Columbia's Motion For JNOV

Case 3:17-cv-01781-HZ Document 429 Filed 01/05/18 PageID.
18538 Page 1 of 44
1 DAVID R. BOYAJIAN (SBN #257825)

2 DAVID W. AXELROD (OSB #750231)
admitted pro hac vice
3 BRENNA K. LEGAARD (OSB #001658)
4 admitted pro hac vice
NICHOLAS F. ALDRICH, JR. (OSB #160306)
6 SCHWABE, WILLIAMSON & WYATT, P.C.
1211 SW 5th Ave., Suite 1900
7 Portland, OR 97204
8 Telephone: 503.222.9981
E-mail: dboyajian@schwabe.com
9 daxelrod@schwabe.com
blegaard@schwabe.com
10 naldrich@schwabe.com
11 Attorneys for Plaintiff

12
13 UNITED STATES DISTRICT COURT
14 FOR THE SOUTHERN DISTRICT OF CALIFORNIA
15 SAN DIEGO DIVISION
16 COLUMBIA SPORTSWEAR NORTH Case No.: 3:17-cv-01781-HZ
AMERICA, INC., an Oregon corporation,
17 COLUMBIA’S MEMORANDUM
Plaintiff, IN SUPPORT OF RENEWED
18 MOTION FOR JUDGMENT AS
v. A MATTER OF LAW AND
19 MOTION FOR A NEW TRIAL
SEIRUS INNOVATIVE ACCESSORIES,
20 INC., a Utah corporation, REQUEST FOR ORAL
ARGUMENT
21 Defendant.
Judge: Marco A. Hernandez
22
Date Action Filed: January 12, 2015
23 Trial Date: September 18, 2017
24
25
26
27
28
Case 3:17-cv-01781-HZ Document 429 Filed 01/05/18 PageID.18539 Page 2 of 44
1 TABLE OF CONTENTS
2 Page
3
RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW ........................ 1
4
I. Legal Standard for Renewed Judgment as a Matter of Law ................................ 1
5 II. The Verdicts of Invalidity of Claims 2 and 23 are not Supported by
6 Substantial Evidence. ........................................................................................... 2
7 A. Seirus Failed to Prove by Clear and Convincing Evidence that the
Fottinger Reference Describes Every Element in Both Claims 2
8 and 23 of the ’270 Patent. .......................................................................... 2
9 1. Legal Standard for Anticipation ...................................................... 2
10 2. Asserted Claims ............................................................................... 4
11 3. Factual Background Regarding the Fottinger Reference ................ 5
12 4. Seirus failed to present clear and convincing evidence that
Fottinger’s polymer mixture is a “heat-directing element”
13 under the Court’s claim construction............................................... 5
15 Fottinger discloses a discontinuous array of “[discrete] heat-
directing elements, each [independently] coupled to a first
16 side of a base material” .................................................................... 7
18 Fottinger discloses a “surface area ratio of heat-directing
elements to base material [] from about 7:3 to about 3:7 . . .” ........ 7
19
7. Fottinger does not disclose 36% coverage. ................................... 11
21 Fottinger discloses a heat management material adapted for
use with body gear “wherein the base material comprises an
22 innermost layer of the body gear having an innermost
23 surface, and wherein the heat-directing elements are
positioned on the innermost surface to direct heat towards
24 the body of a body gear user.” ....................................................... 17
25 B. The Jury Lacked Substantial Evidence to Conclude that Claims 2
26 and 23 of the ’270 Patent Would Have Been Obvious to a Person
of Ordinary Skill in the Field at the Time of the Claimed Invention. ..... 19
27
28 i
COLUMBIA’S MEMO ISO RENEWED CASE NO.: 3:17-CV-01781-HZ
MOTION FOR JMOL AND MOTION FOR
A NEW TRIAL
1 1. Seirus’s obviousness case was wrong as a matter of law. ............. 19

Fottinger as the primary reference combined with any of the
3
four individual secondary references (Worley, Vaughn,
4 Halley, or Blauer) established a prima facie case of
obviousness. ................................................................................... 22
5
3. Seirus failed to present clear and convincing evidence that
6 there was a motivation to combine the art to arrive at the
7 patented invention or that one of ordinary skill in the art
would have expected such a combination to be successful. .......... 23
8
4. Dr. Block failed to consider objective evidence of
9 nonobviousness in formulating his obviousness opinion. ............. 28
10 A NEW TRIAL ON VALIDITY IS WARRANTED .................................................. 31
11 I. The Rule 59 Standards........................................................................................ 31
12 II. Failure to Instruct the Jury on Critical Steps in the Validity Analyses
Require a New Trial on Both Section 102 and 103 Claims and Defenses......... 33
13
A. Failure to Instruct the Jury on the Atofina Standards for Evaluating
14 a Prior Art Teaching of Alleged Overlapping Ranges Was Clear
15 Error that Vitiates the Jury Verdicts on Validity. .................................... 33
16 B. Failure to Instruct the Jury on the Requirement to Identify a
Motivation to Combine the Prior Art Vitiates the Jury Verdicts on
17 Validity. .................................................................................................... 34
18 III. The Admission of Incompetent Opinion Testimony From Dr. Block was
19 Prejudicial and Leaves the Jury’s Verdicts on Anticipation and
Obviousness Based on Speculation. ................................................................... 35
20
A. Failure to Exclude Dr. Block’s New Opinion Testimony—
21 Disclosed for the First Time From the Stand—that Fottinger
Disclosed a Specific Example of 36% Coverage Vitiates the Jury
22
Verdicts on Validity. ................................................................................ 35
23 B. Dr. Block’s Obviousness Opinions Failed to Apply the Correct
24 Legal Standard, are Thus Incompetent, and Cannot Sustain the
Jury’s Verdicts. ........................................................................................ 35
25
26
27
28 ii
A NEW TRIAL
1 TABLE OF AUTHORITIES
2 Page(s)
3
Cases
4
Am. Hoist & Derrick Co. v. Sowa & Sons, Inc.,
5 725 F.2d 1350 (Fed. Cir. 1984) ............................................................................. 3, 4
6
Apple Inc. v. Samsung Elecs. Co.,
7 839 F.3d 1034 (Fed. Cir. 2016) ......................................................................... 21, 28
8 Asetek Danmark A/S v. CMI United States, Inc.,
9 100 F. Supp. 3d 871 (N.D. Cal. 2015)..................................................................... 28
10 Atofina v. Great Lakes Chem. Corp.,
11 441 F.3d 991 (Fed. Cir. 2006) ................................................................. 8, 11, 33, 34
12 Bateman v. Mnemonics, Inc.,

79 F.3d 1532 (11th Cir. 1996) ................................................................................. 32
13
14 Bixby v. KBR, Inc.,
2013 U.S. Dist. LEXIS 60390 (D. Or. April 26, 2013)........................................... 32
15
Brooke Grp. v. Brown & Williamson Tobacco Corp., 509 U.S. 209
16 (1993) ....................................................................................................................... 25
17
Brown & Williamson Tobacco Corp. v. Philip Morris, Inc.,
18 229 F.3d 1120 (Fed. Cir. 2000) ............................................................................... 19
19
In re Cyclobenzaprine Hydrochloride,
20 676 F.3d 1063 (Fed. Cir. 2012) ............................................................. 19, 20, 21, 29
21 In re Dembiczak,
22 175 F.3d 994 (Fed. Cir. 2006) ................................................................................. 19
23 In re Gleave,
560 F.3d 1331 (Fed. Cir. 2009) ................................................................................. 5
24
25 Graham v. John Deere Co.,
383 U.S. 1 (1966)......................................................................................... 19, 27, 30
26
27
28 iii
A NEW TRIAL
1 Hagen v. City of Eugene,

2 736 F.3d 1251 (9th Cir. 2013) ................................................................................... 1
3 Ineos USA LLC v. Berry Plastics Corp.,

783 F.3d 865 (Fed. Cir. 2015) ................................................................... 8, 9, 10, 11
4
5 Interconnect Planning Corp. v. Feil,
774 F.2d 1132 (Fed. Cir. 1985) ............................................................................... 21
6
InTouch Techs., Inc. v. VGo Communs., Inc.,
7 751 F.3d 1327 (Fed. Cir. 2014) ............................................................................... 20
8
Koito Mfg. Co. v. Turn-Key-Tech., LLC,
9 381 F.3d 1142 (Fed. Cir. 2004) ............................................................................. 2, 3
10 KSR Int’l. Co. v. Teleflex Inc.,
11 550 U.S. 398 (2007)................................................................................................. 25
12 Leo Pharm. Prods., Ltd. v. Rea,
13 726 F.3d 1346 (Fed. Cir. 2013) ................................................................... 19, 20, 28
14 Medien Patent Verwaltung AG v. Warner Bros. Entm’t,

