completely free with

respect to the pan . . . .”) (emphasis added) with id. at col. 4 ll.28-35 (“[I]n addition to the

fact that the skirt 3 is practically free with respect to the pan 1 or in other words that no

thermal bridge is created between the pan and the skirt, this latter can be fabricated

from inexpensive ordinary-grade plastic material, which does not afford resistance to

high temperatures.”) (emphasis added). This court often assumes that different terms

convey different meanings. Symantec Corp. v. Computer Assocs. Int’l, Inc., 522 F.3d

1279, 1289 (Fed. Cir. 2008). That assumption, however, carries less weight when

comparing a term in the claim to a term in the specification, especially where, as here,

the specification only describes one embodiment. Cf. id. (“[T]here is nothing in the

claims, the specification or the prosecution history that suggests that the preamble

language ‘as it is being transferred’ has any different meaning than [the claim term]

‘prior to storage.’”).

2009-1099, -1108, -1119 10
 Pentalpha supplies some evidentiary support for its proposed construction, but

that support is not “highly persuasive” or sufficient to overcome the meaning that

embraces the preferred embodiment. During prosecution of the ’312 patent, the

examiner rejected the proposed claims as anticipated by or obvious over U.S. Patent

No. 4,672,179 (“Onishi”). Onishi discloses a rice cooker with the side walls of the pan

and the side wall of the skirt separated by an adiabatic material, or a material that does

not gain or lose heat:

Onishi at Fig. 1, col.2 ll.49-53.

To distinguish Onishi, the applicant stated

in ONISHI . . ., the two walls 1 and 3 are separated by an adiabatic
material 2 (whose nature is not specified) whereas in the case of the
present invention, the outer plastic skirt 3 is completely free with respect to
the pan 1 with the exception of a ring 5. This means that the space
comprised between the skirt 3 and the pan 1 is entirely occupied by air
and that there is no solid material therebetween.

A-119 (emphasis added). Pentalpha argues that SEB thereby narrowed the claim

limitation “completely free” during prosecution and that the doctrine of prosecution

disclaimer should preclude the district court’s construction. See N. Am. Container, Inc.

v. Plastipak Packaging, Inc., 415 F.3d 1335, 1346 (Fed. Cir. 2005) (“[W]e have

2009-1099, -1108, -1119 11
previously explained that limitations may be construed to exclude a preferred

embodiment if the prosecution history compels such a result.”).

Contrary to Pentalpha’s contentions, however, this court interprets this

prosecution history as consistent with the district court’s claim construction. As noted,

this also allows this court to account for the only embodiment provided in the ’312

patent’s specification. Thus, read in context, the applicant’s reference to “no solid

material” refers only to the volume between the sides of the pan and skirt. As the quote

from the prosecution history reveals, the applicant was only addressing the lack of

“adiabatic material” in his invention to distinguish the Onishi reference. Indeed the

applicant could not have intended his comment to preclude any solid material between

the base of the pan and the base of the skirt because both Onishi and his own invention

include a vertical stabilizing element.

Thus, this court does not read the prosecution history to alter or disclaim the

district court’s interpretation of the claim language. Pentalpha’s attempt to create a

disclaimer simply stretches this prosecution history too far. At most, the prosecution

statement requires “completely free” to mean “no solid material between the sides of the

pan and the sides of the skirt and no thermal bridges between the base of the skirt and

the base of the pan.” The additional precision of this construction would also avoid the

slight internal inconsistency of excepting the ring from the “completely free” limitation.

In any event, this court detects no reversible error in the district court’s claim

construction.

2009-1099, -1108, -1119 12
 IV.

Following the jury verdict, Pentalpha moved for JMOL based on prosecution

history estoppel, arguing that SEB’s statements during prosecution should preclude any

infringement by its modified deep fryer under the doctrine of equivalents. As noted,

Pentalpha modified its deep fryer by replacing the ring that separates the skirt and the

pan with six blocks. According to Pentalpha, the applicant’s prosecution arguments

during patent acquisition at the PTO preclude a finding that the six blocks are equivalent

to the ring in claim 1. See Conoco, Inc. v. Energy & Envtl. Int’l, L.C., 460 F.3d 1349,

1364 (Fed. Cir. 2006) (“To invoke argument-based estoppel . . . the prosecution history

must evince a clear and unmistakable surrender of subject matter.”).

