Caution
`As of: September 23, 2020 3:40 PM Z
`
`Green Mt. Glass LLC v. Saint-Gobain Containers, Inc.
`
`United States District Court for the District of Delaware
`
`March 8, 2018, Decided; March 8, 2018, Filed
`
`C.A. No. 14-392-GMS
`
`Reporter
`300 F. Supp. 3d 610 *; 2018 U.S. Dist. LEXIS 37782 **; 2018 WL 1202638
`Farnan LLP, Wilmington, DE.
`
`GREEN MOUNTAIN GLASS LLC & CULCHROME,
`LLC, Plaintiffs, v. SAINT-GOBAIN CONTAINERS, INC.,
`d/b/a VERALLIA NORTH AMERICA, Defendant.
`
`Subsequent History: Affirmed by Green Mt. Glass,
`LLC v. St.-Gobain Containers, Inc., 2019 U.S. App.
`LEXIS 20671 (Fed. Cir., July 12, 2019)
`
`Prior History: Green Mt. Glass, LLC v. St.-Gobain
`Containers, Inc., 2015 U.S. Dist. LEXIS 192328 (D. Del.,
`Jan. 14, 2015)
`
`Core Terms
`
`infringement, color, cullet, patent, mixed, enhanced,
`prejudgment, anticipation, glass, invalidity, unsorted,
`decolorizers, misconduct, technology, royalty, batch,
`compounded, deliberate, prevailed, quarterly, conceal,
`glassmaking, equitable, weigh, ton, manufacturing,
`Calculation, post-trial, mitigate, patentee
`
`Counsel: [**1] For Green Mountain Glass LLC,
`Plaintiff: Brian E. Farnan, LEAD ATTORNEY, Michael J.
`Farnan, Farnan LLP, Wilmington, DE; John E. Schiltz,
`PRO HAC VICE; Justin A. Nelson, PRO HAC VICE;
`Matthew R. Berry, Susman Godfrey LLP, Seattle, WA;
`Max L. Tribble, PRO HAC VICE; Robert S. Bramson,
`PRO HAC VICE; Steven M Shepard, PRO HAC VICE.
`
`For Culchrome LLC, Plaintiff, Counter Defendant: Brian
`E. Farnan, LEAD ATTORNEY, Michael J. Farnan,
`
`For Saint-Gobain Containers Inc., doing business as
`Verallia North America, Defendant: Brian A. Biggs,
`LEAD ATTORNEY, Laura D. Hatcher, DLA Piper LLP,
`Wilmington, DE; Ferlilia V. Roberson, PRO HAC VICE;
`Matthew D. Satchwell, PRO HAC VICE; Paul R.
`Steadman, PRO HAC VICE; Stuart E. Pollack, PRO
`HAC VICE.
`
`For Green Mountain Glass LLC, Counter Defendant:
`Brian E. Farnan, LEAD ATTORNEY, Michael J. Farnan,
`Farnan LLP, Wilmington, DE.
`
`Judges: Gregory M. Sleet, UNITED STATES
`DISTRICT JUDGE.
`
`Opinion by: Gregory M. Sleet
`
`Opinion
`
` [*616] MEMORANDUM
`
`I. INTRODUCTION1
`
`1 All docket citations refer to Civil Action No. 14-392-GMS. The
`abbreviation "Tr." refers to the transcript from the five-day jury
`trial held on April 17, 2017 through April 21, 2017, (D.I. 268-
`272.)
`
`O-I Glass, Inc.
`Exhibit 1068
`O-I Glass v. Culchrome
`IPR2020-01068
`
`Ex. 1068-001
`
`

`

`300 F. Supp. 3d 610, *616; 2018 U.S. Dist. LEXIS 37782, **1
`
`Page 2 of 13
`
`In this patent infringement action, Plaintiffs Green
`Mountain Glass LLC, and CulChrome, LLC (collectively,
`"Plaintiffs") allege that Saint-Gobain Containers, Inc.,
`d/b/a/ Verallia North America, now known as "Ardagh"
`("Defendant") [**2]
`infringes U.S. Patent Nos.
`5,718,737 ("the '737 Patent") and 6,230,521 ("the '521
`Patent"). (D.I. I.)2 [*617] The court held a five-day jury
`trial in this matter on April 17 through April 21, 2017.