2014 U.S. Dist. LEXIS 12360 (S.D.N.Y. Jan. 29, 2014) ........................................ 27
15
16 Merck & Co. v. Teva Pharms. USA, Inc.,
347 F.3d 1367 (Fed. Cir. 2003) ................................................................................. 2
17
Mike’s Train House, Inc. v. Broadway Ltd. Imports, LLC,
18
708 F. Supp. 2d 527 (D. Md. 2010)......................................................................... 24
19
Miller v. Fed. Land Bank,
20 587 F.2d 415 (9th Cir. 1978) ................................................................................... 15
21
Moist Cold Refrigerator Co. v. Lou Johnson Co.,
22 249 F.2d 246 (9th Cir. 1957) ................................................................................... 32
23 Molski v. M.J. Cable, Inc.,
24 481 F.3d 724 (9th Cir. 2007) ................................................................................... 32
25 Monroe Truck Equip., Inc. v. Universal Truck Equip., Inc.,

120 F. Supp. 3d 884 (W.D. Wisc. 2015) ................................................................. 24
26
27
28 iv
A NEW TRIAL
1 In re Montgomery,
2 677 F.3d 1375 (Fed. Cir. 2012) ............................................................................... 18
3 Montgomery Ward & Co. v. Duncan,

311 U.S. 243 (1940)................................................................................................. 32
4
5 Net MoneyIN, Inc. v. VeriSign, Inc.,
545 F.3d 1359 (Fed. Cir. 2008) ................................................................................. 2
6
Oiness v. Walgreen Co.,
7 88 F.3d 1025 (Fed. Cir. 1996) ................................................................................. 33
8
Osram Sylvania, Inc. v. Am. Induction Techs., Inc.,
9 701 F.3d 698 (Fed. Cir. 2012) ................................................................................. 11
10 Panduit Corp. v. Dennison Mfg. Co.,
11 774 F.2d 1082 (Fed. Cir. 1985) ............................................................................... 28
12 Panduit Corp. v. Dennison Mfg. Co.,
13 810 F.2d 1561 (Fed. Cir. 1987) ............................................................................... 28
14 Pfizer, Inc. v. Apotex, Inc.,

480 F.3d 1348 (Fed. Cir. 2007) ............................................................................... 24
15
16 Reeves v. Sanderson Plumbing Prods.,
530 U.S. 133 (2000)................................................................................................... 1
17
Revolution Eyewear, Inc. v. Aspex Eyewear, Inc.,
18
563 F.3d 1358 (Fed. Cir. 2009) ............................................................................... 32
19
Rhone-Poulenc Agro, S.A. v. DeKalb Genetics Corp.,
20 272 F.3d 1335 (Fed. Cir. 2001) ......................................................................... 24, 25
21
Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors
22 USA, Inc.,
617 F.3d 1296 (Fed. Cir. 2010) ............................................................................... 29
23
24 United States v. Kellington,
217 F.3d 1084 (9th Cir. 2000) ................................................................................. 32
25
WBIP, LLC v. Kohler Co.,
26
829 F.3d 1317 (Fed. Cir. 2016) ............................................................................... 28
27
28 v
A NEW TRIAL
1 Weisgram v. Marley Co.,

2 528 U.S. 440 (2000)................................................................................................... 1
3 Zoltek Corp. v. United States,

815 F.3d 1302 (Fed. Cir. 2016) ............................................................................... 27
4
5 Statutes
6 35 U.S.C. § 102 ................................................................................................... 2, 31, 33

7 35 U.S.C. § 103 ................................................................................................. 19, 31, 33
8 35 U.S.C. § 282 ............................................................................................................... 2
9
Leahy-Smith America Invents Act, Pub. L. No. 112-29, sec. 19(d), § 299,
10 125 Stat. 284, 332-33 (2011) ..................................................................................... 2
11 Other Authorities
12
Fed. R. Civ. P. 50 ...................................................................................................... 1, 31
13
Fed. R. Civ. P. 56(e) ..................................................................................................... 29
14
15 Fed. R. Civ. P. 59 ................................................................................................ 1, 31, 36
16
17
18
19
20
21
22
23
24
25
26
27
28 vi
A NEW TRIAL
1
Pursuant to Dkt. Nos. 418 and 419, Plaintiff Columbia Sportswear North
2
America, Inc. (“Columbia”) submits the following memorandum in support of its
3
Renewed Motion for Judgment as a Matter of Law pursuant to Rule 50(b) and its
4
Motion for a New Trial pursuant to Rule 59.
5
RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW
6
I. LEGAL STANDARD FOR RENEWED JUDGMENT AS A MATTER OF
7 LAW
8 Rule 50 provides that judgment as a matter of law is appropriate if “a
9 reasonable jury would not have a legally sufficient evidentiary basis to find for the
10 party on that issue.” Fed. R. Civ. P. 50(a)(1); see also Reeves v. Sanderson Plumbing
11 Prods., 530 U.S. 133, 149 (2000). Under Rule 50, the court reviews whether
12 substantial evidence supports the jury verdict. See Hagen v. City of Eugene, 736 F.3d
13 1251, 1256 (9th Cir. 2013). A verdict is not supported by substantial evidence “when
14 the evidence, construed in the light most favorable to the nonmoving party, permits
15 only one reasonable conclusion, which is contrary to the jury’s verdict.” Id. Rule 50
16 thus “allows the trial court to remove cases or issues from the jury’s consideration
17 when the facts are sufficiently clear that the law requires a particular result.”
18 Weisgram v. Marley Co., 528 U.S. 440, 448 (2000) (internal quotes omitted).
19 Columbia raises two challenges to the jury verdict. First, there is insufficient
20 evidence to support the jury’s finding, by clear and convincing evidence, that claims 2
21 and 23 of the ’270 patent are anticipated by Fottinger. Second, there is insufficient
22 evidence to support the jury’s finding, by clear and convincing evidence, that claims 2
23 and 23 of the ’270 patent would have been obvious in view of Fottinger and any one
24 of the four asserted secondary references.
25
26
27 1
28 MOTION FOR JMOL AND MOTION FOR
A NEW TRIAL
1 II. THE VERDICTS OF INVALIDITY OF CLAIMS 2 AND 23 ARE NOT