Pentalpha did not seek JMOL on this ground at the close of evidence. Under

Rule 50(b), a party may “renew” an earlier “request for judgment as a matter of law by

filing a motion no later than 10 days after entry of judgment.” Fed. R. Civ. P. 50(b); see

Broadnax v. City of New Haven, 415 F.3d 265, 268 (2d Cir. 2005). If an issue is not

raised in a previous motion for a directed verdict, however, this court’s review is highly

deferential. The Court of Appeals for the Second Circuit, whose law governs the

procedural aspects of this case, see Bd. of Trustees of Leland Stanford Junior Univ. v.

Roche Molecular Sys., Inc., 583 F.3d 832, 840 (Fed. Cir. 2009), requires that, in such a

case, “a Rule 50(b) motion should not be granted unless it is required to prevent

manifest injustice.” Broadnax, 415 F.3d at 268 (quotation marks omitted).

During prosecution, the applicant argued that the claims were not obvious over

Onishi in light of a Spanish reference (“Taurus”), which discloses a fryer with openings

in the outer wall:

2009-1099, -1108, -1119 13
 To distinguish Taurus, the applicant explained that cool outside air circulated

through the above spaces between the inner and outer walls. This cooling mechanism

is called convective cooling. Onishi, the applicant argued, relied on convective heating.

Onishi itself explains that the heater heats the air in the heating space so as to uniformly

heat the pot. Onishi col.1 ll.45-59. The applicant argued to the PTO that the teachings

of Onishi and Taurus could not be combined to achieve the claimed deep fryer because

neither convective “heating or cooling mechanisms has anything to do with the present

invention.”

At trial, however, SEB’s expert, Charles Van Horn, testified that the temperature

of the skirt in Pentalpha’s modified deep fryer might be kept at a low level in part due to

hot air leaking out of the deep fryer. Specifically, Mr. Van Horn testified that the ring

segments in the modified fryer did not completely close off the air space between the

pan and the skirt. Moreover, he indicated that hot air escaped the modified fryer,

although he did not know the rate of escape. And he affirmed that a deep fryer that has

hot air leaking out of it will result in a cooler outside plastic wall than a deep fryer that

does not. Pentalpha thus argues that its modified deep fryer cannot infringe under the

doctrine of equivalents because the ring segments allow for the same convective

cooling that SEB disavowed during prosecution of the ’312 patent.

2009-1099, -1108, -1119 14
 This court can assume, without deciding, that the applicant’s statement during

prosecution disclaimed any coverage of deep fryers that control the temperature of the

outer wall through convective cooling. A reasonable jury could nonetheless conclude

that Pentalpha’s modified fryer does not rely on convective cooling to control the

temperature of the skirt. The six large vent holes in Taurus that together span almost

the entire width of the side wall do not readily compare to Pentalpha’s modified fryer,

which was presented to the jury and appears to allow only minimal air leakage. Mr. Van

Horn’s testimony about some hot air leakage does not compel the jury to find that the

modified deep fryer relied on convective cooling to control the temperature of the wall.

The jury might also reasonably conclude that the hot air leakage along the ring of the

modified fryer did not appreciably contribute to controlling the temperature of the outer

plastic wall. Because Pentalpha did not raise its JMOL motion in a timely fashion, this

court must detect a manifest injustice before sustaining this untimely motion. With

substantial questions about the operation of the modified fryer and Mr. Van Horn’s

vague testimony on convective cooling, this court detects no manifest injustice in

honoring the jury’s finding of infringement under the doctrine of equivalents.

This court also perceives no prejudice to Pentalpha in the district court’s

conclusion at the preliminary injunction stage that prosecution history estoppel did not

apply. As discussed already, a preliminary injunction ruling is by nature only

preliminary. Pentalpha had opportunities to renew its argument before the jury or to

request a jury instruction estopping application of the doctrine of equivalents to a fryer

that relies on convective cooling. Finally, Rule 50 at least required Pentalpha to raise its

argument before the jury verdict. Broadnax, 415 F.3d at 268. By the time Pentalpha

2009-1099, -1108, -1119 15
filed its post-verdict JMOL motion, it was too late. And, as noted, this court discerns no

material injustice in the jury’s findings in this setting.

V.

The district court allowed SEB’s expert, Mr. Van Horn, to testify over Pentalpha’s

objections. Pentalpha argued that Mr. Van Horn should be precluded from testifying as

to infringement on the ground that he lacked expertise in the art of designing deep

fryers. On appeal, Pentalpha argues that the district court’s decision to admit Mr. Van

Horn’s testimony was an abuse of discretion.

