`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`MARSHALL DIVISION
`
`CASE NO. 2:13-cv-213-JRG
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`§§§§§§§§§§§§§
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`REMBRANDT WIRELESS
`TECHNOLOGIES, LP,
`
`Plaintiff,
`
`v.
`
`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., AND SAMSUNG AUSTIN
`SEMICONDUCTOR, LLC,
`
` Defendants.
`
`MEMORANDUM OPINION AND ORDER
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`Before the Court is Samsung Defendants’ (“Samsung”) Rule 50(b) Renewed Motion for
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`Judgment as a Matter of Law and/or Rule 59(a) Motion for New Trial on Liability Issues (Dkt.
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`No. 329 (“Mot.”). The Court heard argument on November 3, 2015. For the reasons set forth
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`below, Samsung’s Rule 50(b) Renewed Motion for Judgment as a Matter of Law and/or Rule
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`59(a) Motion for New Trial on Liability Issues is DENIED.
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`I.
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`BACKGROUND
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`The Court held a jury trial in this case. The jury returned a verdict on February 13, 2015.
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`The asserted claims of U.S. Patent No. 8,023,580 (“’580 Patent”) and U.S. Patent No. 8,457,228
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`(“’228 Patent”), the two patents-in-suit, involve a system in which devices can communicate
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`with each other on the same network using different modulation methods. The jury returned a
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`unanimous verdict that the asserted claims were infringed and not invalid, and it awarded $15.7
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`million in damages to Plaintiff Rembrandt Wireless Technologies, LP (“Rembrandt”).
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`(“Verdict”, Dkt. No. 288.) Samsung now asserts that the jury did not have sufficient evidence for
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`its findings.
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`1
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`Apple Exhibit 1119
`Apple Inc. v. Rembrandt Wireless
`IPR2020-00034
`Page 00001
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`Case 2:13-cv-00213-JRG Document 352 Filed 02/17/16 Page 2 of 9 PageID #: 12467
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`II.
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`APPLICABLE LAW
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`A. Applicable Law Regarding FED. R. CIV. P. 50
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`Upon a party’s renewed motion for judgment as a matter of law following a jury verdict,
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`the Court should properly ask whether “the state of proof is such that reasonable and impartial
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`minds could reach the conclusion the jury expressed in its verdict.” FED. R. CIV. P. 50(b); see
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`also Am. Home Assur. Co. v. United Space Alliance, 378 F.3d 482, 487 (5th Cir. 2004). “The
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`grant or denial of a motion for judgment as a matter of law is a procedural issue not unique to
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`patent law, reviewed under the law of the regional circuit in which the appeal from the district
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`court would usually lie.” Finisar Corp. v. DirectTV Group, Inc., 523 F.3d 1323, 1332 (Fed. Cir.
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`2008). “A JMOL may only be granted when, ‘viewing the evidence in the light most favorable to
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`the verdict, the evidence points so strongly and overwhelmingly in favor of one party that the
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`court believes that reasonable jurors could not arrive at any contrary conclusion.’” Versata
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`Software, Inc. v. SAP Am., Inc., 717 F.3d 1255, 1261 (Fed. Cir. 2013) (quoting Dresser-Rand
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`Co. v. Virtual Automation, Inc., 361 F.3d 831, 838 (5th Cir. 2004)).
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`Under Fifth Circuit law, a court is to be “especially deferential” to a jury’s verdict, and
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`must not reverse the jury’s findings unless they are not supported by substantial evidence.
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`Baisden v. I’m Ready Prods., Inc., 693 F.3d 491, 499 (5th Cir. 2012). “Substantial evidence is
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`defined as evidence of such quality and weight that reasonable and fair-minded men in the
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`exercise of impartial judgment might reach different conclusions.” Threlkeld v. Total Petroleum,
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`Inc., 211 F.3d 887, 891 (5th Cir. 2000). A motion for judgment as a matter of law must be denied
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`“unless the facts and inferences point so strongly and overwhelmingly in the movant’s favor that
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`reasonable jurors could not reach a contrary conclusion.” Baisden, 693 F.3d at 498 (citation
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`omitted). However, “[t]here must be more than a mere scintilla of evidence in the record to
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`2
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`IPR2020-00034 Page 00002
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`Case 2:13-cv-00213-JRG Document 352 Filed 02/17/16 Page 3 of 9 PageID #: 12468
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`prevent judgment as a matter of law in favor of the movant.” Arismendez v. Nightingale Home
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`Health Care, Inc., 493 F.3d 602, 606 (5th Cir. 2007).
