Intellectual Property News and Reports

Exmark Manufacturing Company filed suit against Briggs & Stratton Power Products Group, LLC in the United States District Court for the District of Nebraska, alleging infringement of, inter alia, claim 1 of U.S. Patent No. 5,987,863. The district court entered summary judgment that claim 1 was not invalid because the claim survived multiple reexaminations involving the same prior art. The district court also denied summary judgment of indefiniteness with respect to claim 1.1 The case proceeded to a jury trial, where the jury found that Briggs willfully infringed Exmark’s patent. The jury awarded $24,280,330 in compensatory damages, which the district court doubled as enhanced damages for Briggs’ willful infringement.

Briggs appeals several of the district court’s orders, including the district court’s: (1) summary judgment that claim 1 is not anticipated or obvious, (2) denial of summary judgment that claim 1 is indefinite, (3) denial of a new trial on damages, (4) evidentiary rulings related to damages, (5) denial of a new trial on willfulness, and (6) denial of Briggs’ laches defense.

We conclude the district court erred by basing its summary judgment of no invalidity solely on the fact that claim 1 survived multiple reexaminations. Accordingly, we vacate the district court’s summary judgment of no invalidity. We remand to the district court for it to make an independent determination of whether genuine issues of material fact preclude summary judgment that claim is not anticipated or obvious in view of the prior art. We also hold that the district court erred in denying a new trial on damages because Exmark’s damages expert failed to provide an adequate explanation as to how she arrived at a 5% royalty rate for the patented feature relative to other conventional features of the accused products. We also conclude that the district court abused its discretion by limiting the evidence relevant to damages to prior art that had been commercialized. Likewise, we conclude that the district court abused its discretion by excluding from the willfulness trial evidence relating to patent validity based on its determination that Briggs’ invalidity defenses were objectively unreasonable. The district court’s evidentiary ruling does not comport with the Supreme Court’s recent decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016), mandating that willfulness is to be determined by the jury regardless of whether Briggs’ defenses were objectively reasonable. Accordingly, we vacate the jury’s finding of willfulness, vacate the jury’s damages award, vacate the district court’s enhanced damages award, and remand for proceedings consistent with this precedent. We also affirm the district court’s denial of summary judgment that claim 1 is indefinite, and affirm its denial of Briggs’ laches defense.

Download Exmark Manufacturing Co. Inc. v. Briggs & Stratton Power Group LLC