The district court did not abuse its discretion by admitting Mr. Van Horn’s

testimony. This court will not disturb a district court’s evidentiary rulings unless

“manifestly erroneous.” SR Int’l Bus. Ins. Co. v. World Trade Ctr. Props., LLC, 467 F.3d

107, 119 (2d Cir. 2006) (quotation omitted). District courts enjoy “wide latitude” to

determine admissibility and “the mode and order” of evidentiary presentations. Id. In

this case, the district court was in the best place to judge that Mr. Van Horn had the

“knowledge, skill, experience, training, [and] education” of a “specialized” nature that

was likely to “assist the trier of fact to understand the evidence or to determine”

infringement. Fed. R. Evid. 702.

Mr. Van Horn has an undergraduate degree in chemical engineering from Lehigh

University, a J.D. from American University, and an M.B.A. from George Washington

University with a specialty in behavioral science. He worked in the U.S. Patent &

Trademark Office for 31 years in various capacities, including as a patent examiner in

the classes of fiber technology, electric photography, and structural and nonstructural

laminates; as a supervisor in miscellaneous chemical technology; and as a director of

2009-1099, -1108, -1119 16
the organic chemistry and biotechnology group. Although he testified that he is not

skilled in designing deep fryers, Mr. Van Horn explained that his experience was

relevant because the claimed invention “involves the selection of particular . . . polymer

material that have certain characteristics” and that “[m]ost of the areas [he has] worked

in . . . have used polymers in one form or another.” Moreover Mr. Van Horn did not

testify about deep frying per se, but instead described the importance of selecting a

material for the ring or ring segments that would be resistant to the hot pan, as well as

the importance of the spacing between the hot pan and the skirt. In light of the court’s

claim construction, which, as discussed, included a reference to thermal bridges, Mr.

Van Horn’s testimony established an adequate relationship between his experience and

the claimed invention.

This case comes nowhere close to the unusual situation in Sundance, Inc. v.

DeMonte Fabricating Ltd., 550 F.3d 1356 (Fed. Cir. 2008). In Sundance this court held

that a district court abused its discretion when it admitted the testimony of a patent law

expert “[d]espite the absence of any suggestion of relevant technical expertise.” Id. at

1361-62. Here, as explained, Mr. Van Horn had sufficient relevant technical expertise

for the district court to allow him to testify. This court detects no abuse of discretion.

VI.

Pentalpha also challenges the district court’s judgment under 35 U.S.C. § 271(a)

and (b). As to § 271(a), direct infringement, Pentalpha challenges the district court’s

jury instructions. As to § 271(b), inducement of infringement, Pentalpha contends that

the district court erred in its JMOL rulings because Pentalpha had no actual knowledge

of the patent during part of the time it was selling deep fryers to Sunbeam. See DSU

2009-1099, -1108, -1119 17
Med. Corp. v. JMS Co., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (en banc) (“The

requirement that the alleged infringer knew or should have known his actions would

induce actual infringement necessarily includes the requirement that he or she knew of

the patent.”) (emphasis added). Before addressing either of Pentalpha’s arguments,

this court must determine if it needs to address direct infringement only, inducement of

infringement only, or both.

Under the general verdict rule, where one or more of multiple claims is found

legally invalid, a reviewing court must reverse and order a new trial if unable to

determine whether the invalid theory tainted the verdict. AIG Global Sec. Lending Corp.

v. Banc of America Sec. LLC, 646 F. Supp. 2d 385, 406 (S.D.N.Y. 2009) (collecting

cases). That rule has also been held to apply in cases where the jury received multiple

legal theories of liability. Id. (same).

Here, the jury received a verdict form with the label “special” rather than general.

Using that verdict form, the jury found both direct infringement and inducement of

infringement. Normally, such a verdict could support a damages award even if only one

theory was correct. As long as the court can “determine” that “the verdict was based

upon the [valid] theory,” the general verdict rule does not require a new trial. Id. A

closer look at the damages question in this verdict form, however, along with the jury

instructions, reveals a hopeless ambiguity.

The verdict form itself suggests that the jury was asked to base its damages

calculation on inducement only. The verdict form asked, “What amount of damages in

the form of a reasonable royalty do you find the plaintiff to have proven by a

preponderance of the evidence with respect to deep fryers sold by Sunbeam, Fingerhut,

2009-1099, -1108, -1119 18
and Montgomery Ward?” J.A. 2508 (emphasis added). This instruction advised the jury

to consider deep fryers sold by Pentalpha’s customers, as opposed to the deep fryers

that Pentalpha sold to its customers. Therefore, this instruction could have led the jury

to base the damages calculation on inducement alone.

On the other hand, the jury instructions also indicate that the jury could assess

damages for direct infringement. The instructions stated:

The patent law specifically provides that the amount of damages that the
Defendants must pay Plaintiff for infringing Plaintiff’s patent may not be
less than a reasonable royalty for the use that the Defendants made of
Plaintiff’s invention. You must determine what a reasonable royalty would
be for the infringing sales of these Defendants and their subsidiaries.