`(D.I. 268-272.) At trial, Defendant properly moved for
`judgment as a matter of law ("JMOL") at the end of
`Plaintiffs' case pursuant to Rule 50(a) of the Federal
`Rules of Civil Procedure and again at the close of
`evidence. Tr. 687:8-17; 1200:14-21.3
`
`On April 21, 2017, the jury returned a verdict in favor of
`Plaintiffs on the issue of infringement with respect to all
`claims of the '737 Patent. Tr. 1374:15-25, 1376:1-25;
`(D.I. 240.) The jury found that Defendant willfully
`infringed claims 1, 18, 20, 21, 22, and 24 of the '737
`Patent, but that Defendant did not infringe the '521
`Patent. Id. The jury also found that the claims of the '737
`Patent were valid, not obvious, and not anticipated by
`the prior art. Id. The court entered judgment on the
`verdict on April 26, 2017. (D.I. 242.)
`
`Presently before the court is Defendant's motion for
`judgment as a matter of law or alternatively for a new
`trial on
`the
`issues of
`infringement and willful
`infringement and Plaintiffs' motions for prejudgment
`interest, attorney's
`fees, enhanced damages, and,
`alternatively, a new trial. (D.I. 248); (D.I. 251.) Having
`considered the entire record in this case, the substantial
`evidence in the [**3] record, the parties' post-trial
`submissions, and the applicable law, the court will grant
`Plaintiffs' motion for prejudgment interest and deny all
`other motions.4 The court's reasoning follows.
`
`2 On April 11, 2014, Saint-Gobain Containers, Inc. was
`acquired by Ardagh Holdings USA, Inc. and underwent a
`name change to Ardagh Glass, Inc. (D.I. 5 at n. 1.)
`
`3 The court declined to rule on the Motions at trial. Tr. 1200:14-
`21. On October 11, 2016, the court denied Ardagh's Rule 12
`Motion for Judgment on the pleadings and found the '521
`Patent was not directed to unpatentable subject matter. (D.I.
`183); (D.I. 249 at 22.)
`
`4 Defendant's motion asserts that it is entitled to judgment as a
`matter of law pursuant to Rule 50 of the Federal Rules of Civil
`Procedure or, alternatively, a new trial pursuant to Rule 59.
`(D.I. 248.) Plaintiffs' motion asserts that it is entitled to
`prejudgment interest, enhanced damages, attorney's fees, or,
`alternatively, a new trial. (D.I. 252.)
`
`II. BACKGROUND OF THE TECHNOLOGY
`
`The patents-in-suit relate to a method of recycling
`batches of mixed colored cullet5 into amber, green, or
`flint glass by selectively decolorizing the color green
`from the mixed colored cullet and then colorizing the
`mixed colored cullet. '737 Patent. The technology
`described in the patents-in-suit includes efforts to turn a
`waste product of glass recycling of unsorted mixed
`colored glass cullet into a product useful to glass
`manufacturers. Id. At trial, the main focus of both the
`parties' invalidity and infringement arguments focused
`on the requirement, appearing in one form or another in
`each of the asserted claims, that the colors "of said . . .
`cullet" are or are not "selectively colorized." Id. at Claims
`1, 18.
`
`III. STANDARD OF REVIEW
`
`A. Renewed JMOL Motions
`
`To prevail on a renewed motion for judgment as a
`matter of law following a jury trial and verdict, the
`moving party "must show that the jury's findings,
`presumed or express, are not supported by substantial
`evidence or, [**4]
`if
`they were,
`that
`the
`legal
`conclusion(s) implied [by] the jury's verdict cannot in law
`be supported by those findings." Pannu v. Iolab Corp.,
`155 F.3d 1344, 1348 (Fed. Cir. 1998) (quoting Perkin-
`Elmer Corp. v. Computervision Corp., 732 F.2d 888,
`893 (Fed. Cir. 1984)). "Substantial evidence" is defined
`as "such relevant evidence from the record [*618]
`taken as a whole as might be accepted by a reasonable
`mind as adequate to support the finding under review."
`Perkin-Elmer Corp., 732 F.2d at 893.
`
`The court should only grant the motion "if, viewing the
`evidence in the light most favorable to the nonmovant
`and giving it the advantage of every fair and reasonable
`inference, there is insufficient evidence from which a
`jury reasonably could find liability." Lightning Lube, Inc.
`v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993) (citing
`Wittekamp v. Gulf Western Inc., 991 F.2d 1137, 1141
`(3d Cir. 1993)). "In determining whether the evidence is
`sufficient to sustain liability, the court may not weigh the
`
`5 "Bulk recycled post-consumer glass suitable for melting into
`recycled glass articles is known as cullet." '737 Patent at 1:32-
`35.