2 SUPPORTED BY SUBSTANTIAL EVIDENCE.
A patent is presumed valid. 35 U.S.C. § 282. To find a patent invalid, a
3
challenger must overcome that presumption and prove invalidity by clear and
4
convincing evidence. Id. Here, Seirus failed to present evidence sufficient to
5
overcome that presumption, and the judgments of invalidity should be reversed.
6
7 Seirus Failed to Prove by Clear and Convincing Evidence that the
Fottinger Reference Describes Every Element in Both Claims 2 and
8 23 of the ’270 Patent.
9
1. Legal Standard for Anticipation
10
“A person shall be entitled to a patent unless . . . the invention was patented or
11
described in a printed publication . . . more than one year prior to the date of the
12
application for patent.” 35 U.S.C. § 102(b) (2011)1. A claim is invalid due to
13
“anticipation” only when a single reference discloses all of the elements and
14
limitations of the challenged claim. 35 U.S.C. § 102; Merck & Co. v. Teva Pharms.
15
USA, Inc., 347 F.3d 1367, 1372 (Fed. Cir. 2003). In order to establish anticipation,
16
Seirus must prove by clear and convincing evidence that the “four corners” of the
17
Fottinger reference describe “every element of the claimed invention.” Net MoneyIN,
18
Inc. v. VeriSign, Inc., 545 F.3d 1359, 1369 (Fed. Cir. 2008) (internal citations
19
omitted). Moreover, Fottinger “must not only disclose all elements of the claim within
20
the four corners of the document, but must also disclose those elements ‘arranged as
21
in the claim,’” id., and enable—teach a person of ordinary skill in the art how to
22
practice—the challenged claims.
23
Proving invalidity by anticipation is “an especially heavy burden.” Koito Mfg.
24
1
25 This case is governed by the version of 35 U.S.C. § 102 that was in effect prior to the
enactment of the Leahy-Smith America Invents Act, Pub. L. No. 112-29, sec. 19(d),
26 § 299, 125 Stat. 284, 332-33 (2011).
27 2
A NEW TRIAL
1
Co. v. Turn-Key-Tech., LLC, 381 F.3d 1142, 1151 (Fed. Cir. 2004). A high caliber of
2
evidence is necessary to overcome the statutory presumption of validity, and
3
“testimony is insufficient if it is merely conclusory.” Id. at 1152 (reversing district
4
court’s denial of JMOL that a patent was not anticipated or obvious) (citing Schumer
5
v. Lab. Comput. Sys., Inc., 308 F.3d 1304, 1315-16 (Fed. Cir. 2002)). Thus, “[t]o
6
accept confusing or generalized testimony as evidence of invalidity is improper” and
7
fails to carry the burden on invalidity at trial. Id. (quoting Schumer). As discussed in
8
detail below, the testimony proffered through Seirus’s expert, Dr. Block, fails to meet
9
this statutory requirement, because it was conclusory and lacked any basis in the
10
references at issue.
11
Fottinger was before the Patent Office (PTO) during the prosecution of the
12
Utility Patent. As explained at trial, Fottinger was one of 100 prior art references
13
considered by the PTO examiner. Fottinger was separately considered by the
14
examiner: it was separately identified to the examiner after Notices of Allowance had
15
issued, and the examiner issued a separate Notice of Allowance specifically relating to
16
Fottinger. [Trial Ex. 6, pp. 629 – 631; 1074:7 – 1078:22.] The examiner reviewed the
17
Fottinger reference—a two-page application for patent—and necessarily found that
18
Fottinger does not anticipate any asserted claim. [Id. 1076:15 – 1079:10.]
19
Where, as here, the PTO examiner has already considered the same reference
20
cited by a challenger, the clear and convincing evidentiary burden of proving
21
invalidity is greater. The PTO has necessarily found that the reference does not
22
anticipate, even where the examiner’s lower standard of rejection (by a preponderance
23
of the evidence) is applied. Am. Hoist & Derrick Co. v. Sowa & Sons, Inc., 725 F.2d
24
1350, 1359 (Fed. Cir. 1984) (stating same). As a result, Seirus has “the added burden
25
of overcoming the deference that is due to a qualified government agency presumed to
26
27 3
A NEW TRIAL
1
have properly done its job, which includes one or more examiners who are assumed to
2
have some expertise in interpreting the references and to be familiar from their work
3
with the level of skill in the art and whose duty it is to issue only valid patents.” Id.
4
Seirus did not satisfy this high burden.
5
2. Asserted Claims
6
At trial, Columbia asserted claims 2 and 23 of the ’270 Patent. Claim 2
7
depends from claim 1, and recites as follows, with critical limitations relevant to this
8
motion highlighted:
9
10 1. A heat management material adapted for use with body
gear, comprising:
11
12 a base material having a transfer property that is adapted to allow, impede,
and/or restrict passage of a natural element through the base material; and
13
14 a discontinuous array of discrete heat-directing elements, each
independently coupled to a first side of a base material, the heat directing
15 elements being positioned to direct heat in a desired direction, wherein a
16 surface area ratio of heat-directing elements to base material is from about
7:3 to about 3:7 and wherein the placement and spacing of the heat-directing
17 elements permits the base material to retain partial performance of the transfer
18 property.
19 2. The heat management material of claim 1, wherein the base material

20 comprises an innermost layer of the body gear having an innermost surface,
and wherein the heat-directing elements are positioned on the innermost
21 surface to direct heat towards the body of a body gear user.
22
23 Claim 23 is essentially the same, though drafted in independent claim format,
24 and with the words “discrete” and “independently” in the first highlighted clause
25 omitted.
26
27 4
A NEW TRIAL
1 3. Factual Background Regarding the Fottinger Reference

