Waddington North Am., Inc. V. Sabert Corp.
`
`United States District Court for the District of New Jersey
`
`August 5, 2011, Decided; August 5, 2011, Filed
`
`Civil Action No. 09-4883 (GEB)
`
`Reporter
`2011 U.S. Dist. LEXIS 86632; 2011 WL 3444150
`
`WADDINGTON NORTH AMERICAN, INC., Plaintiff, v. SABERT CORPORATION, Defendant.
`
`Notice: NOT FOR PUBLICATION
`
`Prior History: Waddington North Am., Inc. v. Sabert Corp., 2011 U.S. Dist. LEXIS 29770 (D.N.J., Mar. 22, 2011)
`
`[*1] For WADDINGTON NORTH AMERICA, INC., Plaintiff: ROY HENRY WEPNER, LEAD ATTORNEY,
`Counsel:
`ANDREW T. LANE, CHARLES PATRICK KENNEDY, PAUL HILGER KOCHANSKI, ROBERT B. HANDER,
`WILLIAM L. MENTLIK, LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP, WESTFIELD, NJ.
`
`For SABERT CORPORATION, Defendant, Counter Claimant: EZRA SUTTON, LEAD ATTORNEY, EZRA SUTTON
`PA, WOODBRIDGE, NJ.
`
`For WADDINGTON NORTH AMERICA, INC., Counter‘ Defendant: ROY HENRY WEPNER, LEAD ATTORNEY,
`WILLIAM L. MENTLIK, LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP, WESTFIELD, NJ.
`
`Judges: GARRETT E. BROWN, JR., UNITED STATES DISTRICT JUDGE.
`
`Opinion by: GARRETT E. BROWN, JR.
`
`Opinion
`
`MEMORANDUM OPINION
`
`BROWN, Chief Judge
`
`This matter comes before the Court on two motions by Waddington North American ("WNA") for relief from a jury verdict
`that found that certain of Sabert’s products did not infringe WNA’s patent and invalidated several of its claims. WNA
`requests relief in the form of a motion for judgment non abstante veredicto (”JNOV”) (Doc. No. 247), as well as a motion
`for a new trial (Doc. No. 248). Having considered the parties’ submissions, and having determined that the misconduct of
`Sabert’s counsel and witnesses was inexcusable and likely improperly influenced [*2] the jury’s verdict, the Court grants
`the motion for a new trial pursuant to Federal Rule of Civil Procedure 59(a). However, despite this ruling, the Court
`concludes that had the misconduct not occurred, a properly instructed jury could have reasonably reached a verdict for
`either party except as to written description. Thus, the Court denies the motion for JNOV with respect to the infringement
`of claim 25 and invalidity based on obviousness, but grants it with respect to written description.
`
`I. BACKGROUND
`
`This is a patent infringement case involving metalized plastic cutlery. Plaintiff, Waddington North American, is the assignee
`of the single patent at issue, U.S. Patent No. 6,983,542 (”the ’542 patent”), for among other things, plastic eating utensils
`covered with a thin metallic coating of stainless steel that gives them the appearance of real metal cutlery. (Compl. at ‘ll 12;
`Doc. No. 1). As depicted in cross section in Figure 4 of the patent, a vapor deposition process covers the underlying plastic
`substrate with a thin metallic coating:
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`(’542 patent, Fig. 4). The main difference between the diagram and the actual product is that that on the actual product the
`metallic coating is much [*3] thinner; it is only a few nanometers thick, far thinner than a human hair. Defendant Sabert
`Corporation originally produced similar utensils coated on both sides with stainless steel, but changed the product in an
`attempt to avoid infringement by using a titanium coating and making the plastic substrate opaque.