`
`Ex. 1068-002
`
`

`

`300 F. Supp. 3d 610, *618; 2018 U.S. Dist. LEXIS 37782, **4
`
`Page 3 of 13
`
`evidence, determine the credibility of witnesses, or
`substitute its version of the facts for the jury's version."
`Lightning Lube, 4 F.3d at 1166 (citing Fineman v.
`Armstrong World Indus., Inc., 980 F.2d 171, 190 (3d Cir.
`1992)). Rather, the court must resolve all conflicts of
`evidence in favor of the non-movant. Williamson v.
`Consol. Rail Corp., 926 F.2d 1344, 1348 (3d Cir. 1991);
`Perkin-Elmer Corp., 732 F.2d at 893.
`
`"The question is not whether there is literally no
`evidence supporting the party against whom the motion
`is directed but whether there is evidence upon which the
`jury could properly find a verdict for that party." Lightning
`Lube, 4 F.3d at 1166 (quoting Patzig v. O'Neil, 577 F.2d
`841, 846 (3d Cir. 1978)).
`
`B. New Trial
`
`Pursuant to Federal Rule of Civil Procedure 59, a court
`may grant a new trial "for any of [**5] the reasons for
`which a new trial has heretofore been granted in an
`action at
`law
`in
`federal court." Fed. R. Civ. P.
`59(a)(1)(A). The decision to grant or deny a new trial is
`within the sound discretion of the trial court. See Allied
`Chem. Corp. v. Daiflon, Inc., 449 U.S. 33, 36, 101 S. Ct.
`188, 66 L. Ed. 2d 193 (1980).
`In making
`this
`determination, the trial judge should consider the overall
`setting of the trial, the character of the evidence, and the
`complexity or simplicity of the legal principles which the
`jury had to apply to the facts. Lind v. Schenley Indus.,
`Inc., 278 F.2d 79, 89 (3d Cir. 1960). Unlike the standard
`for determining judgment as a matter of law, the court
`need not view the evidence in the light most favorable to
`the verdict winner. Allied Chem. Corp., 449 U.S. at 36. A
`court should grant a new trial in a jury case, however,
`only if "the verdict was against the weight of the
`evidence . . . [and] a miscarriage of justice would result
`if the verdict were to stand." Consol. Rail Corp., 926
`F.2d at 1352.
`
`Similarly, Federal Rule of Civil Procedure 60 permits a
`court to relieve a party from final judgment and even
`grant a new trial due to "fraud . . ., misrepresentation, or
`other misconduct by an adverse party." Fed. R. Civ. P.
`60(b)(3); see Bethel v. McAllister Bros., Inc., 81 F.3d
`376, 384-85 (3d Cir. 1996). In order to prevail on a Rule
`60 motion, the movant must show that the adverse party
`engaged in fraud or other misconduct, and this conduct
`prevented the movant from fully and fairly presenting his
`case. Stridiron v. Stridiron, 698 F.2d 204, 207, 19 V.I.
`642 (3d Cir. 1983). Additionally, the movant must
`demonstrate [**6] that the fraud or misrepresentation
`
`was material to the outcome of the case. Bandai Am.
`Inc. v. Bally Midway Mfg. Co., 775 F.2d 70, 73 (3d Cir.
`1985). Fraud or misrepresentation must be proved by
`clear and convincing evidence. See Brown v.
`Pennsylvania R.R. Co., 282 F.2d 522, 527 (3d Cir.
`1960).
`
`IV. DISCUSSION
`
`Having considered the substantial evidence in the
`record, the parties' post-trial [*619] submissions, and
`the applicable law, the court will deny all of Defendant's
`motions. The court will deny Plaintiffs' motions for
`enhanced damages, attorney's fees, and a new trial and
`grant Plaintiffs' motion for prejudgment interest. The
`court's reasoning follows.
`
`A. Infringement
`
`First, Defendant moves for judgment as a matter of law
`or, alternatively, a new trial on infringement. (D.I. 249.)
`Defendant's sole challenge to the jury's infringement
`verdict is that Plaintiffs "failed to prove that it 'selectively
`decolorized' one of the colors of the unsorted mixed
`color cullet, which is a required element of every
`asserted claim." (D.I. 249 at 3.)6 Both of the asserted
`independent claims, 1 and 18, require "selectively"
`decolorizing and enhancing "at least one of the colors of
`said unsorted mixed color glass cullet." '737 Patent at
`Claims 1, 18. Thus, to infringe, Defendant must use
`colorizers or decolorizers in a selective way to remove
`and enhance [**7] only a particular color cullet. (D.I.