2 Fottinger is a published, prior art patent application that discloses, in general, a
3 fabric for garments that is comprised of a base material and plastic coating in which
4 are suspended particles of aluminum comprising 7 percent by weight of the coating.
5 [Trial Ex. 1040, 2:90-102.] Fottinger applies this plastic coating to cover between 5%
6 and 40% of the fabric. [Trial Ex. 1040, 2:130 – 3:1-5.]
7 To anticipate, the Fottinger reference must “explicitly or inherently” disclose
8 each and every element of the claimed invention. In re Gleave, 560 F.3d 1331, 1334
9 (Fed. Cir. 2009). As explained below, Seirus failed to put forth sufficient evidence
10 that the Fottinger reference discloses these claim limitations: (1) “[discrete] heat-
11 directing elements, each [independently] coupled” to a base fabric; where (2) the heat
12 directing elements are in a 30-70% coverage ratio; and (3) are positioned on “the
13 innermost surface” of “the innermost layer” of a garment.
15 Fottinger’s polymer mixture is a “heat-directing element”
under the Court’s claim construction.
16
The Court construed the term “heat directing elements” to mean “elements that
17
alter the direction of heat.” [Dkt. No. 106.] Therefore, in order to carry its burden at
18
trial, Seirus had to show that Fottinger discloses coverage of between 30% and 70% of
19
the surface of a base material with “elements that alter the direction of heat.”
20
The polymer coating of Fottinger—as distinguished from the seven percent
21
(7%) by weight of aluminum particles suspended within the polymer itself—is not a
22
heat-directing element. The plastic coating simply does not reflect or conduct heat.
23
Even Dr. Block testified that he was relying on the aluminum powder to be the heat-
24
directing elements, not the binder, which merely serves as an adhesive:
25
26
27 5
A NEW TRIAL
1 A. That is, you can bind something to something else with the way
2 you've glued. You can also bind something inside a capsule. You can
also bind someone with a rope. So in essence what Fottinger is using
3 the word "binder" here as, he is taking his aluminum powder, and
4 he is binding it in a vehicle that will allow him to put his elements
on the surface of a fabric.
5
[Trial Tr. 1620:14-19.]
6
The Fottinger reference itself confirms that the plastic coating does not reflect
7
heat. When Fottinger tested his invention, as described in the patent application, he
8
compared the performance of a fabric coated with the plastic coating mixed with
9
metal (aluminum) particles against the performance of the same fabric coated with the
10
same plastic coating but without the metal particles. [Trial Ex. 1040 at 2:106-128.]
11
Fottinger pointed to the temperature difference between the two samples in a
12
thermographic image as evidence that the aluminum particles accomplished a “heat
13
insulating effect” that the coating material without metal particles did not. [Id.]
14
Fottinger thus used the plastic coating without metal particles as an inert “control” in
15
the experiment, rather than using fabric that had not been coated at all, indicating to
16
one of ordinary skill in the art that the plastic coating itself does not direct heat. The
17
plastic coating serves to only hold the seven percent of heat-directing elements
18
suspended within the coating to a base fabric and has no other function. It is not an
19
element that alters the direction of heat.
20
Fottinger does not disclose the percentage of surface area of the base material
21
that is covered by the heat conducting metal particles themselves, if any. The jury
22
heard evidence that between 5 and 40% of Fottinger’s fabric was coated with the
23
plastic material, but it heard no evidence of the percentage of the fabric that was
24
covered by the metal particles because there is no such disclosure in Fottinger.
25
Instead, Fottinger teaches that only about 8% by weight of aluminum powder is added
26
27 6
A NEW TRIAL
1
to the plastic coating. [Trial Tr. 1964:12-15.] Seirus thus failed to offer any evidence
2
that Fottinger discloses coverage of between 30 and 70% of a base material by heat-
3
directing elements, and the verdict of anticipation should be reversed.
4
5 Fottinger discloses a discontinuous array of “[discrete] heat-
6 directing elements, each [independently] coupled to a first side
of a base material”
7
Because Fottinger’s heat-directing elements can only be the aluminum metal
8
particles and because those particles are suspended in a plastic coating that is not itself
9
a heat-directing element, they are not “discrete,” nor are they “each [independently]
10
coupled to”2 a first side of the base material. The character of Fottinger’s plastic
11
mixture, in which numerous aluminum particles are mixed and applied together, is
12
thus inconsistent with the structure of the Blackford inventions as defined in these
13
claim elements. [See generally Trial Tr. 1963:13 – 1966:24.] The jury’s verdict
14
should be reversed, because these additional claim elements are not disclosed by
15
Fottinger’s mixture.
16
Fottinger discloses a “surface area ratio of heat-directing
18 elements to base material [] from about 7:3 to about 3:7 . . .”
19 Fottinger does not disclose the 30-70% coverage limitation. Fottinger discloses
20 applying his coating (not a heat-directing element, as explained above) to cover
21 between 5% and 40% of the fabric. [Trial Ex. 1040, 1:54-60.] Fottinger explains that
22 his structure is optimally applied to between 10% and 20% of the base material. [Id.
23 1:105-107.]
24 Fottinger’s overlapping range is very different from and fails to anticipate the
25
26 2
Claim 2 contains the words “discrete” and “independently.” Claim 23 does not.
27 7
COLUMBIA’S MEMO ISO RENEWED
28 MOTION FOR JMOL AND MOTION FOR CASE NO.: 3:17-CV-01781-HZ
A NEW TRIAL
1
30% to 70% coverage limitation of the patent. In order to establish anticipation,
2
Seirus must prove that Fottinger describes the entire claimed range, not merely an
3
overlapping portion of the claimed range. Atofina v. Great Lakes Chem. Corp., 441
4
F.3d 991, 999 (Fed. Cir. 2006). Because no reasonable juror could conclude that
5
Fottinger discloses covering more than 40% of base material with his coating, not to
6
mention heat directing elements, judgment of no anticipation is required.
7
“When a patent claims a range, as in this case, that range is anticipated by a
8
prior art reference if the reference discloses a [specific] point within the range. If the
9
prior art discloses its own range, rather than a specific point, then the prior art is only
10
anticipatory if it describes the claimed range with sufficient specificity such that a
11
reasonable fact finder could conclude that there is no reasonable difference in how the
12
invention operates over the ranges.” Ineos USA LLC v. Berry Plastics Corp., 783 F.3d
13
865, 869 (Fed. Cir. 2015) (citations omitted).
14
At the summary judgment stage, the Court acknowledged this law, citing to
15
Atofina:
16
In Atofina, the Federal Circuit considered two overlapping
17 temperature ranges and concluded that a temperature range of 150–
18 350 degrees Celsius disclosed in a prior art reference did not
anticipate the 330–450 degrees Celsius range asserted in the patent.
19 441 F.3d at 993, 999. The Federal Circuit held that “although there is
20 a slight overlap, no reasonable fact finder could determine that this
overlap describes the entire claimed range with sufficient specificity
21 to anticipate this limitation of the claim. The ranges are different, not
22 the same.” Id. at 1000.
23 [Dkt. 159 at 13.]
24 The Court then denied Seirus’s motion for summary judgment that Fottinger
25 anticipated the claims because
26
27 8
A NEW TRIAL
1 Given that the ranges only overlap by 10%, Seirus has not
2 demonstrated by clear and convincing evidence that Fottinger
anticipates the Utility Patents’ 30–70% coverage limitation.
3
* * *
4
5 A trial may reveal a minimal difference between Fottinger’s purported
range of 5–40% coverage and the Utility Patent’s 30-70% coverage
6 range, ‘or that a person of ordinary skill would interpret’ a range of 5–
7 40% coverage as clearly disclosing 30–70% coverage.
Id. (citing Osram Sylvania, 701 F.3d at 706). Such evidence would be necessary to
8
meet Seirus’s burden of showing by clear and convincing evidence that Fottinger
9
effectively disclosed a 30-70% range.
10
But no such evidence was presented at trial. Instead, Seirus elicited legally
11
erroneous testimony from Dr. Block that Fottinger’s mere disclosure of 5-40%
12
coverage was sufficient to anticipate the claimed 30-70% range. Dr. Block told the
13
jury on direct that “Fottinger teaches us from 5 to 40. It’s my understanding that if
14
you have a portion of a range, you have disclosed the entire range.” [Trial Tr. 1563;7-
15
9. 3] That testimony was legally wrong, and contradicted the Court’s summary
16
judgment decision as well as all pertinent Federal Circuit precedent. It cannot sustain
17
a verdict of anticipation.
18
Seirus bore the burden of demonstrating that Fottinger “describes the claimed
19