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`In evaluating a motion for judgment as a matter of law, a court must “draw all reasonable
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`inferences in the light most favorable to the verdict and cannot substitute other inferences that
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`[the court] might regard as more reasonable.” E.E.O.C. v. Boh Bros. Const. Co., L.L.C., 731 F.3d
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`444, 451 (5th Cir. 2013) (citation omitted). However, “[c]redibility determinations, the weighing
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`of the evidence, and the drawing of legitimate inferences from the facts are jury functions, not
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`those of a judge.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000). “[T]he
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`court should give credence to the evidence favoring the nonmovant as well as that ‘evidence
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`supporting the moving party that is uncontradicted and unimpeached, at least to the extent that
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`that evidence comes from disinterested witnesses.’” Id. at 151 (citation omitted).
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`B. Applicable Law Regarding FED. R. CIV. P. 59
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`Under Federal Rule of Civil Procedure 59(a), a new trial can be granted to any party after
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`a jury trial on any or all issues “for any reason for which a new trial has heretofore been granted
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`in an action at law in federal court.” FED. R. CIV. P. 59(a). In considering a motion for a new
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`trial, the Federal Circuit applies the law of the regional circuit. z4 Techs., Inc. v. Microsoft Corp.,
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`507 F.3d 1340, 1347 (Fed. Cir. 2007). “A new trial may be granted, for example, if the district
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`court finds the verdict is against the weight of the evidence, the damages awarded are excessive,
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`the trial was unfair, or prejudicial error was committed in its course.” Smith v. Transworld
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`Drilling Co., 773 F.2d 610, 612–13 (5th Cir. 1985). “The decision to grant or deny a motion for a
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`new trial is within the discretion of the trial court and will not be disturbed absent an abuse of
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`discretion or a misapprehension of the law.” Prytania Park Hotel, Ltd. v. General Star Indem.
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`Co., 179 F.3d 169, 173 (5th Cir. 1999).
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`3
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`IPR2020-00034 Page 00003
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`Case 2:13-cv-00213-JRG Document 352 Filed 02/17/16 Page 4 of 9 PageID #: 12469
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`C. Applicable Law Regarding Infringement
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`To prove infringement under 35 U.S.C. § 271, a plaintiff must show the presence of
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`every element, or its equivalent, in the accused product or service. Lemelson v. United States,
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`752 F.2d 1538, 1551 (Fed. Cir. 1985). First, the claim must be construed to determine its scope
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`and meaning; and second, the construed claim must be compared to the accused device or
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`service. Absolute Software, Inc. v. Stealth Signal, Inc., 659 F.3d 1121, 1129 (Fed. Cir. 2011)
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`(citing Carroll Touch, Inc. v. Electro Mech. Sys., Inc., 15 F.3d 1573, 1576 (Fed. Cir. 1993)). “A
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`determination of infringement is a question of fact that is reviewed for substantial evidence when
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`tried to a jury.” ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1311 (Fed. Cir.
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`2007).
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`D. Applicable Law Regarding Validity
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`An issued patent is presumed valid. 35 U.S.C. § 282; Fox Grp., Inc. v. Cree, Inc., 700
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`F.3d 1300, 1304 (Fed. Cir. 2012). Samsung has the burden to show by clear and convincing
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`evidence that the asserted claims were anticipated by or obvious over the prior art. Microsoft
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`Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 2242 (2011). To prevail on judgment as a matter of
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`law, moreover, Samsung must show that no reasonable jury would have a legally sufficient
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`evidentiary basis to find for the Plaintiff. FED. R. CIV. P. 50. “Generally, a party seeking to
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`invalidate a patent as obvious must demonstrate by clear and convincing evidence that a skilled
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`artisan would have had reason to combine the teaching of the prior art references to achieve the
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`claimed invention, and that the skilled artisan would have had a reasonable expectation of
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`success from doing so.’’ In re Cyclobenzaprine Hydrochoride, 676 F.3d 1063 (Fed. Cir. 2012)
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`(internal quotation marks omitted).
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`4
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`IPR2020-00034 Page 00004
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`Case 2:13-cv-00213-JRG Document 352 Filed 02/17/16 Page 5 of 9 PageID #: 12470
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`A. Non-Obviousness of the Patents-in-Suit
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`III.