`
`The claims at issue in this patent are not difficult to summarize. Claim 1 of the patent claims the following subject matter:
`
`A metalized plastic food service item, comprising:
`
`a plastic cutlery article having a display surface and an underside, said plastic cutlery article being adapted for
`placement on a table surface in a traditional table-setting presentation with said underside facing down towards said
`table surface and said display surface facing upwards; and
`
`a thin metallic coating deposited on said display surface of said plastic cutlery article,
`
`wherein said thin metallic coating is characterized by its suitability for food contact without an overcoat, ’ and is at
`least one of steel and stainless steel,
`
`and wherein said thin metallic coating is of a sufficient thickness to impart a reflective metal-like appearance to the
`plastic cutlery article, to simulate genuine metal
`[*4] cutlery, said thickness being less than about 2000 nanometers and
`wherein said thin metallic coating is deposited by a vacuum deposition process.
`
`(Reexamination Certificate, ’542 patent, 1:25-1:44). Dependent claims 3, 35 and 12 narrow this claim by adding limitations
`requiring that the coating be less than "1000 nanometers in thickness,” ”about 200 nanometers in thickness” and that the
`vacuum deposition process be "sputtering deposition" respectively. Claim 38 is similar to claim 1 except that: (1) it does
`not require the metallic coating to be ”suitable for food contact"; but (2) does require that it be produced ”without an
`overcoat.” An overcoat is a plastic coating deposited on top of the metal layer to act as a barrier between food and the metal
`layer.
`
`Claim 25, the only claim asserted against Sabert’s titanium cutlery, claims ”a cutlery article for handling and consuming
`food, comprising[:]
`
`1 An overcoat is a plastic coating deposited on top of the metal layer to act as a barrier between food and the metal layer.
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`a light transmitting plastic material and having a plurality of surfaces, wherein at least one surface amongst said
`plurality of surfaces is deposited with a thin metal layer
`[*5] suitable for food contact without an overcoat;
`
`said thin metal layer being deposited by a sputter deposition process,
`
`whereby a reflective metal-like appearance is imparted to at least a portion of said cutlery article, and said thin metal
`layer being less than about 2000 nanometers.
`
`(Reexam Certificate at 2:44-54). This claim differs from claim 1 primarily in that it does not require the metal to be steel
`or stainless steel but does require the use of a ”light transmitting plastic material.”
`
`A. The Parties’ Contentions
`
`WNA contended that Sabert’s steel and titanium products infringed many of the claims of its patent. Most relevantly, WNA
`argued that Sabert’s product infringed claim 25, despite the fact that Sabert’s underlying plastic cutlery item was opaque,
`because it was made out of polystyrene. Polystyrene is light transmitting, and Sabert’s underlying substrate is opaque
`because it adds ”regrind” (essentially black recycled polystyrene) to the virgin polystyrene. Thus, WNA alleged that the
`"material" itself was clear even if the substrate was opaque.
`
`Sabert contended that WNA’s claims were invalid for a variety of reasons. In addition to alleging the claims were invalid
`based on lack [*6] of written description and indefiniteness, Sabert argued that the claims were invalid because they were
`obvious. Sabert’s closest prior art reference was a product produced by Spir-It. The Spir-It products were plastic cutlery
`items with a thin coating of aluminum deposited by thermal vapor deposition and covered with an overcoat. Sabert
`maintained that this prior art reference, combined with several other references, made the case for obviousness. Sabert also
`contended that the claims were unenforceable based on WNA’s inequitable conduct before the patent office.
`
`B. The Court’s Rulings
`
`Prior to trial, the Court made several rulings in favor of WNA. First, early on, the Court granted WNA’s motion to dismiss
`Sabert’s assertion of unenforceability based on inequitable conduct. Second, when the Court construed the claims, it
`rejected Sabert’s primary indefiniteness argument and adopted Plaintiff’s construction of the term ”a thin metallic layer .
`.
`. without an overcoat.” (Doc. No. 113). In doing so, the Court refused to adopt Sabert’s proposed construction that the
`term be limited to the metals specifically set forth in the specification. (See Doc. Nos. 56-1, 56-2 at 16-17).