`249 at 3.) Defendant argues that there is no evidence in
`the record that its glassmaking process selectively uses
`decolorizers or colorizers to act on the cullet. Id. at 3-4.
`Specifically, Defendant argues that the evidence only
`shows that it used the same colorizers and decolorizers
`that are well-known in the prior art, that these colorizers
`and decolorizers acted on all colors in all materials in
`the batch as a whole, and were not selective. Tr. 263:4-
`264; 265:10-266.
`
`Plaintiffs assert that they presented substantial evidence
`"through exhibits, fact, and expert testimony," which
`provided the jury reasonable grounds to find that
`Defendant infringed all asserted claims of the '737
`Patent. (D.I. 260 at 3-4.) The court agrees. Plaintiffs'
`
`6 Plaintiffs' infringement expert interpreted "selectively" to
`mean "decolorizing a specific or a selective undesired color
`that the glassmaker wants to decolorize." Tr. 534:22-25.
`
`Ex. 1068-003
`
`

`

`300 F. Supp. 3d 610, *619; 2018 U.S. Dist. LEXIS 37782, **7
`
`Page 4 of 13
`
`expert, Dr. Steve Martin, testified extensively as to
`Defendant's infringement finding that "all of the steps [of
`the independent claims asserted] have been practiced
`by [Defendant]'s accused methods." (D.I. 260 at 4); Tr.
`400:24-433; 424:2-3.7 While Dr. Martin's testimony
`alone provided a sufficient basis for a reasonable jury to
`find Defendant infringed the '737 Patent, Plaintiffs
`submitted considerable additional evidence. (D.I. 260 at
`4.) For [**8] example, Plaintiffs' technical director, Dr.
`Lehman, testified that Defendant's Manager of Glass
`Technology told him they used mixed color cullet with
`colorizers and decolorizers. Tr. 201:1-9. At
`trial,
`Plaintiffs presented
`testimony
`from Defendant's
`corporate head, James Keener, who testified that
`"[Defendant] practiced every limitation of the '737
`Patent's independent claims." Tr. 711:22-712:20. The
`jury also heard evidence about an internal email stating
`that "[Defendant] would not seek a license on any color
`control technology because [they] are already" using the
`technology. DX-134; (D.I. 260 at 4.) Lastly, the court
`recognized at
`trial
`that "asserting a defense of
`anticipation based on Ardagh's prior public use could
`seriously undermine the infringement position in the
`eyes of the jury." Tr. 762:10-15. Despite this warning,
`Defendant proceeded with their defense. Accordingly, a
`reasonable jury could have found [*620] infringement
`based on all the aforementioned evidence.
`
`Defendant argues, alternatively, that the court should
`grant a new trial on infringement because "Plaintiffs'
`counsel questioned
`[Defendant]'s
`lay witness Mr.
`Keener on the claim elements and concluded with [the
`question] 'you [**9] have just proven infringement [....]
`correct?'" (D.I. 249 at 4); Tr. 711:22-712:22. Despite the
`court's admonishment of Plaintiffs' counsel and its
`curative instruction, Plaintiffs' counsel repeated this
`statement in his closing. Id.; Tr. 713:5-714:9, 1289:18-
`20. While counsel behaved
`inappropriately and
`unprofessionally at this and other times during the trial,
`after much thought the court believes its curative
`instructions sufficed to adequately ameliorate the harm
`caused by counsel. See InterDigital Commc'ns, Inc. v.
`ZTE Corp., 2016 U.S. Dist. LEXIS 34989, 2016 WL
`1073229 at *5 (D. Del. Mar. 18, 2016). At the time the
`question was asked, the court told the jury that they
`
`7 More specifically, Dr. Martin testified that "all of the accused
`methods . . . infringe claim 1," "all of their accused batches
`also infringe claim 20," "all of their accused amber batches
`in[fringe] claim 21," "all of the green batches . . . containing
`cobalt infringe claim 22," and "batches containing manganese
`for the amber batches and . . . cobalt for the green batches
`infringe claim 24." (D.I. 260 at 4.)
`
`[counsel's] question and his
`"to disregard
`were
`comment. It was inappropriate. He has been told about
`it. And he will not repeat the offense again. But I am
`directing you to disregard the comment, please." Tr.
`714:2-7.8 In the final jury instructions the court reiterated
`its point and
`instructed
`the
`jury
`that
`they "must
`completely ignore" all the things during trial they were
`ordered to disregard and that they must "not speculate
`about" what a witness or exhibit may have shown
`because they are not evidence. Tr. 1230:15-23.9
`
`For these reasons, the court will deny Defendant's
`motion
`for
`judgment as a matter of
`law or,
`alternatively, [**10] for a new trial on the issue of
`infringement.