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`ANALYSIS
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`Samsung argues that it presented unrebutted, clear and convincing evidence that the
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`asserted claims are invalid as obvious in view of U.S. Patent No. 5,706,428 (“Boer patent”) in
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`combination with other prior art and is therefore entitled to judgment as a matter of law as to
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`obviousness. (Mot. at 3–4.) In particular, Samsung argues that its expert, Dr. Goodman, testified
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`that all but two elements of the asserted claims, including the “different types” of modulation
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`methods, were present in and disclosed by the Boer patent: 1) the use of a master/slave protocol
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`and 2) the requirement in claim 21 of the ’228 patent that an address be placed in the first portion
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`of a transmission. (Id.) With regard to the use of the “master/slave protocol” and the larger issue
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`of the disclosure of “different types” of modulation methods, Samsung argues that the Boer
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`patent by itself, as well as in combination with the Lucent Press Release (DX1185), discloses the
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`use of “different types” of modulation methods and that the Upender article (DX1190) in
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`combination with the Boer patent discloses the use of the “master/slave protocol” described in
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`the asserted claims. (Id. at 8–16.) As to the requirement in claim 21 of the ’228 patent that an
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`address be placed in the first portion of a transmission, Samsung argues that Dr. Goodman
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`testified that this limitation would have been obvious because “placing the address in the header
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`[was] ‘a way of saving power’” and the limitation was disclosed in U.S. Patent No. 5,537,398
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`(the “Siwaik patent”). (Id. at 16–19.) Further, Samsung argues that Dr. Goodman provided
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`unrebutted testimony on motivations to combine the identified prior art. (Id. at 4.)
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`Rembrandt responds by arguing that Samsung failed to show that prior art combinations
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`identified disclosed the “different types” of modulation methods, as required by the asserted
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`claims. (Dkt. No. 335 (“Resp.”) at 7.) Rembrandt also argues that Samsung failed to show that it
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`5
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`IPR2020-00034 Page 00005
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`Case 2:13-cv-00213-JRG Document 352 Filed 02/17/16 Page 6 of 9 PageID #: 12471
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`would have been obvious to a person of ordinary skill in the art to combine the Boer patent with
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`the Upender article for the use of the master/slave protocol, because Upender teaches against
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`using the master/slave protocol. (Id. at 9–13.) Rembrandt further argues that, with respect to
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`claims 2 and 59 of the ’580 patent, Dr. Goodman’s conclusory statement regarding the claimed
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`“reversion” of the communication back to the first modulation method, as needed, failed to show
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`by clear and convincing evidence that such a limitation existed in the prior art. (Id. at 13–15.)
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`With regard to claim 21, Rembrandt argues that the Siwaik patent was non-analogous prior art
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`that was previously considered by the PTO and that Samsung failed to show any disclosure of
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`the “first information . . . first message address data” limitation in the prior art. (Id. at 15–16.)
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`Finally, Rembrandt argues that Samsung failed to show that it would have been obvious to a
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`person of ordinary skill in the art to combine all the different pieces of prior art necessary to
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`disclose all elements of the asserted claims. (Id. at 17–18.)
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`For example, Dr. Morrow testified as follows regarding “different [modulation method]
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`types”:
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`Q. Now, why are those GFSK frequency modulations and DPSK phase
`modulations we just talked about of a different type under the Court’s
`construction?
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`A. Well, they’re different types, because they’re in different families. You notice
`that frequency modulation is in the frequency family. The frequency is
`changed with the information. Phase modulation is in the phase family in that
`the phase is changed in accordance with the information. There are no
`overlapping characteristics between these two modulation types. So they’re in
`different families and thus different types of modulation.
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`(2/10/2015 P.M. Trial Tr. (Morrow), Dkt. No. 291 at 18:13–24.)
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`Further, Dr. Goodman testified that all of the modulation methods disclosed in the Boer patent
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`and the Lucent Press Release vary the “phase” characteristic of a carrier signal. See (2/11/2015
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`P.M. Trial Tr. (Goodman), Dkt. No. 296 at 17:8–13, 34:7–21; 53:1–54:13.)
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`Case 2:13-cv-00213-JRG Document 352 Filed 02/17/16 Page 7 of 9 PageID #: 12472
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`Additionally, with respect to the Upender article, Dr. Goodman gave the following
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`testimony:
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`Q. (By Mr. Heim) And what is shown there, Dr. Goodman, are how polling rates
`were with respect to these particular conditions, correct?
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`A. That’s – that’s what it says, yes.
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`Q. And if we go to the bottom, the CSMA/CA, and if we highlight that, that row
`indicates how CSMA/CA fares with respect to those same conditions, correct?
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`A. That’s what they’re presenting, yes.
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` Q. And if we do a comparison between what they’re showing for polling and
`what they’re showing for CSMA/CA, fair to say that the CSMA/CA does
`better in almost every category, correct?
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`A. Right. In their applications, yes.
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`(2/11/2015 P.M. Trial Tr. (Goodman), Dkt. No. 296 at 63:8–20.)