range with sufficient specificity such that a reasonable fact finder could conclude that
20
there is no reasonable difference in how the invention operates over the ranges.”
21
22
3
23 Dr. Bock then told the jury that the coverage ratio used in Columbia’s commercial
product, Omni-Heat® Reflective, was between 32 and 37%, and therefore Fottinger’s
24
disclosure was “directly in the middle of Mr. Blackford’s claimed invention.” [Trial
25 Tr. 1563:17-19.] The commercial embodiment is not the claimed invention, as
Seirus’s counsel well knows, making this testimony certainly confusing if not
26
intentionally misleading.
27 9
A NEW TRIAL
1
Ineos, 783 F.3d at 869 (citing Atofina, 441 F.3d at 999 and ClearValue, Inc. v. Pearl
2
River Polymers, Inc., 668 F.3d 1340, 1345 (Fed. Cir. 2012)). But the explicit
3
teachings of Fottinger establish that there is a considerable difference between 5-40%
4
coverage and 30-70% coverage. Per both Fottinger and Dr. Block, more coverage
5
yields more impairment of the breathability of the base material. Fottinger teaches
6
that if coverage exceeds 40%, the base material’s moisture vapor transmission would
7
be unduly impaired. [Trial Ex. 1040, 1:84-93.] Likewise, Dr. Block testified that
8
placement of heat-directing elements on fabric reduces the fabric’s breathability and
9
moisture vapor permeability: “If you put more elements on the surface, you’re going
10
to get an enhancement in your heat reflection, you’re going to become stiffer, you’re
11
going to have less moisture permeability, you’re going to have a rougher, coarser
12
handle.” [Trial Tr. 1575:4-8.] Thus, both Fottinger’s disclosure and Dr. Block’s
13
testimony establish that the coverage ratio is critical to how the invention operates,
14
and that it operates differently at different points in the claimed range, and 5-40% is
15
very different from 30-70%.
16
Dr. Block told the jury that the claimed range was not “critical.” But his actual
17
testimony was irrelevant. Dr. Block testified that the claimed range was not “critical”
18
first because it is in the middle of a range of 0 to 100, second because the claim uses
19
the words “about,” and third because the transfer of moisture and air through fabric
20
have been “known not to be proportional,” and therefore Mr. Blackford’s
21
experimental results were not unexpected. [Id. 1564-65.]
22
None of this testimony establishes that there is no reasonable difference in how
23
the invention operates at 30% coverage or 40% coverage or 70% coverage. It does
24
not matter that the claimed range is equidistant between 1 and 100, or that the claim
25
uses the words “about,” because none of those things have anything to do with what
26
27 10
A NEW TRIAL
1
Fottinger discloses. Dr. Block himself testified that a heat management material
2
operates differently at 40% coverage than it does at 70% coverage, and that testimony
3
is fatal to Seirus’s anticipation argument. All evidence presented at trial established
4
that moisture vapor and air permeability were at the heart of the claimed invention,
5
that the claimed coverage ratio delivered warmth and preserved permeability and thus
6
was “of critical importance.” See Osram Sylvania, Inc. v. Am. Induction Techs., Inc.,
7
701 F.3d 698, 705-06 (Fed. Cir. 2012).4
8
Thus, no reasonable juror could conclude that in disclosing 5-40% coverage of
9
his coating, Fottinger disclosed covering 30 to 70% of the fabric with heat-directing
10
elements.
11
7. Fottinger does not disclose 36% coverage.
12
Aware that Fottinger does not disclose a coverage range of 30-70%, Seirus
13
attempted to remedy this critical deficiency at trial by offering new opinions from
14
Dr. Block that Fottinger’s experiment discloses 36% coverage, a single data point
15
within the claimed range. [Trial Tr. 1561, 1632:1-3.] But Fottinger does not actually
16
state that the experiment resulted in 36% coverage. Instead, Fottinger discloses only
17
that his plastic coating was printed “using a 25 mesh printing film, hole Ø 0.5 mm,
18
thickness 0.22 mm.” [Trial Ex. 1040, 2:103-105.]
19
Dr. Block never opined in his expert report or at any point prior to trial that
20
Fottinger disclosed a specific example having a 36% coverage. This new testimony
21
22 4
Though directly applicable in this case, the Court declined to instruct the jury on the
23 rule established by Atofina, Ineos, and Osram, as requested by Columbia. [See Dkt.
378.] Columbia requested instruction no. 33; Columbia Sup. Req, Instr. 9/27/17. The
24
jury thus had no guidance in dealing with this critical principle. Columbia requested a
25 correct instruction and excepted to the Court’s omission of an instruction on this rule.
9/28/17. That was error that requires a new trial. See Columbia’s motion for a new
26
trial, in the alternative to judgment as a matter of law.
27 11
A NEW TRIAL
1
about the alleged structure of the mesh and that it yielded 36% coverage was elicited
2
for the first time at trial, over Columbia’s objections, and should have been excluded.
3
[See Dkt. No. 335.] Specifically, Seirus prepared a slide purporting to show the
4
results of the mesh printing process in Fottinger’s disclosure. The graphic is shown
5
below:
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22 Notably, in the slide as presented to counsel in exchanges two days in advance
23 of Dr. Block’s testimony, Seirus declined to disclose the ultimate opinion that
24 Dr. Block would offer from the stand—his new opinion that the mesh provided 36%
25 coverage. Seirus knew that this new opinion was beyond the scope of Dr. Block’s
26 report and is not supported by the Fottinger disclosure. Instead, Seirus only provided
27 12
A NEW TRIAL
1
the graphic shown above.
2
Columbia objected to both the slide and all testimony related to the slide,
3
because (1) it contained undisclosed opinions, (2) it did not satisfy Daubert, and (3)
4
the demonstrative exhibit failed to satisfy the rules of evidence because it was
5
unauthenticated. [Dkt. No. 335.] The Court denied the motion, and allowed
6
Dr. Block to testify about the slide. Seirus used that as an entrée to introduce
7
Dr. Block’s new opinion that Fottinger disclosed 36% coverage.
8
Using the slide, Dr. Block testified the mesh disclosed by Fottinger yielded
9
circles of plastic that were .5mm in diameter. [Trial Tr. 1562.] In order to come up
10
with a coverage area that was between 30% and 40%, Dr. Block opined that the
11
circles should be placed 1mm apart. [Id.] From this, Dr. Block purported to calculate
12
36% coverage. [Id. 1632:1-3.] But Dr. Block got the math wrong, as any 9th grader
13
could show. Reduced to a repeatable unit cell, Dr. Block’s proffered mesh printing
14
would be represented by a 1mm x 1mm square divided into .5mm2 quadrants, with
15
one quadrant filled with a circular dot of plastic, as Dr. Block’s slide showed:
16
17
18
19
20
21
22
23
24
25
26
27 13
A NEW TRIAL
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25 Dr. Block admitted that this was a correct representation of Fottinger’s
26 disclosure on cross-examination. [Trial Tr. 1631:20-25 (“The results of Fottinger’s
27 14
A NEW TRIAL
1
work would have these dots that are .5 millimeters . . . they’d be spaced about 1
2
millimeter apart”); see also 1634:17-19; 1635:21-1636:13 (“There is a half-millimeter
3
space between the dots . . . Vertically and horizontally.”] But, of course, the quadrant
4
in which the circle sits itself is only 25% of the repeatable unit square. Dr. Block’s
5
opinion that the circle within one of the four quadrants fills 36% of the total square is
6
simply mathematically false, at even a cursory, visual level. The circle, being “0.5
7
mm” in diameter, represents less than 80% of the quadrant in which it sits—so only
8
19% of the area of the unit square. 5 The Court is required to take judicial notice of the
9
correct math. Miller v. Fed. Land Bank, 587 F.2d 415, 422 (9th Cir. 1978) (“This is a
10
matter of mathematics, of which the court could and should have taken judicial
11
notice.” (emphasis supplied)). Dr. Block’s opinion should have been excluded under
12
Daubert.
13
On extensive cross examination, Dr. Block conceded:
14
Q. . . . That -- this circle only takes up one-quarter of the 1 millimeter
15 square box that I drew, correct?
16
A. Let’s see. You have one half and one half and one half, one and a
17 half millimeters. So you have gone one half, one, and then you've
18 come down one, and now you're going to say, “Aha, this circle is one-
fourth of what I've drawn.”
19
Q. And one-fourth is 25 percent, isn’t it, Dr. Block?
20
21 A. Of what you've drawn, yes.
22 Q. And, in fact, Dr. Block, in fact, the circle doesn’t even take up all
25 percent, correct?
23
24 5
The square, with sides that are 1mm in each dimension, has an area of 1mm2. Each
25 quadrant has an area of .25mm2. The diameter of the circle is .5mm, so the radius is
.25mm. The area of a circle is πr2. So the circle is .19mm2, or 19% of the area of the
26
1mm2 repeatable unit square, and thus 19% of the area of the fabric.
27 15
A NEW TRIAL
1 A. How can it not -- well, yes, you're correct.