`
`Third, the [*7] Court granted WNA’s motion for summary judgment that Sabert’s steel cutlery infringed the patent and
`rejected one of Sabert’s theories of invalidity as a matter of law. Fourth, the Court granted several of WNA’s motions in
`limine, including, most importantly, WNA’s motion to exclude the results of several foreign decisions that found that
`similar patents in those foreign countries were invalid. (Doc. No. 185; Doc. No. 188 at 70-72). Finally, because Mr. Sutton,
`Sabert’s counsel, had again attempted to include allegations of his dismissed inequitable conduct claim, the Court struck
`those portions of the Proposed Final Pretrial Order.
`
`C. Misconduct
`
`The parties tried the case to a jury over a two-week period. During the case, Mr. Sutton and Sabert’s witnesses repeatedly
`disregarded the orders and rulings set forth above, brought in improper evidence, made numerous arguments that were
`contrary to the law, denigrated the presumption of validity, and substituted leading questions for the testimony of Sabert’s
`witnesses. Specifically:
`
`- The Court excluded evidence that foreign tribunals had found the patent invalid because they were irrelevant and
`substantially prejudicial. The Court did so [*8] in a motion in limine and in several subsequent rulings during the trial.
`(Doc. Nos. 188 at 69-71, 185 at 2; 3/31/11 AM Sidebar tr. at 3-5). However, Mr. Sutton and a witness for Sabert
`disregarded these rulings and put the evidence before the jury. (See 3/31/ll AM tr. at 86-88, 138-139).
`
`- The Court dismissed Sabert’s inequitable conduct claim on the pleadings and reinforced this decision in pretrial
`hearings. (Doc. No. 99 at 9-15; 3/17/ll Pretrial tr. at 71; 3/21/11 Pretrial tr. at 62-65). However, Mr. Sutton and
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`witnesses for Sabert made repeated references to WNA ”misleading” the PTO before the jury, which encouraged the
`jury to disregard the merits of the case and punish WNA for such conduct. (See, e.g., 4/4/11 Am tr. at 15-16, 24; 4/5/11
`PM tr. at 43).
`
`° The Court ruled in its Markman Order and several times during the trial that the word ”metal” covered titanium. (Doc.
`Nos. 113, 3/28/11 PM tr. at 5-8; 3/29/11 AM Sidebars tr. at 1-4). Despite such rulings, Mr. Sutton repeatedly made the
`noninfringement argument that titanium was not covered by the term ”metal” because it was not one of the metals
`specifically mentioned in the patent. (See 3/28/11 AM tr. at 61, 63, 65-66; 3/29/11 [*9] AM tr. at 126-27; 3/29/11 PM
`tr. at 58-59; 4/5/11 PM tr. at 46-47).
`
`- Mr. Sutton used a visual aid during his closing with a clear expression of his personal opinion of the merits of the
`case.
`
`° Despite repeated objections, which were sustained, and several instructions from the Court, Mr. Sutton put on the
`majority of Sabert’s case using leading questions. (See, e.g, 3/31/11 PM tr. at 17-33, 37-40, 49-51, 104-115, 116-122,
`4/1/11 AM tr. at 17-21).
`
`- Mr. Sutton repeatedly argued that the presumption of validity did not apply in this case because there was prior art
`that the PTO did not consider. (See, e.g., 3/28/11 AM tr. at 55-56).
`
`After this conduct, which when combined occurred almost constantly throughout the trial, the jury returned an inconsistent
`verdict on lack of written description. The verdict also found that Sabert’s titanium cutlery did not infringe the patent and
`that all of the claims were obvious.
`
`II. DISCUSSION ——MOTION FOR A NEW TRIAL
`
`Mr. Sutton’s conduct, in aggregate, created a reasonable probability that the jury was influenced by Mr. Sutton’s improper
`conduct. While no party is entitled to a perfect trial, all parties before this Court are entitled to a fair trial. WNA [*l0] did
`not receive a fair trial and thus, the Court must order the case to be retried. However, as discussed in Section III, the Court
`
`determines that absent such misconduct, the jury could have reasonably found in favor of either party on the issues of
`obviousness and the infringement of the titanium cutlery. Thus, except with respect to written description, the Court denies
`that motion.