`
`B. Willful Infringement
`
`Next, Defendant moves for judgment as a matter of law
`or, alternatively, a new trial on willful infringement. (D.I.
`249.) Defendant asserts that Plaintiffs failed to prove
`willful infringement of the '737 Patent because (1) its
`glassmaking process predates the '737 Patent's priority
`date; (2) it did not use unsorted cullet; and (3) Plaintiffs'
`actions demonstrate that it did not willfully infringe the
`'737 Patent. (D.I. 249 at 5.) Generally, a finding of willful
`infringement should be reserved for "egregious cases of
`misconduct beyond typical infringement." Halo Elecs.,
`Inc. v. Pulse Elecs., Inc., 136 S. Ct. 1923, 1935, 195 L.
`Ed. 2d 278 (2016). Willfulness "is a classical jury
`question of intent. When trial is had to a jury, the issue
`should be decided by the jury." WBIP, LLC v. Kohler
`Co., 829 F.3d 1317, 1341 (Fed. Cir. 2016). A willful
`infringer is one "who intentionally infringes another's
`
`8 During trial, the court advised Plaintiffs' lead counsel that his
`behavior was inappropriate. Tr. 713:1-714:1. Eventually, the
`court summoned counsel
`to sidebar
`in order
`to avoid
`"chastis[ing] [counsel] in front of the jurors." Tr. 713:20-21.
`
`9 During one part of jury instructions the court explained that
`"[d]uring the trial I may not have let you hear the answers to
`some of the questions that the lawyers asked. I may also have
`ruled that you could not see some of the exhibits that the
`lawyers wanted you to see. And sometimes I may have
`ordered you to disregard things that you saw or heard. You
`must completely ignore all of these things. Do not speculate
`about what a witness might have said or what an exhibit might
`have shown. These things are not evidence, and you are of
`course bound by your oath not to let them influence your
`decision in any way. Make your decision based only on the
`evidence, as I have defined it here, and nothing else." Tr.
`1230: 12-21.
`
`
`
`Ex. 1068-004
`
`

`

`300 F. Supp. 3d 610, *620; 2018 U.S. Dist. LEXIS 37782, **10
`
`Page 5 of 13
`
`patents—with no doubts about its validity or any notion
`of a defense—for no other purpose other than to steal
`the patentee's business." Halo Elecs., Inc., 136 S. Ct. at
`1926.
`
`not be liable because it had been using "mixed color
`cullet" prior to issuance of the '737 Patent. (D.I. 249 at
`5-7.)
`
` [*621] 1. The Priority Date & Mixed Cullet
`
`their glassmaking
`that because
`Defendant asserts
`process predated the '737 Patent's priority date, it
`reasonably believed
`it could not be
`liable
`for
`infringement. (D.I. 249 at 5.) Defendant further contends
`former Senior Vice [**11]
`that
`testimony by
`their
`President for Supply Chain, Mr. Rhea, establishes that
`Defendant's glassmaking process had not materially
`changed since at least 1986, and the process used
`mixed color cullet prior to Plaintiffs' patent. Id; Tr. 768:1-
`11, 771:20-773:13. At his deposition, however, Mr.
`Rhea also stated that he "can't recall [to] any degree
`ever reading [the '737 patent]," and was not "aware of
`any analysis that Ardagh did internally to determine
`whether or not
`it was using
`technology
`from
`CulChrome." (D.I. 260 at 10); (D.I. 252 at 10.)
`Defendant's Senior Vice President of Technical
`Services, Roger Erb,
`further said he would be
`"impress[ed]" if Plaintiffs "could take 50% Green Glass
`and 50% Amber Glass and successfully make Amber
`Glass" at the time. (D.I. 260 at 8); (JTX-5.)
`
`2. The Unsorted Cullet
`
`Next, Defendant argues that it believed it was not liable
`for patent infringement because it does not and has not
`used unsorted cullet. (D.I. 249 at 7.) At trial, the
`evidence from both Defendant's witnesses and third
`parties established that Defendant used sorted mixed
`color cullet before Plaintiffs' patent. Id.10 Defendant,
`however, introduced no evidence that anyone "act[ed]
`on the basis of the defense [of using only sorted [**12]
`cullet] or was even aware of it." (D.I. 260 at 11); Halo
`Elecs., Inc., 136 S. Ct. at 1933. Specifically, Defendant's
`assertion that it could not be liable because it only used
`"sorted" cullet contradicts its prior assertion that it could
`
`10 Mr. Rhea testified that as far back as 1986, Ardagh had
`separate bins of cullet for use in each color of glass bottle, and
`that, for example, the amber cullet for amber bottles was
`predominately amber with small amounts of other colors. Tr.