2 [Trial Tr. 1637:21 – 1638:7; see also 1638:14 – 1639:5.] Not surprisingly, Seirus’s
3 counsel declined any attempt to rehabilitate Dr. Block’s testimony on this point on
4 redirect. Dr. Block’s admitted mathematical error cannot sustain a jury verdict that
5 Fottinger discloses 36% coverage.
6 But there is an additional flaw in Dr. Block’s “analysis.” Dr. Block admitted
7 that he derived his 36% number not from Fottinger’s disclosure, but rather from
8 Blackford’s invention. As explained in Columbia’s motion to exclude this testimony,
9 there are numerous standards for meshes, which can represent numerous different hole
10 sizes and hole spacings. [Dkt. No. 335, p. 4.] “25 mesh printing film, hole Ø 0.5 mm,
11 thickness 0.22 mm” is not sufficient to disclose to anyone what the printed pattern
12 would look like. Among other things, it does not specify how far apart the holes are.
13 So, astoundingly, Dr. Block testified that he filled this gap by reading the teachings of
14 the ’270 patent into Fottinger:
15 Now, the question of, well, how do we know what a 25 mesh screen is
16 [] easily satisfied by any person who just considers the coverage. . .
17 Mr. Blackford has told us that if it’s less than 30 percent, these dots don’t work.
18 Blackford tells us that his dots go up to 40 percent. So his coverage has to be in
the 30 to 40 percent region. He’s not going to create with this experiment
19 something that doesn’t work, not for the purpose of this patent anyway.
20
So using these three numbers, we have the coverage is between 30 and 40
21 percent. We have the size of the hole was a half millimeter. That means that a
22 25 mesh screen is approximately 25 spots spaced about 1 millimeter apart.
23 [Trial Tr. 1562.]
24 In other words, Dr. Block explicitly testified that 36% coverage was the result
25 of combining Blackford’s disclosure with Fottinger’s disclosure—the very definition
26 of hindsight, and the opposite of anticipation.
27 16
A NEW TRIAL
1
This testimony never should have gone to the jury. It certainly cannot sustain a
2
legitimate verdict of anticipation.
3
4 Fottinger discloses a heat management material adapted for
5 use with body gear “wherein the base material comprises an
innermost layer of the body gear having an innermost surface,
6 and wherein the heat-directing elements are positioned on the
7 innermost surface to direct heat towards the body of a body
gear user.”
8
Claims 2 and 23 of the ’270 Patent require that the heat-directing elements be
9
positioned not just on the innermost layer of the garment, but they must be on the
10
innermost surface of that layer. Seirus agreed with this interpretation during claim
11
construction. [Dkt. No. 70, p. 30.] Yet, Seirus did not prove that Fottinger discloses
12
positioning heat-directing elements on the innermost surface of the innermost layer of
13
a garment.
14
In opining that Fottinger disclosed the ’270 patent’s “innermost surface”
15
limitation, Dr. Block relied on the following passage in Fottinger: “The products of
16
the invention are very suitable for use as interlinings and as lining fabrics for articles
17
of clothing. They may also be used as outer fabrics for articles of clothing, in which
18
case the coated face will be on the inside of the article.” [Trial Ex. 1040, 2:48-52
19
(emphasis added).]
20
But Dr. Block acknowledged that “an interlining will not be the innermost
21
surface.” [Trial Tr. 1625:20-21.] Dr. Block agreed that nothing in the disclosure of
22
an interlining discloses placement of the elements on the innermost surface of the
23
innermost layer of the garment. [Id. 1628:1-8.] Next, Dr. Block opined that Fottinger
24
states that his fabric can be used as a lining fabric, and offered his own opinion that
25
Fottinger’s polymer coating could be oriented either toward the user or away from
26
27 17
A NEW TRIAL
1
the user. [Id. 1625:25-1626:2 (emphasis supplied).] But to anticipate, Fottinger must
2
explicitly or inherently disclose the claim limitations, and Dr. Block admitted that the
3
disclosure of the use of the fabric as a lining fabric does not tell one of ordinary skill
4
how the fabric is to be oriented. [Id. 1626:3-12.]
5
Dr. Block also tried to support his opinion by reference to Fottinger’s disclosure
6
that coated fabric can “be used as outer fabrics for articles of clothing, in which case
7
the coated face will be on the inside of the article.” But nothing within the four
8
corners of the Fottinger reference teaches by clear and convincing evidence that the
9
“inside” here refers to the “innermost surface” of a garment. [Id. 1628:1-8.] The fact
10
that the fabric was “outer” makes clear that there is another layer, such that the
11
“inside” of the “outer fabric” is not the “innermost surface” of the garment. Dr. Block
12
testified that “a person of ordinary skill in the art has to conclude that Fottinger
13
understands that he wants his heat-directing elements to be facing toward the body.”
14
[Id. 1560:5-7 (emphasis supplied); see also 1686:5-6.] But simply facing toward the
15
body is not the claim limitation. The heat-directing elements must also be positioned
16
on the innermost surface of the garment. Being on the outermost fabric facing
17
inwards does not anticipate.
18
Fottinger is silent as to this limitation: the reference never states or even
19
suggests that the polymer coating should be on the innermost surface of a lining
20
fabric, facing the user. For there to be anticipation, the reference must disclose each
21
and every claim limitation, explicitly or inherently. Fottinger does not explicitly or
22
inherently disclose this claim element. Inherency cannot be established through
23
possibilities or probabilities. In order for a claim element to be inherently disclosed, it
24
must be “necessarily present.” In re Montgomery, 677 F.3d 1375, 1380 (Fed. Cir.
25
2012) (internal cites omitted). Because Fottinger never discloses coating the
26
27 18
A NEW TRIAL
1
innermost surface of the innermost layer of a garment, Fottinger does not anticipate.
2
The Jury Lacked Substantial Evidence to Conclude that Claims 2
3 and 23 of the ’270 Patent Would Have Been Obvious to a Person of
4 Ordinary Skill in the Field at the Time of the Claimed Invention.
5 1. Seirus’s obviousness case was wrong as a matter of law.
6 To be found obvious, the differences between a claimed invention and the prior
7 art must be “such that the subject matter as a whole would have been obvious at the
8 time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. §
9 103; Brown & Williamson Tobacco Corp. v. Philip Morris, Inc., 229 F.3d 1120, 1124
10 (Fed. Cir. 2000). In determining obviousness, courts apply the four “Graham
11 factors”: (1) the scope and content of the prior art; (2) the differences between the
12 claims and the prior art; (3) the level of ordinary skill in the art; and (4) objective
13 considerations of nonobviousness.” Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346,
14 1353 (Fed. Cir. 2013) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).
15 Obviousness is measured at the time of the invention. Both the Supreme Court
16 and the Federal Circuit have recognized “the danger of hindsight bias” in determining
17 whether an invention was obvious. In re Cyclobenzaprine Hydrochloride, 676 F.3d
18 1063, 1079 (Fed. Cir. 2012) (citing Graham, 383 U.S. at 36). “[K]nowing that the
19 inventor succeeded in making the patented invention, a fact finder might develop a
20 hunch that the claimed invention was obvious, and then construct a selective version
21 of the facts that confirms that hunch.” Id. Thus, Courts have cautioned that it is not
22 proper to use the patent as a “‘blueprint for piecing together the prior art to defeat
23 patentability—the essence of hindsight.’” In re Dembiczak, 175 F.3d 994, 999 (Fed.
24 Cir. 2006).
25 To avoid the possibility of hindsight, Courts have emphasized the need to
26 identify objective evidence in the prior art and articulated reasons why a person of
27 19
A NEW TRIAL
1
ordinary skill in the art would have been motivated—at the date of invention—to
2
combine the art in the way asserted. InTouch Techs., Inc. v. VGo Communs., Inc., 751
3
F.3d 1327, 1347 (Fed. Cir. 2014). Thus, “[a] reason for combining disparate prior art
4
references is a critical component of an obviousness analysis.” Id. at 1351 (citing
5
KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (emphasis supplied).
6
Dr. Block’s testimony on obviousness should be disregarded because he
7
testified to using the wrong standard for obviousness. Dr. Block testified that “To me
8
obvious would be Mr. Blackford would show somebody his invention, and that person
9
would say, ‘Yeah, that’s obvious. There’s nothing new there.” [Trial Tr. 1648:2-5.]
10
Dr. Block testified that that interpretation was “definitely the basis of my opinion.”
11
[Id., 1648:6-7.] Removing any doubt regarding the basis of his opinion, Dr. Block
12
repeated his defective standard on redirect: “A person of ordinary skill looks at the
13
patent and would that person recognize the patent as being obvious? The answer to
14
that is yes.” [Id. 1691:22-24.] Thus, Dr. Block actually testified to using hindsight to
15
determine obviousness. His testimony cannot support a verdict of obviousness.
16
Likewise, objective indicia of nonobviousness are not just a cumulative or
17
confirmatory part of the obviousness calculus but “constitute[] independent evidence
18
of nonobviousness.” Leo Pharms., 726 F.3d at 1358 (quoting Ortho-McNeil Pharm.,
19
Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008) (quotations omitted);
20
They play a critical role in the obviousness analysis and must be considered as “part
21
of the whole obviousness analysis, not just an afterthought.” Leo Pharms. at 1357.
22
“The objective considerations, when considered with the balance of the obviousness
23
evidence in the record, guard as a check against hindsight bias.” Cyclobenzaprine,
24
676 F.3d at 1079 (citing Graham, 383 U.S. at 36). “That which may be made clear
25
and thus ‘obvious’ to a court, with the invention fully diagrammed and aided, . . . may
26
27 20
A NEW TRIAL
1
have been a breakthrough of substantial dimension when first unveiled.” Interconnect
2
Planning Corp. v. Feil, 774 F.2d 1132, 1138 (Fed. Cir. 1985). Thus, in cases where
3
the prior art is alleged to cover all of the elements of the claim, the objective indicia
4
“may often be the most probative and cogent evidence in the record. It may often
5
establish that an invention appearing to have been obvious in light of the prior art was
6
not.” Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1052 (Fed. Cir. 2016) (en
7
banc).
8
For these reasons, the Federal Circuit requires “consider[ation] [of] the
9
objective evidence before reaching an obviousness determination.” Cyclobenzaprine,
10
676 F.3d at 1079 (emphasis supplied). One “must withhold judgment on . . .
11
obviousness . . . until it considers all relevant evidence, including that relating to the
12
objective considerations.” Id. “It is error to reach a conclusion of obviousness until
13
all those factors are considered.” Apple, 839 F.3d at 1048 (emphasis added).
14
But Dr. Block considered none of this evidence before completing his purported
15
analysis that was presented to the jury. When confronted with the factors during cross
16
examination, Dr. Block acknowledged the existence of evidence regarding objective
17
considerations (“Now, you understand, though, that Columbia has achieved
18
substantial commercial success for Omni-Heat, correct?” “Yes, I have, and I
19
congratulate them for it.”). [Trial Tr. 1653:8-10.] Nevertheless, Dr. Block testified
20
that this and all other evidence of objective indicia was irrelevant, and he did not
21
consider it (“To the extent they were relevant, I would have told you about it in the
22
report.”). [Trial Tr. 1652:19-23.] As a result, Seirus’s case is grounded in a flawed
23
interpretation of the law and an insufficient expert opinion. Applying the appropriate
24
legal standard, a jury cannot find obviousness.
25
26
27 21
A NEW TRIAL