`
`A. Standard Of Review
`
`Motions for new trials are governed by Federal Rule of Civil Procedure 59(a), which provides in pertinent part:
`
`The court may, on motion, grant a new trial on some or all of the issues .
`heretofore been granted in an action at law in federal court[.]
`
`.
`
`. for any reason for which a new trial has
`
`Several reasons justify granting a new trial, including: (1) when the ju1"y’s verdict is against the clear weight of the evidence
`and a new trial must be granted to prevent a miscarriage of justice, Roebuck v. Drexel Univ., 852 F.2d 715, 717 (3d Cir.
`1988); (2) when the verdict is internally inconsistent, Malley-Dufi‘& Ass0cs., Inc. v. Crown Life Ins. Co., 734 F.2d 133, 145
`(3d Cir. 1984); and (3) when prevailing counsel committed misconduct and there is a ”reasonabl[e] probabl[ity] that the
`verdict
`[*II] was influenced by prejudicial statements,” Greenleaf v. Garlock, Inc., 174 F.3d 352, 366 (3d Cir. 1999). 2
`
`The Third Circuit reviews a trial court’s decision on a motion for new trial for abuse of discretion. Montgomery County
`v. Microvote Corp., 320 F.3d 440, 445 (3d Cir. 2003). The discretion afforded to a trial court is particularly broad when
`the motion is based upon the misconduct of counsel because ”in matters of trial procedure the trial judge .
`.
`. is in a far
`better position than [an appellate court] to appraise the effect of the improper argument of counsel.” Greenleaf, 174 F.3d
`at 366 (internal quotations omitted).
`
`2 The Federal Circuit applies the law of the regional circuit in matters of procedure. Exergen Corp. v. Wal—Mart Stores, Inc., 575 F.3d
`1312, 1318 (Fed. Cir 2009).
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`Where a motion alleges that the jury’s verdict was against the clear weight of the evidence, the Court need not make all
`inferences in favor of the prevailing party. Indeed, there are situations where a judgment non obstante veredicto (”J.N.O.V”)
`would be inappropriate but granting a new trial is within the discretion of the district court. Fineman v. Armstrong World
`Indus. Inc., 980 F.2d 171, 211-212 (3d Cir. 1992).
`
`B.
`
`[*12} Analysis
`
`In exercising its discretion on this matter, the Court determines that a new trial is required based upon the transgressions
`of Sabert’s counsel. While zealous advocacy can sometimes lead to minor misconduct that would not warrant a new trial,
`in this case the Court determines that the repeated misconduct of Sabert’s counsel on a wide variety of fronts requires a
`new trial, particularly in light of the jury’s inconsistent verdict. Prior to explaining the misconduct of Sabert’s counsel, the
`Court notes that because of the repeated nature of Mr. Sutton’s conduct, the Court can hardly assign blame to counsel for
`WNA for failing to object in every instance.
`
`1. The Failure to Object and the Court’s Curative Instructions Did Not Cure Prejudice from the Misconduct of Counsel.
`
`Generally, individual elements of misconduct of counsel are insufficient to justify a new trial where they are not objected
`to or where the Court gives a curative instruction upon the request of counsel. In such cases, objections are either waived
`or juries are presumed to have followed the instructions of the Court. Wilson v. Vermont Castings, Inc., 170 F.3d 391 (3d
`Cir.1991); U.S. v. Riley, 621 F.3d 312 (3d Cir. 2010).
`[*l3] However, in cases where the misconduct at issue is substantial
`or repeated, such as this one, a new trial is warranted even if opposing counsel does not object to every single violation.