`788:5-789:2. Similarly, Ardagh's employee, Mr. Baum, testified
`that he only worked with sorted mixed color cullet. Tr. 831:9-
`19. Finally, Ardagh's cullet suppliers testified they only sold
`sorted cullet to Ardagh. Tr. 854:7-13.
`
`
`
`3. Plaintiffs' Actions & Documents
`
`Among other things, the jury heard evidence on (1)
`Defendant's deliberate copying, including that, a mere
`eight days after learning about the patent, Defendant
`drafted a secret dossier in which it sought information
`regarding nineteen different aspects about Plaintiffs'
`technology; (2) Defendant's failure to investigate the
`scope of the patent or form a good faith belief that it was
`invalid or not infringed; (3) Defendant's failure to take
`remedial
`action,
`including
`continued
`post-suit
`infringement; and (4) Defendant's attempts to conceal
`its infringement, including a letter sent to Plaintiffs
`denying infringement pre-suit and a letter post-suit
`denying it used "mixed color cullet." Tr. 593:11-15. After
`considering the evidence, the jury, under a heightened
`willfulness instruction, found that "Ardagh was especially
`worthy of punishment." Tr. at 1250:23-24. [**13] 11
`
` [*622] Other than presenting conflicting testimony from
`their own experts, Defendant has not demonstrated that
`a reasonable jury could not have found that it willfully
`infringed the patent. It is not the court's role to second
`guess the credibility determinations of the jury. See
`SIBIA Neuroscis. Inc., v. Cadus Pharm., 225 F.3d 1349,
`1355 (Fed. Cir. 2000). For these reasons, the court will
`deny Defendant's motion for judgment as a matter of
`law or, alternatively, for a new trial on the issue of willful
`infringement. (D.I. 272 at 218:1-22.)
`
`C. Invalidity of '737 Patent Claims
`
`1. Anticipation
`
`11 Defendant argues that as early as February 8, 1999,
`Plaintiffs expressed their belief that everyone using mixed
`color cullet would need to license the '737 Patent. (D.I. 249,
`Ex. 6.) Defendant informed Plaintiffs that it could not be liable
`to Plaintiffs because it had used mixed color cullet years prior
`to the issuance of Plaintiffs' patent. (D.I. 249, Ex. 3.) Plaintiffs
`argue that no actions were taken to absolve Ardagh's willful
`conduct and that while Ardagh pressed each of these issues
`at trial, the jury still found Ardagh "acted willfully" and "was
`especially worthy of punishment." (D.I. 260 at 12.)
`
`Ex. 1068-005
`
`

`

`300 F. Supp. 3d 610, *622; 2018 U.S. Dist. LEXIS 37782, **13
`
`Page 6 of 13
`
`three separate
`that
`trial, Defendant asserted
`At
`references (hereinafter "the 1995 Process," "Duckett,"
`and "Ross") anticipate the asserted claims of the '737
`patent-in-suit. Proving that a patent is invalid based on
`anticipation "requires that the four corners of a single,
`prior art document describe every element of the
`claimed invention, either expressly or inherently, such
`that a person of ordinary skill in the art could practice
`the invention without undue experimentation." EMC
`Corp., et al. v. Zerto, Inc., 2016 U.S. Dist. LEXIS 42944,
`2016 WL 1291757 at *7 (D. Del. Mar. 31, 2016);
`Advanced Display Sys., Inc. v. Kent State Univ., 212
`F.3d 1272, 1282 (Fed. Cir. 2000). The central point of
`dispute between the parties is whether each of these
`prior art references anticipates the "unsorted mixed
`color cullet" requirement that appears in the '737 Patent.
`(D.I. 249 at 10.) Plaintiffs aver that not one of [**14] the
`three references anticipate the patents-in-suit. (D.I. 260
`at 12.) The court agrees, and, for the reasons that
`follow, finds that the evidence at trial was sufficient to
`support the jury's verdict of no invalidity by anticipation
`with respect to each of the references.