2 Fottinger as the primary reference combined with any of the
four individual secondary references (Worley, Vaughn, Halley,
3 or Blauer) established a prima facie case of obviousness.
4 No reasonable fact finder could conclude that the claims of the ’270 patent are
5 obvious as a matter of law because Seirus has not proven a prima facie case of
6 obviousness. As explained on pages 7-19, above, Seirus failed to prove that Fottinger
7 discloses (1) “[discrete] heat-directing elements, each [independently] coupled” to a
8 base fabric; where (2) the heat-directing elements are in a 30-70% coverage ratio; and
9 (3) on “the innermost surface” of a garment, as required in claims 2 and 23.
10 Dr. Block opined that a person of ordinary skill in the art would combine
11 Fottinger with one of four other references (Vaughn, Halley, Blauer, and Worley) to
12 satisfy only the 30-70% coverage limitation. But Seirus provided no testimony
13 regarding combining the art to satisfy the other limitations in dispute. And the Court
14 had already found that these references do not disclose heat-directing elements at all,
15 let alone heat-directing elements that are coupled to a base fabric, or positioned on the
16 innermost surface of a garment. For example, Vaughn, Halley, and Blauer all relate to
17 outer shells. The Court heard extensive testimony about each of these references at
18 summary judgment, and issued a detailed opinion summarizing these
19 references. [Dkt. No. 159.] The Court held that Vaughn does not disclose heat‐
20 directing elements, because its abrasion‐resistant dots “do[] not anticipate a heat
21 directing element,” and “Vaughn does not disclose a heat directing element designed
22 to direct heat in a desired direction toward the user’s body.” [Dkt. No. 159, p.
23 14.] Likewise, the Court granted Columbia’s motion for summary judgment that
24 Halley and Blauer have nothing to do with heat, and therefore do not disclose heat-
25 directing elements. [Dkt. Nos. 108, p. 24 & 159, p. 9.] And the Court already held
26 that Worley does not “disclose[] a heat‐directing element which is positioned to reflect
27 22
A NEW TRIAL
1
heat in a desired direction back towards the body of the user.” [Dkt. No. 159, p.
2
17.] Nor did Seirus submit any evidence that Worley discloses “discrete heat-
3
directing elements, each independently coupled” to a base fabric at trial.
4
At the pretrial conference, the Court held that “If summary judgment was
5
granted by the Court in favor of Columbia, then the facts that I used to grant that
6
should not be disputed.” [Pretrial Conf. Tr. 4:21-5:13; Trial Tr. 3:2-5 (Seirus “would
7
not offer contrary evidence to those rulings.”); 855:16-856:20 (same applies to Halley
8
and Blauer, where Seirus did not oppose the motion).] Each of these prior fact
9
findings by this Court was necessary for the Court’s grants of summary judgment of
10
no anticipation to Columbia. Therefore, each was a fact that was established for trial
11
without dispute. The jury was not at liberty to question these facts, and could not
12
have drawn a contrary conclusion. Without these gap-filling limitations, Fottinger
13
with any of the prior art cannot establish a prima facie case of obviousness.
14
Seirus also failed to submit any evidence at trial that any of these four
15
references disclose placing heat-directing elements on the innermost surface of a
16
garment.
17
In light of the record, the nature of the art, and the onerous burden of proof that
18
must be met to establish obviousness, no rational jury could have found the claims of
19
the ’270 patent to be obvious based on Seirus’s prior art references. Because Seirus
20
has failed to satisfy a prima facie case of obviousness, judgment as a matter of law of
21
no obviousness should be granted.
22
23 there was a motivation to combine the art to arrive at the
24 patented invention or that one of ordinary skill in the art
would have expected such a combination to be successful.
25
Seirus failed to show why a person of ordinary skill in the art would have been
26
27 23
A NEW TRIAL
1
motivated to combine this art in the way that Seirus suggests. “[T]he burden falls on
2
the challenger of the patent to show by clear and convincing evidence that a skilled
3
artisan would have been motivated to combine the teachings of the prior art references
4
to achieve the claimed invention, and that the skilled artisan would have had a
5
reasonable expectation of success in doing so.” 6 Pfizer, Inc. v. Apotex, Inc., 480 F.3d
6
1348, 1361 (Fed. Cir. 2007); [See also generally, Dkt. No. 365.]
7
Expert testimony was necessary in this case to prove obviousness, because the
8
technical area is beyond the training and education of most jurors. In this context, a
9
party cannot meet its clear and convincing evidence burden of showing obviousness
10
without a qualified expert opinion. Rhone-Poulenc Agro, S.A. v. DeKalb Genetics
11
Corp., 272 F.3d 1335, 1358 (Fed. Cir. 2001) (cert. granted, judgment vacated and
12
remanded on other grounds, 538 U.S. 974 (2003) and opinion modified and reinstated,
13
345 F.3d 1366 (Fed. Cir. 2003); see also Mike’s Train House, Inc. v. Broadway Ltd.
14
Imports, LLC, 708 F. Supp. 2d 527, 541 (D. Md. 2010) (“[t]oy train design is not
15
within the ‘common sense’ capacity of this court,” and so defendant “failed to bear its
16
evidentiary burden of providing expert testimony to establish the competence of a
17
person of ordinary skill in the art, explain the prior art references, and establish the
18
scope of the claims at issue; its attorney’s argument is insufficient.”); Monroe Truck
19
Equip., Inc. v. Universal Truck Equip., Inc., 120 F. Supp. 3d 884 (W.D. Wisc. 2015).
20
The parties agree that this principle applies here. [See Dkt. 192, p. 5 n.2, citing Dkt.
21
Nos. 108, pp. 43-46, 119.]
22
The expert opinion must be legally valid, and “some evidentiary support must
23
24 6
Columbia requested a jury instruction on this point, which the Court declined to
25 give. As discussed further below, the Court’s failure to instruct the jury that
obviousness requires the identification of a motivation to combine the art necessitates
26
a new trial to the extent JMOL of no invalidity is not granted.
27 24
A NEW TRIAL
1
be offered beyond an expert's conclusory opinion.” Rhone-Poulenc Agro, S.A., 272
2
F.3d at 1358; see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, (2007)
3
(“[T]here must be some articulated reasoning with some rational underpinning to
4
support the legal conclusion of obviousness”); Brooke Grp. v. Brown & Williamson
5
Tobacco Corp., 509 U.S. 209, 242 (1993) (finding that expert testimony was not
6
sufficient to defeat JMOL because expert’s opinion was not supported by sufficient
7
facts to support jury verdict).
8
Thus, in order to carry its burden, Seirus needed to present qualified, well-
9
supported expert testimony explaining why one of ordinary skill in the art would have
10
been motivated to combine the references and would have reasonably expected the
11
combination to yield success.
12
Instead, when asked “why would one of ordinary skill have combined Halley
13
with Fottinger?” Dr. Block responded “Well, Fottinger renders obvious, and also
14
anticipates Blackford. Halley is backing up, supporting Fottinger. . . He’s giving us
15
the 30- to 70-percent range for elements. That’s a major portion of it.” [Trial Tr.
16
1576:9-15.] Again, when asked “why one of ordinary skill would combine Vaughn
17
with Fottinger,” Dr. Block responded: “You have Fottinger with anticipation and
18
obviousness. And now you add to that Vaughn with the definite 30 to 70, rendering
19
Blackford obvious.” [Id. 1577:5-9.]
20
Fottinger teaches that no more than 40% of a base material should be covered,
21
as more coverage than that makes the material too stiff and unduly impairs its
22
moisture wicking properties. Preferably coverage should be limited to 10 to 20
23
percent. Fottinger was Seirus’s primary prior art reference, and the only reference that
24
disclosed heat-directing elements. Seirus contended that it would have been obvious
25
to one of ordinary skill in the art to modify Fottinger to increase the amount of base
26
27 25
A NEW TRIAL
1
material covered in heat-directing elements. But Seirus never explained why one of
2
ordinary skill in the art would have expected such a combination to be successful in
3
light of Fottinger’s express teaching that increasing coverage would come with an
4
unacceptable loss of permeability and drape.
5
Dr. Block’s testimony underscored Fottinger’s teachings: “If you put more
6
elements on the surface, you’re going to get an enhancement in your heat reflection,
7
you’re going to become stiffer, you’re going to have less moisture permeability,
8
you’re going to have a rougher, coarser handle.” [Trial Tr. 1575:4-8.] If fewer
9
elements are placed on the surface of the fabric, “you might have less heat reflection,
10
but you will have better breathability, greater air permeability, better moisture vapor
11
transport.” [Id. 1575:10-12.] Dr. Block concludes, “Fottinger is telling us we need a
12
balance.” [Id. 1557:7-8.] Fottinger explicitly taught that this “balance” was available
13
at between 5 and 40 percent coverage, and was unavailable above 40% coverage. Per
14
the teachings of Fottinger, as reinforced by the testimony of Dr. Block, covering more
15
than 40% of the fabric resulted in an unacceptable loss of moisture permeability and
16
acceptable drape. One of ordinary skill in the art would not have been motivated to
17
modify Fottinger in a way that Fottinger taught would not yield success.
18
The only reference in the record teaching that between 30 and 70 percent of a
19
base material could be covered with heat-directing elements without unacceptable loss
20
of moisture vapor and air permeability was the ’270 patent. Those of ordinary skill in
21
the art following Fottinger would have believed that coverage between 40 and 70
22
percent came with an unacceptable loss of moisture permeability until Mr. Blackford
23
proved that it did not. Ultimately, the only reason to impose that coverage ratio on
24
Fottinger was the use of the patent as a “roadmap,” which is “to fall victim to the
25
insidious effect of a hindsight syndrome wherein that which only the inventor taught
26
27 26
A NEW TRIAL
1
is used against its teacher.” Zoltek Corp. v. United States, 815 F.3d 1302, 1313 (Fed.
2
Cir. 2016). In order to guard against the use of hindsight, Seirus must identify some
3
reason why one of ordinary skill in the art would have been motivated to modify
4
Fottinger in a way that Fottinger itself taught would not work. Dr. Block, in contrast,
5
expressly cited the ’270 patent when asked to provide a motivation to combine: “The
6
motivation to combine tells us that the coverage impacts the permeability and
7
moisture vapor transfer. Those are the two most important things that Mr. Blackford
8
had discussed.” [Trial Tr. 1579:17-21.] A verdict based on such evidence is
9
hopelessly flawed. See Graham v. John Deere Co., 383 U.S. at 36 (warning against a
10
temptation to read into the prior art the teachings of the invention at issue.).
11
Dr. Block provided no testimony regarding why one of ordinary skill in the art
12
would be motivated to combine Fottinger with a reference that teaches the opposite,
13
particularly for references that have nothing to do with heat direction (as determined
14
by the Court’s claim construction order). Columbia raised this issue during summary
15
judgment briefing, and filed a Daubert motion to this effect. The Court denied
16
Columbia’s Daubert motion, but found that “While Dr. Block’s testimony provides
17
some evidence of motivation, it does not reach the threshold requirement of clear and
18
convincing evidence.” [Dkt. No. 159, p. 21.] At trial, Dr. Block provided
19
substantially less analysis than he did in his inadequate report, and Seirus failed to
20
submit any additional evidence to reach that threshold. Following its earlier decision,
21
the Court should grant judgment of no obviousness as a matter of law. See Medien
22
Patent Verwaltung AG v. Warner Bros. Entm’t, 2014 U.S. Dist. LEXIS 12360, *44
23
(S.D.N.Y. Jan. 29, 2014) (granting summary judgment of nonobviousness where
24
defendant’s expert report, despite “tak[ing] pains to [argue] . . . why a person skilled
25
in the art might have been led to combine or modify references . . . offers nothing
26
27 27
A NEW TRIAL
1
more than conclusory statements to fill the gap between the prior art and the patented
2
invention”).
3
4. Dr. Block failed to consider objective evidence of
4 nonobviousness in formulating his obviousness opinion.
5 As stated above, the objective considerations of nonobviousness reflect real-
6 world occurrences such as commercial success, long-felt but unresolved need in the
7 industry, industry praise for the invention, numerous requests for licenses after the
8 product launched, copying of the patented inventions, skepticism of experts, and
9 failure of others. See generally, Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561,
10 1569 (Fed. Cir. 1987).
11 The Federal Circuit has articulated the reasons why each of these categories of
12 evidence is pertinent to an obviousness analysis. See, e.g., WBIP, LLC v. Kohler Co.,
13 829 F.3d 1317, 1334, 1336, 1337 (Fed. Cir. 2016); Asetek Danmark A/S v. CMI
14 United States, Inc., 100 F. Supp. 3d 871, 885-86 (N.D. Cal. 2015) (“Licensing of the
15 patented invention by others in the industry also supports a finding of non-
16 obviousness, as it tends to show industry recognition.”); Leo Pharms., 726 F.3d at
17 1359; Panduit Corp. v. Dennison Mfg. Co., 774 F.2d 1082, 1099 (Fed. Cir. 1985).
18 Using the correct legal standard, all of the objective evidence of
19 nonobviousness must be considered along with the prior art in determining whether
20 the asserted claims are obvious. In Apple, an en banc Federal Circuit reiterated that
21 “It is error to reach a conclusion of obviousness until all those factors are
22 considered.” Apple, 839 F.3d at 1048.
23 Dr. Block reached his conclusion of obviousness without considering any of the
24 abundant and well-documented evidence of objective indicia of nonobviousness.
25 [Dkt. No. 159, p. 26.] His expert report cited his awareness that he was required to
26 consider this evidence. But his report is bereft of any discussion of these factors,
27 28
A NEW TRIAL
1
including Seirus’s copying, Columbia’s or Seirus’s commercial success, the well-
2
established industry praise, and the other evidence that was of record during
3
discovery. [See generally Dkt. No. 113, pp. 3-10.] Seirus’s approach, seeking an
4
opinion on obviousness prior to considering the objective evidence, is “premature”
5
and “jurisprudentially inappropriate.” Cyclobenzaprine, 676 F.3d at 1075-1076
6
(quoting Stratoflex, 713 F.2d at 1538-39); Transocean Offshore Deepwater Drilling,
7
Inc. v. Maersk Contractors USA, Inc., 617 F.3d 1296 (Fed. Cir. 2010).
8
Columbia moved to exclude Dr. Block’s opinion for these reasons. In response,
9
Seirus submitted a supplemental declaration of Dr. Block, in which he provided the
10
following cursory opinion:
11
156. I reviewed Dr. Cole’s discussion of such alleged secondary
12 considerations in her Rebuttal Report concerning Validity, dated
13 August 9, 2016. I disagree with several of her observations. For
example, Dr. Cole alleges that there was a “failure of others to solve
14 the problem” and “long felt but unresolved needs,” but as stated
15 herein, that is not the case as many others identified the alleged
problem and came up with the alleged inventive solution. Dr. Cole
16 also states without any support that the alleged invention was met
17 with skepticism within Columbia. Further, several of the licenses
appear to be litigation-driven and do not support any claimed nexus to
18 the alleged invention.
19
157. I understand from counsel that the “nexus” must be tied to the
20 novel aspects of the invention, and given the state of the prior art, I do
21 not believe that any such “nexus” exists and I do not believe that Dr.
Cole’s cited considerations “tip the scale of patentability.”
22
[Dkt. No. 111.] Notwithstanding that this declaration was submitted after the
23
conclusion of discovery, the Court allowed Seirus to supplement with this evidence
24
pursuant to Rule 56(e), and denied Columbia’s Daubert motion based on this new
25
evidence. [Dkt. No. 159, p. 27.]
26
27 29
A NEW TRIAL
1
At trial, however, Dr. Block testified again that he, in fact, did not consider any
2
of this evidence en route to his obviousness opinions. Indeed, and in contrast to his
3
declaration upon which the Court relied in denying Columbia’s Daubert motion,
4
Dr. Block expressly testified that he did not use the Graham factors in determining
5
obviousness:
6
Q. And these are all factors that the jury is going to have to assess in
7 terms of figuring out whether the patented invention was obvious or
8 not, right?
9 A. That is correct.
10 Q. And, Dr. Block, in your 1500 pages of report, you didn't talk about
11 any of this.
12 A. To the extent that they were relevant, I would have told you about
13 it in the report. If you would like me to tell you why they are not
relevant, I'd be happy to do so.
14
* * *
15
16 Q. Okay. But in your report, you didn’t mention any of this, right?
17 A. That is correct. . . . As I say, it wasn’t relevant.