`See Draper v. Airco, Inc., 580 F.2d 91 (3d Cir. 1978) (finding a closing prejudicial despite a curative instruction where there
`were several violations including improper references to defendant’s wealth, personal opinion of the justness of the cause
`of action, and referring to information not in evidence); Kiewit Sons’ Co., 624 F.2d 749, 758-59 (6th Cir. 1980) (ordering
`a new trial despite the fact that the Court repeatedly gave curative instructions). In instances where misconduct is constant
`and repeated, counsel cannot object to every transgression — there are simply too many transgressions. Indeed, such
`constant misconduct puts opposing counsel
`in lose-lose situation requiring counsel
`to either object and be seen as
`combative, or allow the misconduct to continue. See Straub v. Reading Co., 220 F.2d 177, 181 (3d Cir. 1955).
`
`In this case, as mapped below, Mr. Sutton’s misconduct was so constant and repeated that if WNA had objected to every
`issue, the stream of objections would have ground the proceeding [*l4] to a halt, and given the jury the impression that
`counsel for WNA was angry, combative, and attempting to keep relevant evidence from it. Thus, counsel for WNA can
`hardly be faulted for failing to object to the thirtieth transgression of the day at trial. Indeed, the Court notes that WNA
`likely erred on the side of objecting frequently, so frequently that its proper objections likely prejudiced its position with
`the jury.
`
`3. Misconduct
`
`In this case, Sabert’s counsel, Mr. Sutton, committed misconduct at trial that, when taken together created a reasonable
`
`probability that the verdict was influenced by the improper statements. See Greenleaf v. Garlock, Inc., 174 F.3d 352, 366
`(3d Cir. 1999). Sabert’s counsel and witnesses put before the jury prejudicial evidence of foreign decisions invalidating the
`patent, made unwarranted accusations of misrepresentations by WNA to the PTO despite the fact that the court dismissed
`Sabert’s inequitable conduct claims, Mr. Sutton gave his personal convictions about the merits of the case, argued that there
`was no presumption of validity, repeatedly disobeyed the rules against leading friendly witnesses, and improperly argued
`that titanium was not covered [*15] by claim 25’s use of the word ”metal." Each of these issues will be discussed in turn,
`and when taken together, the Court determines that there was a reasonable probability that the jury was influenced by the
`improper conduct of Mr. Sutton and Sabert’s witnesses.
`
`The violations were egregious and they were made far worse by the fact that in committing these violations Mr. Sutton
`repeatedly ignored the Court’s rulings. The Court has seldom had an attorney before it who had as much difficulty
`following the Court’s orders and rulings. A trial is not the Old West. There are rules, and attorneys are expected to follow
`them. The Court cannot reward a litigant who manifestly disregards those rules and express rulings of the Court based on
`either the effectiveness of opposing counsel or the proper instructions of this Court.
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`a. Sabert’s Counsel and Witness Improperly Introduced Evidence of Foreign Proceedings that Invalidated WNA ’s Foreign
`Patents
`
`Sabert’s amended answer in this case included allegations about two foreign proceedings finding similar claims in foreign
`patents invalid for lack of inventiveness. (Doc. No. 18 at 35-36). To prevent the introduction of this evidence, WNA filed
`a motion [*16] in limine to exclude testimony about foreign decisions, which the Court granted. (Doc. No. 185 at 2; 3/21/11
`Pretrial tr. at 69-71). Mr. Sutton stated that his only reason for seeking their admission was that the jury might be aided
`in its obviousness determination by knowing another country applied similar law to a similar patent to find the invention
`was invalid. (3/21/ll Pretrial tr. at 69-71). The Court concluded that because the decisions involved different laws and
`different patents, they were not relevant to this proceeding and that there would be substantial prejudice if these decisions
`were admitted. (Id.). The Court granted the motion to exclude the proceedings without any relevant exceptions. 3 (Doc. No.
`185 at 2). The Court was not equivocal in its decision.