`
`i. The 1995 Process
`
`Defendant asserts that their pre-1995 glassmaking
`process used mixed color cullet colorizers, and
`decolorizers. (D.I. 249 at 9.) Specifically, Defendant
`asserts the result of the broad construction of unsorted
`mixed color cullet
`is
`that
`their pre-1995 process
`anticipates the '737 Patent. (D.I. 249 at 11.) Plaintiffs
`argue that the 1995 Process cannot anticipate the '737
`Patent because "trial proved that Ardagh's alleged
`invalidating reference, DX-16, did not anticipate the '737
`[P]atent." (D.I. 260 at 13.) Defendant did not, and
`cannot, prove anticipation for six distinct reasons.
`
`First, Defendant's expert, Dr. Carty, admitted on direct
`examination that he predicated his anticipation opinions
`on ignoring the "selectivity limitation." Tr. 1073:4-114.
`Second, Dr. Cartly admitted that DX-16 does not
`explicitly disclose mixed color cullet. Tr. 1127:18-
`1129:22. Third, more than sufficient evidence existed for
`a reasonable [**15] jury to reject Dr. Carty's assertion
`that the "cullet" listed in DX-16 was mixed color cullet.
`For example, Dr. Carty admitted that as of 1994
`Defendant's trade association confirmed that mixed
`color cullet in container manufacturing could not be
`used. Tr. 1125:6-21. Fourth, Dr. Carty showed batch
`records containing greater than 50 percent internal
`cullet added to the batch. Tr. 1130:3-13. Fifth, the jury
`instructions properly instructed that an anticipating
`reference must be "reasonably accessible to the public,"
`
`or "not subsequently abandoned, suppressed, or
`concealed." Tr. 1254:11-1255:19; (D.I. 260 at 16.) Sixth,
`Defendant introduced no evidence that the pre-1995
`process anticipated dependent claim 20, which adds the
`limitation that the "mixed color cullet" comprise flint,
`green, and amber glass. Id.
`
` [*623] ii. Duckett
`
`that Duckett
`Defendant's post-trial brief asserts
`discloses the use of colorizers with mixed color cullet to
`make amber and green bottles. (D.I. 249 at 16.)
`Specifically, Defendant argues that Duckett disclosed
`selective colorizing in 1979, including "selenium and
`cobalt oxide and manganese as the decolorizing agents
`[to] compensate for iron and flint glass." Id.; Tr. 1092:3-
`20; [**16] Tr. 1095:12-16. Thus, Defendant asserts
`Duckett anticipates claims 1 and 18 as a matter of law in
`addition to each of the dependent claims, claim 20, 21,
`22, and 24. (D.I. 249 at 16-17.)
`
`Plaintiffs assert that Defendant's invalidity defenses
`regarding the Ducket and Ross references, were so
`meritless that Defendant did not even mention them in
`their opening statement or closing argument. (D.I. 260
`at 18.) Additionally, Plaintiffs point out that Defendant's
`expert, Dr. Carty, only testified about Duckett on direct
`for three minutes. (D.I. 260 at 18); Tr. 1090:12-1094:2.
`Dr. Carty gave an analysis of claim 18 and was asked
`"[i]f we march through the rest of the limitations for claim
`18, do you find any of limitation that has not been
`disclosed in Duckett for claim 18?" to which he
`responded, "No,
`I do not." Tr. 1093:14-17. Such
`testimony is insufficient as a matter of law to prove
`anticipation. See Schumer v. Lab Computer Sys., Inc.,
`308 F.3d 1304, 1315-16 (Fed. Cir. 2002) ("testimony
`concerning anticipation . . . must identify each claim
`element, state the witnesses' interpretation of the claim
`element, and explain in detail how each claim element is
`disclosed in the prior art reference."); NTP, Inc. v.
`Research In Motion, Ltd., 418 F.3d 1282, 1325 (Fed.
`Cir.
`2005)
`(affirming
`JMOL
`denial
`where
`"conclusory" [**17] testimony "failed to analyze and
`explain the claim language and which components of
`the prior art embodied each element of the asserted
`claims"). On cross examination, Dr. Carty explained how
`Duckett did not invalidate the '737 patent because it
`merely disclosed how to solve the so-called "flint tinge
`problem." Tr. at 1149:25-1150:23. The '737 Patent itself,
`however, disclosed and distinguished the "flint tinge
`problem" as being unrelated
`to
`the problem and
`methods disclosed in the '737 Patent. (D.I. 260 at 18-
`
`
`
`Ex. 1068-006
`
`

`

`300 F. Supp. 3d 610, *623; 2018 U.S. Dist. LEXIS 37782, **17
`
`Page 7 of 13
`
`19); Tr. at 1149:25-1150:23.