J.A. 2484 (emphasis added). In contrast to the verdict form, the jury instructions

required the jury to look to Pentalpha’s sales. This language requires a classic direct

infringement analysis. See, e.g., Minco, Inc. v. Combustion Eng’g, Inc., 95 F.3d 1109,

1119 (Fed. Cir. 1996) (affirming a reasonable royalty award where “the district court

awarded [the patentee] a royalty rate of 20% on the gross value of [the direct infringer’s]

applicable sales”).

The record therefore does not clearly indicate that the jury found damages based

on inducement alone, or based on direct infringement alone, or both. The general

verdict rule requires that the only way this court can affirm in such a circumstance is by

determining that the jury’s finding of both direct infringement and inducement of

infringement was proper. As explained below, after carefully examining the record and

the authority cited by both parties, this court discerns that this verdict satisfies that

requirement and was proper on both counts.

2009-1099, -1108, -1119 19
 A.

Section 271(a) makes it an act of infringement to “without authority make[], use[],

offer[] to sell, or sell[] any patented invention, within the United States.” Pentalpha faults

the jury instructions with respect to direct infringement on two grounds, each of which

relates to the extraterritorial effect of U.S. patent law. First, Pentalpha argues that the

district court should have charged the jury that an offer in the United States to sell

goods outside of the United States would not violate the “offer to sell” provision of

§ 271(a). Second, Pentalpha argues that the district court erred by instructing the jury

that, in determining if a sale occurred in the United States, it could consider “where the

products were shipped from and where the products were shipped to.”

Pentalpha does not specify the point in the record showing an objection to these

portions of the jury instructions. Fed. R. Civ. P. 51 requires a litigant to make a timely

objection to a jury instruction in order to challenge that instruction on appeal. “The

purpose of this Rule is to require the parties to give the trial court an adequate

opportunity to cure any error in the instructions before the jury deliberates.” Metromedia

Co. v. Fugazy, 983 F.2d 350, 363 (2d Cir. 1992). The United States Court of Appeals

for the Second Circuit reviews jury instructions for which a timely objection is lacking for

fundamental error. Fabri v. United Techs. Int’l, Inc., 387 F.3d 109, 121 (2d Cir. 2004).

“Fundamental error is more egregious than the ‘plain’ error that can excuse a

procedural default in a criminal trial and is so serious and flagrant that it goes to the very

integrity of the trial.” Id. (quoting Jarvis v. Ford Motor Co., 283 F.3d 33, 62 (2d Cir.

2002)).

2009-1099, -1108, -1119 20
 Neither of the alleged problems with the district court’s jury instruction constitutes

fundamental error. This court has yet to define the full territorial scope of the “offers to

sell” offense in § 271(a). But see Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246,

1260 (Fed. Cir. 2000) (Newman, J., concurring) (“[A]n offer to sell a device or system

whose actual sale can not infringe a United States patent is not an infringing act under §

271.”). But even if this court had, Pentalpha’s sales in this case did not so clearly occur

overseas that the district court’s failure to include such a limitation in its jury instructions

affected the integrity of the trial.

To the contrary, the only evidence on which Pentalpha relies to argue that its

sales occurred overseas was that it delivered its products to Sunbeam, Montgomery

Ward, and Fingerhut f.o.b. Hong Kong or mainland China. This court has “rejected the

notion that simply because goods were shipped f.o.b., the location of the ‘sale’ for the

purposes of § 271 must be the location from which the goods were shipped.”

Lightcubes, 523 F.3d at 1370.

For the same reason, the district court’s instruction that the jury could consider

“where the products were shipped from and where the products were shipped to” in

determining if a sale occurred in the United States was not a fundamental error. If

anything, the jury instructions helped Pentalpha: the court instructed the jury that it

could consider the f.o.b. terms, even though those terms were not dispositive. Other

than the f.o.b. terms in the invoices presented to the jury, the record shows that

Pentalpha intended to sell its deep fryers directly into the United States. Pentalpha

itself affixed the American trademarks of Sunbeam, Montgomery Ward, and Fingerhut

to the deep fryers, and it manufactured the deep fryers with North American electrical

2009-1099, -1108, -1119 21
fittings. Moreover, the invoices between Pentalpha and the three U.S. companies all

identify delivery to U.S. destinations. In sum, this court does not perceive any

fundamental error with the jury instructions in light of the record evidence.

B.