`
`Nonetheless, without raising this issue again with the Court, Mr. Sutton and his witness, Mr. Salama, introduced [*17] this
`extremely prejudicial evidence to the jury. Specifically, when Mr. Sutton asked Mr. Salama about the information he relied
`upon to decide to produce the cutlery in the face of WNA’s patent, he responded:
`
`A: Well, as was mentioned, I think early on in the lawsuit there was other legal proceedings taking place in China and
`in Europe —
`
`(3/31/11 AM tr. at 86). WNA objected and the Court sustained the objection. However, counsel continued to pursue this
`line of questioning and asked about the European proceedings.
`
`Sabert’s new theory, which it did not present to the Court prior to eliciting this testimony, was that the proceedings were
`relevant to whether Sabert willfully violated the patent — it would not have done so willfully if it believed in good faith
`that the patent was invalid. Essentially, Mr. Sutton’s argument was that the fact that Sabert thought the results would be
`the same in the United States, would suggest it did not willfully violate the patent. Before there were any other substantive
`answers, the Court granted a sidebar and made unequivocally clear that the content and outcome of the foreign proceedings
`would not be admitted even for the purpose of Mr. Salama’s state [*18] of mind:
`
`THE COURT: The problem with the foreign ones and why I’ve sustained the objection on that is, it really seems to
`be very much 403 —
`
`MR. MENTLIK: Yes, Your Honor.
`
`THE COURT: — any relevance, which doesn’t seem to be there, would be overwhelmed by confusion, the delay and
`all the rest of it. So that’s out.
`
`MR. MENTLIK: But the -
`
`MR. SUTTON: (Indiscemible) state of mind.
`
`THE COURT: Well, we’re not going to bring it in for the state of mind. I mean, the whole thing is what’s going
`on in some foreign proceeding with different claims, different issues, et cetera.
`
`MR. MENTLIK: Exactly, Your Honor.
`
`THE COURT: We’ll be here forever on irrelevancies.
`
`MR. MENTLIK: And my concern is that now the jury thinks I’m trying to keep something from them.
`
`THE COURT: No.
`
`3 The Court did agree to leave open the question of whether the statements made by the parties in those proceedings would be
`admissible. (3/21/ll AM Pretrial tr. at 70:23-71 :1). However, the Court never left open the question of whether the conclusions of the
`foreign decisions would be admissible. (Id. at 71).
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`MR. MENTLIK: So I think it needs to be cleared up.
`
`MR. SUTTON: Your Honor, I just want to ask the question, was there a foreign proceeding and did you rely on,
`without asking him the outcome, was there a foreign proceeding, did you get other legal advice from those attorneys?
`
`THE COURT: How is a foreign proceeding going to invalidate the U.S. patent?
`
`MR. SUTTON: It’s not invalidated. It goes to whether he was willfully infringing.
`
`THE COURT:
`story.
`
`[*19] Sustain the objection. Foreign proceeding is not going to invalidate a U.S. patent, end of
`
`(3/31/11 AM Sidebar tr. at 3-5) (emphasis added). 4
`
`Even though the Court had sustained the objection and specifically told Mr. Sutton he could not pursue this testimony even
`to put forth state of mind testimony, Mr. Sutton continued his line of questioning in a way that suggested to the jury that -
`the Court and Mr. Mentlik were keeping important information from it:
`
`Q. Okay, Mr. Salama, without going into details in the foreign countries, were there other events occurring in those
`foreign countries that you relied on in deciding to go forward with making the product in the United States?
`
`A. You mean selling the product?
`
`Q. Yes.
`
`A. Yes, of course. As I mentioned earlier —
`
`Q. Well, I’m afraid we can’t get into that too deeply. But you did rely on these other proceedings, correct?
`
`A. I did.
`
`Q. Let me ask you a more specific question so we — and did you rely on foreign counsel in those countries as to the
`validity of the WNA patent?
`
`A. Yes, we did.
`
`Q.