`
`Because Defendant failed to present sufficient evidence
`at trial to support a conclusion that any of the three
`references anticipate
`the
`'737 Patent,
`the court
`concludes that the evidence at trial was sufficient to
`support a verdict
`that
`the
`'737 Patent was not
`anticipated.
`
`2. Obviousness
`
`35 U.S.C. § 103 provides, in pertinent part, that a patent
`may not be obtained "if the differences between the
`subject matter sought to be patented and the prior art
`such that the subject matter as a whole would have
`been obvious to a person having ordinary skill in the
`art." 35 U.S.C. § 103. Obviousness is a question of law
`that
`is predicated upon several
`factual
`inquiries.
`Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476,
`1479 (Fed. Cir. 1997). Specifically, the trier of fact must
`consider: (1) the scope and content [**18] of the prior
`art; (2) the differences between the claimed subject
`matter and the prior art; (3) the level of ordinary skill in
`the art; and (4) secondary considerations of non-
`obviousness such as commercial success, long felt but
`unsolved need, failure of others, and acquiescence of
`others in the industry that the patent is valid, and
`unexpected results. Graham v. John Deere Co., 383
`U.S. 1, 17-18, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966)
`(the "Graham Factors"). The Supreme Court in KSR
`reaffirmed that the Graham Factors "continue to define
`the inquiry that controls." KSR Intern. Co. v. Teleflex
`Inc., 550 U.S. 398, 405, 127 S. Ct. 1727, 167 L. Ed. 2d
`705 (2007).
`
` [*624] Defendant asserts that when combined with
`Duckett and the knowledge of a skilled artisan, the Ross
`Batch Calculation renders the '737 Patent obvious. (D.I.
`249 at 17.) At trial, Mr. Ross, an independent consultant
`in glass manufacturing, testified that his 1994 batch
`calculation for Coors proved that he helped Coors make
`glass
`including mixed cullet, decolorizers, and
`colorizers, including salt cake, graphite, and melite. Tr.
`917:14-25-918:1-25. Defendant asserts
`that while
`Plaintiffs contend that the Ross Batch Calculations were
`secret, Mr. Ross testified that they were not confidential
`when he shared them with Coors. (D.I. 249 at 17); Tr.
`920:16-18. In response, Plaintiffs argue that there was
`no evidence regarding [**19] a motivation to combine
`Duckett and the Ross Batch Calculation. (D.I. 260 at 18-
`19.) Additionally, Plaintiffs assert
`that Dr. Carty's
`testimony regarding the alleged obviousness in light of
`
`the combination of Duckett, Ross, and the knowledge of
`a POSA was equally deficient as a matter of law
`because he did not analyze any of the four Graham
`Factors. (D.I. 260 at 19); Kinetic Concepts, Inc. v. Smith
`& Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012)
`(requiring examination of all four factors). No additional
`evidence showed any motivation to combine Duckett
`and Ross, or that there was a reasonable expectation of
`success in doing so. (D.I. 260 at 19.) As previously
`discussed, the evidence presented regarding Duckett
`and Ross at trial was conclusory, and a reasonable jury
`could have found that the patent was not obvious.
`
`D. Defendant's Motion
`Reconsideration
`
`for Claim Construction
`
`In its motion, Defendant asks the court to revisit its April
`12, 2017 claim construction order regarding "unsorted
`mixed color cullet" if the court does not grant JMOL of
`non-infringement or
`invalidity.
`(D.I. 249 at 18.)
`Specifically, Defendant argues
`that
`"[s]ubstantial
`extrinsic
`trial evidence undermines
`the Plaintiffs'
`construction of 'unsorted mixed color cullet' that was
`proposed and accepted [**20] on the eve of trial." Id.
`"[I]t is too late at the JMOL stage to argue for or adopt a
`new and more detailed interpretation of the claim
`language and test the jury verdict by that new and more
`detailed interpretation." Hewlett-Packard Co. v. Mustek
`Sys., Inc., 340 F.3d 1314, 1320-21 (Fed. Cir. 2003); see
`Avid Tech., Inc. v. Harmonic Inc., 2014 U.S. Dist. LEXIS
`174030, 2014 WL 7206301 at *3 (D. Del. Dec. 17,
`2014). "At the JMOL stage, the question for the trial
`court is limited to whether substantial evidence supports
`the jury's verdict under the issued construction." Wi-Lan,
`Inc. v. Apple, Inc., 811 F.3d 455, 465 (Fed. Cir. 2016).
`The court will not now impose additional limitations on
`the meanin