“Whoever actively induces infringement of a patent shall be liable as an

infringer.” 35 U.S.C. § 271(b). In DSU Medical, which was decided after the jury verdict

in this case, this court addressed the intent necessary to support a finding of induced

infringement. Under that rule, the plaintiff must show that the alleged infringer knew or

should have known that his actions would induce actual infringements. 471 F.3d at

1304. This court further stated that “[t]he requirement that the alleged infringer knew or

should have known his actions would induce actual infringement necessarily includes

the requirement that he or she knew of the patent.” Id. (emphasis added). This court’s

opinion did not, however, set out the metes and bounds of the knowledge-of-the-patent

requirement. Compare Insituform Techs., Inc. v. CAT Contracting, Inc., 161 F.3d 688,

695 (Fed. Cir. 1998) (“A crucial element of induced infringement is that the inducer must

have actual or constructive knowledge of the patent.”) (emphasis added). *

The facts of DSU Medical did not require this court to address the scope of the

knowledge requirement for intent. Instead, the court resolved conflicting case law

setting forth both a requirement to knowingly induce infringement and to merely

knowingly induce the acts that constitute direct infringement. Id. at 1306. In other
*
SEB contends that this court need not reach this issue because the district court
reduced the damages award by $2 million based on SEB’s settlement with Sunbeam
and thus eliminated all damages for pre-notice sales. The record indicates that the
district court did not attribute the reduction to any particular Sunbeam sales. Therefore
this court has no way to ascertain on appeal if the reduction precludes the knowledge
and intent issue.

2009-1099, -1108, -1119 22
words, the court decided the target of the knowledge, not the nature of that knowledge.

As Chief Judge Michel’s concurring opinion noted, the record in DSU Medical showed

that the alleged infringer had actual knowledge of the patent-in-suit. Id. at 1311.

“Accordingly, the ‘knowledge of the patent’ issue [was] not before us.” Id.

This court has made clear, however, that inducement requires a showing of

“‘specific intent to encourage another’s infringement.’” Broadcom Corp. v. Qualcomm

Inc., 543 F.3d 683, 699 (Fed. Cir. 2008) (quoting DSU Medical, 471 F.3d at 1306). As

other courts have observed, “specific intent” in the civil context is not so narrow as to

allow an accused wrongdoer to actively disregard a known risk that an element of the

offense exists. See Crawford-El v. Britton, 951 F.2d 1314, 1318 (D.C. Cir. 1991)

(equating specific intent and deliberate indifference); Boim v. Holy Land Found. for

Relief & Dev., 549 F.3d 685, 693 (7th Cir. 2008) (equating intentional misconduct with

knowledge and deliberate indifference).

Pentalpha argues that the court in DSU Medical did not mean “knew or should

have known of the patent” because the decision states “knew of the patent.” See 471

F.3d at 1304. At the outset, this court notes that the Supreme Court has indicated, in a

different civil context, that “deliberate indifference” is not necessarily a “should have

known” standard. Farmer v. Brennan, 511 U.S. 825, 840 (1994). The latter implies a

solely objective test, whereas the former may require a subjective determination that the

defendant knew of and disregarded the overt risk that an element of the offense existed.

See id. (“‘[D]eliberate’ is better read as implying knowledge of a risk, [but] the concept of

constructive knowledge is familiar enough that the term ‘deliberate indifference’ would

not, of its own force, preclude a scheme that conclusively presumed awareness from a

2009-1099, -1108, -1119 23
risk’s obviousness.”). For example, an accused infringer may defeat a showing of

subjective deliberate indifference to the existence of a patent where it shows that it was

genuinely “unaware even of an obvious risk.” Id. at 844. More importantly, and as

courts have observed in a variety of settings, the standard of deliberate indifference of a

known risk is not different from actual knowledge, but is a form of actual knowledge.

See, e.g., United States v. Carani, 492 F.3d 867, 873 (7th Cir. 2007) (“Deliberate

avoidance is not a standard less than knowledge; it is simply another way that

knowledge may be proved.”); Woodman v. WWOR-TV, Inc., 411 F.3d 69, 84 n.14 (2d

Cir. 2005) (“We note that a party’s knowledge of a disputed fact may also be proved

through evidence that he consciously avoided knowledge of what would otherwise have

been obvious [to] him.”).

In this case, this court must determine whether the district court erred in denying

Pentalpha’s motion for JMOL where the record shows no direct evidence that Pentalpha

had actual knowledge of the patent before April 9, 1998. The standard of review

following the denial of JMOL is de novo. Fabri, 387 F.3d at 119. Nevertheless, this

court must apply the same standard as the district court, which is deferential to the

jury’s verdict. AMW Materials Testing, Inc. v. Town of Babylon, 584 F.3d 436, 456 (2d

Cir. 2009). A grant of JMOL is appropriate only where a reasonable jury would not have

a legally sufficient evidentiary basis to find for the non-movant on the issue. Agrizap,

Inc. v. Woodstream Corp., 520 F.3d 1337, 1342 (Fed. Cir. 2008) (citing Fed. R. Civ. P.