`
`[*20] And based on their decisions you decided to go forward with selling in the United States?
`
`A. In 2009, yes.
`
`(3/31/11 AM tr. at 87-88). This exchange strongly implied that Sabert had prevailed in the foreign proceedings. Such an
`implication was prejudicial to Waddington as it encouraged the jury to conclude that if other jurisdictions had found the
`patent invalid, the jury should as well.
`
`Far more egregious than this question was that, despite knowing that it was a forbidden subject, Mr. Salama purposely put
`the evidence before the jury several times even after the Court had sustained Mr. Mentlik’s objections:
`
`Q. So what is your belief —~ what was your state of mind in 2009 regarding infringement?
`
`A. Well, as I said earlier there were a lot of — there was a lot of information that we reviewed already, that we believed,
`and we had also prevailed in other countries —
`
`MR. MENTLIK: Your Honor?
`
`THE COURT: Sustained.
`
`A. — and we, you know —
`
`4 The Court did initially entertain this new theory, (3/31/ll AM tr. at 86-87), but at the sidebar quoted above made a definitive ruling
`against Mr. Sutton.
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`MR. MENTLIK: Objection.
`
`THE COURT: Sustained, as to other countries. I’ve ruled on that.
`
`MR. MENTLIK: Move to strike the testimony.
`
`A. Well, you know, it was my state of my mind then that because we had prevailed in other countries ——
`
`MR. MENTLIK: Your Honor?
`
`A. — that
`
`[*21] we would prevail in the U.S.
`
`MR. MENTLIK: Your Honor -
`
`A. It’s - it was my -
`
`MR. MENTLIK: —~ the witness is in my view Your Honor, avoiding -~
`
`THE WITNESS: Mr. Sutton asked me an open-ended question and I’m answering the question.
`
`THE COURT: I’ve ruled on the foreign proceedings. All right, as far as it goes to your state of mind, you felt that you
`would prevail, right? That’s all.
`
`THE WITNESS: That’s correct.
`
`THE COURT: Okay.
`
`(3/31/ll AM tr. at 138-39) (emphasis added). This exchange was egregious and grossly prejudicial to WNA.
`
`While Sabert attempts to characterize the Court’s last statement as a ruling in its favor, this misrepresents the sequence of
`events. The Court twice sustained the objection, and it was only after Mr. Salama purposely injected the improper testimony
`that the Court tried to place the testimony in its proper light before the jury. At that point, the Court was in a difficult
`situation: the cat was out of the bag and the Court had to place the testimony in context without it looking as if the Court
`and Mr. Mentlik were purposely concealing important evidence from the jury. The Court did the same with its attempted
`curative instruction. (3/31/ll AM tr. at 140). In sum, the [*22] Court made these statements in reaction to the improper
`testimony; they were not rulings in favor of Sabert.
`
`The prejudice from this testimony is substantial. The testimony encouraged the jury to abdicate its responsibility to decide
`the question of the U.S. Patent’s validity under U.S. law and conclude that if other jurisdictions had found foreign patents
`invalid, it also should find the U.S. patent invalid. However, such an action would have been wholly improper —— U.S.
`patent law is distinct from foreign patent law, and the patent itself is a different from its foreign counterparts. In sum, except
`to the extent that it prejudicially suggests that the jury should follow the foreign decisions, the conclusions of those
`decisions have absolutely no relevance to liability. In re Dulberg, 472 F.2d 1394, 1398 (C.C.P.A. 1973) (patent rights in
`foreign countries have no relevance to United States Patents); see also Vl/indsurfing Intern ’I, Inc. v. Fred Ostermarm GmbH,
`668 F. Supp. 812 (S.D.N.Y. 1987) (noting that foreign decisions were properly held irrelevant during the liability phase of
`the trial). This prejudice was made worse by the fact that, because WNA had prevailed pretrial on this issue,
`[*23] it was
`not able prepare contrary evidence of foreign proceedings in which WNA prevailed.