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`The jury was free to weigh the competing testimony and weigh the credibility of the
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`witnesses. Ultimately, the jury agreed with Rembrandt’s expert. After consideration of the
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`admitted evidence, including evidence regarding whether the Boer patent and Lucent Press
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`Release disclosed the limitations for which they are being relied upon, the jury found that the
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`asserted patents were valid. See (2/11/2015 P.M. Trial Tr. (Goodman), Dkt. No. 296 at 17:8–13,
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`34:7–21; 53:1–54:13.) The Court will not substitute its judgment for that of the jury. Applying
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`the clear and convincing standard, the jury found that the patents-in-suit were not invalid. The
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`Court does not find that no reasonable jury could have found the asserted patents were valid
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`based on the presented evidence. Accordingly, Samsung’s Motion for Judgment as a Matter of
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`Law in regard to obviousness is DENIED.
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`B. The Construction of Modulation Methods “of a Different Type”
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`The Court previously addressed the issues of the proper construction of the terms,
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`IPR2020-00034 Page 00007
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`Case 2:13-cv-00213-JRG Document 352 Filed 02/17/16 Page 8 of 9 PageID #: 12473
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`“modulation method [] of a different type” and “different types of modulation methods,” as
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`raised by Samsung in this Motion. See (Dkt. No. 114 at 22–29). For the reasons set forth below,
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`the Court declines to grant new trial on these re-urged issues of claim construction.
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`On July 10, 2014, the Magistrate Judge issued a substantial and carefully reasoned Claim
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`Construction Memorandum Order and Opinion after carefully considering the Parties’
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`arguments, the patent, and the proper intrinsic and extrinsic evidence. See (Dkt. No. 114). Now,
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`after trial has completed and a verdict had been returned, Samsung seeks to reopen the claim
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`construction issues previously addressed.
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`These issues have already received full and fair treatment. In the Claim Construction
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`Order, the Magistrate Judge considered essentially the same arguments raised by Samsung in the
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`current motion. See (Dkt. No. 114 at 22–24.) After considering both Parties’ arguments and the
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`language of the patent, the Magistrate Judge declined to adopt the same construction now put
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`forward by Samsung. See (Dkt. No. 114 at 22.) That decision, when made, was not clearly
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`erroneous or contrary to the law and has not since created such prejudicial error that new trial is
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`warranted. Accordingly, Samsung’s Motion for New Trial, based upon an allegedly incorrect
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`claim construction, is DENIED.
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`C. Judgment as a Matter of Law as to Non-Infringement of Claims 1, 19, 23, 29, 41, 52,
`and 58 of the ’580 Patent and Claims 1, 26, 28, 29, 50, and 51 of the ’228 Patent
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`Samsung requests Judgment as a Matter of Law as to non-infringement of claims 1, 19,
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`23, 29, 41, 52, and 58 of the ’580 patent and claims 1, 26, 28, 29, 50, and 51 of the ’228 patent
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`(collectively, the “dropped claims”). (Mot. at 28–30.) More specifically, Samsung argues that the
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`claims were withdrawn on the eve of trial, and therefore, no evidence of infringement was
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`presented on these dropped claims. (Id.) Rembrandt responds that the present motion is an
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`improper vehicle for Samsung’s request and is also untimely. (Resp. at 29–30.) In particular,
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`IPR2020-00034 Page 00008
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`Case 2:13-cv-00213-JRG Document 352 Filed 02/17/16 Page 9 of 9 PageID #: 12474
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`Rembrandt argues that these counter-claims of non-infringement were no longer live once
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`Rembrandt filed notice of the dropped claims and thus, were never submitted to the jury. (Id.)
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`The Court finds that Samsung’s request should be DENIED. Federal Rule of Civil
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`Procedure 50 is clear that relief under this Rule may be appropriate only “[i]f a party has been
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`fully heard on an issue during a jury trial” and if certain other conditions are met. FED. R.
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`CIV. P. 50(a) (emphasis added). In this case, neither party was heard, let alone fully heard, on the
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`issue of either infringement or non-infringement regarding the dropped claims. Accordingly,
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`Rule 50 relief is inappropriate and Samsung’s Motion is DENIED with regard to such dropped
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`claims.
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`IV.
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`CONCLUSION
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`For the reasons set forth above, the Court finds no compelling basis upon which the
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`jury’s verdict with regard to liability should be disturbed. The jury’s verdict in this respect is
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`supported by substantial evidence and should stand unchanged by this Court. Further, the Court
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`finds that Samsung is not entitled to a new trial on liability. Accordingly, Samsung’s Rule 50(b)
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`Renewed Motion for Judgment as a Matter of Law and/or Rule 59(a) Motion for New Trial on
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`Liability Issues (Dkt. No. 329) is in all things DENIED.
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`So ORDERED and SIGNED this 17th day of February, 2016.
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`_________________________________________________________________________________________________
`DNEY GILSSSSTTTTRAP
`RODNEY GILSTRAP
`ITED STATEEEESSS DISTRICT JUD
`UNITED STATES DISTRICT JUDGE
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`IPR2020-00034 Page 00009
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