50(a)). For that reason,

[w]e will reverse the denial of a motion for judgment as a matter of law
only when there is such a complete absence of evidence supporting the
verdict that the jury’s findings could only have been the result of sheer
surmise and conjecture, or where there is such an overwhelming amount

2009-1099, -1108, -1119 24
 of evidence in favor of the moving party that fair minded jurors could not
reasonably arrive at a verdict against the movant.

SR Int’l, 467 F.3d at 118-119 (internal quotation marks and alterations omitted).

As just explained, a claim for inducement is viable even where the patentee has

not produced direct evidence that the accused infringer actually knew of the patent-in-

suit. This case shows such an instance. The record contains adequate evidence to

support a conclusion that Pentalpha deliberately disregarded a known risk that SEB had

a protective patent. The jury heard evidence that Pentalpha purchased an SEB deep

fryer in Hong Kong and copied all but the cosmetics. The owner of a company related

to Pentalpha testified that Pentalpha’s engineer took a T-Fal deep fryer and used “the

same ring that separates . . . the wall making it a cool touch unit and the construction,

basically everything the same; thermostat, it was the same; the timer was the same, just

a little bit different on the cosmetics of the outside appearance for the deep fryer.”

Again, the record shows that Pentalpha hired an attorney to conduct a right-to-use

study, but did not tell him that it had based its product on SEB’s product.

A failure to inform one’s counsel of copying would be highly suggestive of

deliberate indifference in most circumstances. Here, the jury also heard testimony that

indicated that Pentalpha’s president, John Sham, was well versed in the U.S. patent

system and understood SEB to be cognizant of patent rights as well. Sham testified

that he was the named inventor on 29 U.S. patents and that Pentalpha and SEB had an

earlier business relationship that involved one of Pentalpha’s patented steamer

products. The record thus contains considerable evidence of deliberate indifference.

In contrast, Pentalpha did not produce any exculpatory evidence. As noted,

proof of knowledge through a showing of deliberate indifference may be defeated where

2009-1099, -1108, -1119 25
an accused infringer establishes that he actually believed that a patent covering the

accused product did not exist. But here Pentalpha did not argue that it or its employees

actually believed that an SEB patent did not exist. Pentalpha’s brief implies that it

should be excused because the SEB deep fryer that it copied was not marked with a

U.S. patent number. But Pentalpha does not argue that it relied on the lack of a mark to

come to a belief that the deep fryer was not patented. And even if it had, such an

argument would likely lack credibility unless it were supplemented by an explanation for

why one would expect an SEB deep fryer purchased in Hong Kong to have U.S. patent

markings.

This opinion does not purport to establish the outer limits of the type of

knowledge needed for inducement. For instance, a patentee may perhaps only need to

show, as Insituform suggests, constructive knowledge with persuasive evidence of

disregard for clear patent markings, similar to the constructive notice requirement in

§ 287(a). See infra Part VII. This court does not set those boundaries now, just as it

did not set them in DSU Medical. Here, the record establishes sufficient support for the

conclusion that Pentalpha deliberately ignored the risk that SEB had a patent that

covered its deep fryer. Thus, the jury’s finding of inducement is justified, and the

damage award, even if it was based on inducement alone, stands.

VII.

Pentalpha also challenges the damages award on the basis that, contrary to

§ 287(a), the record did not show that SEB marked “substantially all” of its deep fryers

before July 10, 1998. Pentalpha also sought a reduction in damages, alleging that the

2009-1099, -1108, -1119 26
record shows that SEB withheld documents related to marking. The district court

declined to reduce the award on either ground.

Under § 287(a) a patentee that sells its patented product within the United States

must provide actual or constructive notice of the patent to the accused infringer to

qualify for damages. Sentry Prot. Prods., Inc. v. Eagle Mfg. Co., 400 F.3d 910, 918

(Fed. Cir. 2005). Constructive notice requires the record to show that “the patentee

consistently marks substantially all of its patented products.” Id.

At trial, an SEB executive, Gregers Infeld, affirmed that “to the best of [his]

knowledge” SEB’s deep fryers were “always” marked and that SEB had a policy of

marking its products. SEB also put into evidence one of its deep fryers with an

unknown manufacturing date that had a sticker that listed the ’312 patent. On cross

examination, however, Infeld testified that “there was a batch of products where the

patent marking wasn’t on.” In addition to that testimony on cross, Pentalpha also relies

heavily on Infeld’s admission, at his deposition, that he had no knowledge of SEB’s

marking practices.