`
`Moreover, the way in which Mr. Sutton and Mr. Salama presented this excluded evidence to the jury made it even more
`prejudicial. Mr. Salama forced the issue on the jury despite WNA’s objections and the Court’s repeated sustaining of those
`objections. (3/31/ll AM tr. at 138-39). This allowed Sabert to feign victimhood in front of the jury, and it is probable that
`the jury left with the impression that the Court and Plaintiff’s counsel were conspiring to keep important evidence from
`it. In addition, Mr. Salama cannot reasonably assert that he did not purposely put such evidence before the jury ~ he knew
`and heard that an objection was pending and sustained~—but chose to essentially shout his conclusions to the jury and argue
`with the Court. The actions of Sabert’s counsel and Mr. Salama were in contempt of this Court’s express rulings. 5
`
`5 The cases cited by Sabert do not convince the Court otherwise. Sabert cites two cases suggesting that foreign decisions are relevant
`to willfulness, but these cases do not suggest that the relevance of the foreign decisions to willfulness is not substantially outweighed
`
`Universal Remote Control Exhibit 1056, Page 8
`Universal Remote Control v. Universal Electronics, Trial No. |PR2014-01146
`
`

`
`2011 U.S. Dist. LEXIS 86632, *23
`
`Page 9 of 22
`
`The competence of WNA’s counsel in responding to this grossly improper information is irrelevant and misses the point.
`The results of the foreign decisions should not have been before the jury in the first place —— the Court repeatedly excluded
`the evidence for all purposes. Counsel for WNA should not have had to try to play ”damage control” with this testimony.
`The testimony was excluded because that ”damage control” was likely to fail, and the prejudice of the testimony — in
`encouraging the jury to exclusively rely on irrelevant
`[*25] evidence — was likely to remain.
`
`This improper conduct of Sabert alone makes a strong case for a new trial. Despite the Court’s proper instructions, the
`Court was hamstrung in its ability to correct the prejudice by the way in which Sabert had presented the evidence. Thus,
`there is a reasonable likelihood that they influenced the jury’s verdict. See Greenleaf v. Garlock, Inc., 174 F.3d at 366. On
`retrial, Sabert’s counsel and witness shall not repeat this misconduct. Any reference to foreign proceedings will be
`immediately sanctioned. Depending on the severity of the infractions, sanctions may include contempt of court or the entry
`of judgment against Sabert. Counsel has been warned.
`
`b. Sabert Made Extremely Prejudicial Accusations of Inequitable Conduct Despite the Court Having Dismissed that
`Element of the Case
`
`Where no inequitable conduct claim exists in a case, it is improper for a party or the Court to cast aspersions on the validity
`of the patent based upon improprieties in the prosecution of the patent. Indeed, in Norian Corp. v. Stryker Corp., 363 F.3d
`1321 (Fed. Cir. 2004), the Federal Circuit found that flawed arguments made by the patentee in prosecution were irrelevant
`to [*26] patent validity if inequitable conduct had been dismissed. 6 The reason behind this strict proscription is clear -
`evidence of improper conduct before the PTO, where such is not part of the case, is likely to encourage the jury to punish
`the perceived offender instead of passing on the merits of invalidity.
`
`On September 29, 2010, almost six months before trial, this Court dismissed Sabert’s inequitable conduct claims under
`Federal Rule of Civil Procedure 9(b) because they did not meet the heightened pleading standard required by inequitable
`conduct. (Doc. No. 99 at 9-15). Sabert
`[*27] thus had more than ample time to prepare its case without allegations of
`inequitable conduct.
`
`Nonetheless, during the Final Pretrial Conference it became clear that Sabert had included these allegations in the Proposed
`Final Pretrial Order. Sabert’s counsel suggested that such allegations related to a ”duty of candor" in connection with
`commercial success, a theory that is invalid as a matter of law. See Norian, 363 F.3d at 1328-1329 (even alleged