Once again, the district court properly denied Pentalpha’s motions for JMOL.

The record supplies sufficient evidence to support the jury’s conclusion that SEB

consistently marked substantially all of its deep fryers. Indeed, the record at trial did not

even contain Infeld’s deposition testimony. In any event, the record supports the jury

verdict.

Pentalpha contends that discovery misconduct justifies a reduction in the

damage award. The discovery dispute at issue extends back five years before trial. In

May of 2001, Pentalpha served discovery requests seeking, among other things,

2009-1099, -1108, -1119 27
documents relating to, and a Rule 30(b)(6) witness with knowledge of, SEB’s patent

marking practices. SEB produced only a one-page document: a picture of a sample

sticker that listed the ’312 patent. SEB objected to the Rule 30(b)(6) request.

Pentalpha filed a motion to compel in response to SEB’s objection. On October 5,

2001, Magistrate Judge Yanthis, who had been appointed to oversee discovery, refused

to consider the motion to compel due to the parties’ failure to meet and confer.

The marking issue arose again with Pentalpha’s motion in limine, filed four-and-

a-half years later, in which Pentalpha moved to exclude any evidence related to marking

at trial. At the hearing on the motion, SEB’s counsel asserted that there were “no other

documents” concerning patent markings. Accordingly, the district court denied

Pentalpha’s motion, but noted that “[i]f witnesses on the stand say there are other

documents, we’ve got a different issue before us.”

At trial, Infeld testified that SEB’s factories print the stickers found on its deep

fryers based on a “list which shows [the factories] exactly what needs to be put on” and

that the compilation of that list required a lot of paperwork. Pentalpha relied on that

testimony in its post-verdict JMOL to argue that SEB did not produce documents related

to marking, namely, the paperwork needed to compile the sticker list. The district court

denied Pentalpha’s motion on the ground that Pentalpha had delayed too long in

seeking these documents and did not raise the issue immediately after Infeld’s trial

testimony. JMOL Opinion, 2007 WL 3165783, at *2.

The district court did not abuse its discretion in denying Pentalpha’s motion for

JMOL on discovery misconduct grounds. Pentalpha clearly forfeited the issue, if not

during its four-and-a-half year silence before trial, then when it did not object during trial

2009-1099, -1108, -1119 28
following Infeld’s testimony. Pentalpha cannot “fail to prepare [its] case[] adequately

and then seek to remedy the defects after judgment.” Korea First Bank v. Lee, 14 F.

Supp. 2d 530, 532-33 (S.D.N.Y. 1998).

VIII.

Finally, Pentalpha appeals the district court’s denial of its motion for new trial,

which was based on SEB’s attorney’s allegedly improper argument during his closing

argument on reasonable royalty damages. As a part of its damages case, SEB relied

on a price list that listed its “cool wall” deep fryers at around $40 per unit. But an SEB

executive testified at trial that, although he thought SEB made a profit, SEB did not

always sell its deep fryers at the list prices. Relying on that testimony, Pentalpha

moved for JMOL at the close of evidence on SEB’s claim for lost profits. The district

court granted that motion, concluding that “[t]here’s nothing in the record, in my view,

from which [the jury] could say, ‘this is what a single deep fryer sold for.’” The district

court allowed SEB’s claim for damages based on a reasonable royalty to reach the jury.

During summation on its reasonable royalty claim, SEB’s attorney argued that

SEB was making a “substantial profit” through its deep fryers, that it “got something

close to [its] list prices”, and that it “sought to obtain a gross margin of about 40 to 45

percent of the selling price.” Pentalpha objected during and after the summation on the

basis that the court had already rejected SEB’s claim for lost profits. SEB’s arguments

with respect to a reasonable royalty, Pentalpha argued, were just another version of its

baseless lost profit argument. The district court overruled Pentalpha’s objections, but

warned the jury that its “recollection of what the witness has said what a gross margin

was and what a profit was in this case is what should control.”

2009-1099, -1108, -1119 29
 “[W]e will reverse a district court’s decision to grant or deny a motion for a new

trial only for an abuse of discretion.” Song v. Ives Labs., Inc., 957 F.2d 1041, 1047 (2d

Cir. 1992). Reasonable royalty damages postulate a hypothetical negotiation between

a willing licensor and licensee at the time of infringement. Minco, 95 F.3d at 1119.

“This hypothetical construct seeks the percentage of sales or profit likely to have

induced the hypothetical negotiators to license use of the invention.” Id. In denying

Pentalpha’s motion for a new trial, the district court held that although “the Court ruled

that [lost profits] had not been shown with sufficient exactness . . . this does not mean

that the jury could not consider SEB’s expectations of profits as part of a hypothetical

negotiation.” JMOL Opinion, 2007 WL 3165783, at *7 (citing Georgia-Pacific Corp. v.

U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970)).

The district court did not abuse its discretion in declining to grant a new trial to

Pentalpha based on the summation of SEB’s counsel. The record adequately supports

SEB’s argument that it sought to obtain a gross margin of about 40 to 45 percent of the

list price. There is a difference between an expectation of success and actual success

at achieving a certain margin, and that difference is relevant in calculating the

hypothetical negotiation. But this court sees no reason to preclude a jury from hearing

attorney argument based on an expectation of success, particularly when Pentalpha

had every opportunity to respond by highlighting to the jury that SEB’s stated gross

margin was only an expectation and that, absent established commercial success at

that rate, the hypothetical negotiation should result in a lower rate. SEB’s

argumentative efforts to frame the hypothetical negotiation in its favor were not

2009-1099, -1108, -1119 30
improper. Moreover the district court did not abuse its discretion in denying a new trial

on this basis.

IX.

SEB cross appeals the district court’s decision to set aside its original awards of

enhanced damages and attorneys’ fees. Those awards were based on the jury’s finding

of willfulness, JMOL Opinion, 2007 WL 3165783, at *10-12, but the district court

vacated them in light of this court’s intervening opinion in Seagate, Enhanced Damages

Opinion, 2008 WL 4540416, at *4.

In Seagate, this court set out a new test for willful infringement. It overruled the

affirmative duty of due care set forth in Underwater Devices Inc. v. Morrison-Knudsen

Co., 717 F.2d 1380, 1389-90 (Fed. Cir. 1983), and held that proof of willful infringement

requires a patentee to show by clear and convincing evidence that, as a threshold

matter, “the infringer acted despite an objectively high likelihood that its actions

constituted infringement of a valid patent.” 497 F.3d at 1371. The district court,

proceeding under pre-Seagate law, instructed the jury that a potential infringer “has an

affirmative duty of due care not to infringe” a known patent, and that failure to abide by

that duty constituted willful infringement. The jury found Pentalpha’s infringement willful.

In vacating its award of enhanced damages and attorneys’ fees, the district court

held:

The record contains evidence from which a jury could find that the
Seagate standard of objective recklessness is satisfied. . . . . The
evidence regarding Pentalpha’s willfulness, however, is not so one-sided
or overwhelming to allow the Court to conclude that a jury, properly
instructed under the new Seagate standard, was required to find, by clear
and convincing evidence, willful infringement.

2009-1099, -1108, -1119 31
Enhanced Damages Opinion, 2008 WL 4540416, at *3. This court detects no reversible

error in this analysis.

Importantly, SEB does not ask this court to order a new trial on willfulness. Had

it asked, this court might have granted the request in light of the district court’s

conclusion that the willfulness verdict could have gone either way under the Seagate

test. “An erroneous instruction, unless harmless, requires a new trial.” Anderson v.

Branen, 17 F.3d 552, 556 (2d Cir. 1994); see Voda v. Cordis Corp., 536 F.3d 1311,

1328 (Fed. Cir. 2008) (remanding and noting that the district court “may at its discretion

assess Voda’s evidence of willful infringement under the [intervening] Seagate standard

to determine whether a new trial on willfulness is necessary”). Instead, SEB argues that

the evidence on willfulness is so strong that the district court erred in vacating the

enhanced damages and attorneys’ fees awards. This court agrees with the district court

that SEB’s evidence is not so strong that SEB is entitled to a finding of willful

infringement as a matter of law.

SEB also argues that there were factors other than willful infringement that

warranted an award of attorneys’ fees, focusing primarily on alleged litigation

misconduct. But the district court apparently did not find any litigation misconduct

sufficient to warrant an award of attorneys’ fees. Enhanced Damages Opinion, 2008

WL 4540416, at *4. Moreover this court declines to impose attorneys’ fees on a

different basis than ordered by the district court.

Finally, SEB appeals the district court’s modification of a pre-judgment

attachment in light of its ruling with respect to Seagate, but makes no arguments in its

2009-1099, -1108, -1119 32
briefs with respect to that appeal. Any claim of error with respect to that modification is

therefore waived.

X.

For the foregoing reasons, the judgment of the United States District Court for

the Southern District of New York is affirmed.

AFFIRMED.

COSTS

Each party shall bear its own costs.

2009-1099, -1108, -1119 33