18 [Trial Tr. 1652:15 - 1653:7 (emphasis supplied).] Dr. Block also testified that he did
19 not consider any of this evidence because Seirus’s attorneys had withheld it from him,
20 and Dr. Block, knowing he was supposed to consider this evidence, failed to ask for
21 any of it. [Id. 1658-1660.] Thus, at trial, Dr. Block failed to assert any of the
22 supplemented opinions regarding objective indicia of nonobviousness, and instead, he
23 solely relied upon his initial deficient opinions. Perhaps Dr. Block declined to
24 corroborate his supplemental declaration because it was false. For example, contrary
25 to the sworn statements in his supplemental declaration, none of the licenses of record
26 were litigation-driven, and Columbia in fact provided support through
27 30
A NEW TRIAL
1
Mr. Blackford’s testimony that the invention was met with skepticism within
2
Columbia. [Cf. Dkt. No. 111 ¶ 156; Trial Tr. 280:13-281:2.]
3
Whatever the reason, Dr. Block’s failure to consider evidence of secondary
4
indicia of nonobviousness rendered his opinion fatally deficient for all of the reasons
5
articulated in Columbia’s Daubert motion. Dr. Block testified about his conclusion of
6
obviousness without following the legal requirements to do so. This deficiency
7
deprived the jury of sufficient evidence to make an obviousness determination. And
8
without a sufficient expert opinion to properly analyze the patents, judgment as a
9
matter of law should be granted to Columbia.
10
For the reasons stated above, Columbia respectfully requests that this Court
11
enter judgment as a matter of law in favor of Columbia pursuant to Fed. R. Civ. P.
12
50(b) on Seirus’s claims and defenses of validity pursuant to both 35 U.S.C. § 102 and
13
§ 103.
14
A NEW TRIAL ON VALIDITY IS WARRANTED
15
As discussed below, the Court failed to instruct the jury on the critical
16
evaluation of prior art overlapping ranges and the requirement of identifying a
17
motivation to combine the prior art. The Court also allowed over Columbia’s repeated
18
objections Dr. Block’s incompetent opinion on obviousness and objectively false
19
testimony disclosed for the first time during trial that Fottinger described a specific
20
example of 36% coverage. These errors justify setting aside the jury’s invalidity
21
verdicts.
22
I. THE RULE 59 STANDARDS
23
“Upon the Rule 59 motion of the party against whom a verdict has been
24
returned, the district court has ‘the duty . . . to weigh the evidence as [the court] saw it,
25
and to set aside the verdict of the jury, even though supported by substantial evidence,
26
27 31
A NEW TRIAL
1
where, in [the court’s] conscientious opinion, the verdict is contrary to the clear
2
weight of the evidence.’” Molski v. M.J. Cable, Inc., 481 F.3d 724, 729 (9th Cir.
3
2007) (quoting Murphy v. City of Long Beach, 914 F.2d 183, 187 (9th Cir. 1990)). 7
4
Failure to instruct the jury on an important issue and the admission of material,
5
incompetent evidence are well-recognized errors each justifying a new trial.
6
Montgomery Ward & Co. v. Duncan, 311 U.S. 243, 251 (1940). In determining
7
whether to grant a new trial, the district court “need not view the evidence in the light
8
most favorable to the verdict; it may weigh the evidence and in so doing evaluate for
9
itself the credibility of the witnesses.” United States v. Kellington, 217 F.3d 1084,
10
1095 (9th Cir. 2000). These rules, designed to ensure a fair trial, apply with greater
11
force in the complex field of intellectual property rights where “the need for proper
12
guidance is accentuated and heightened . . . .” Bateman v. Mnemonics, Inc., 79 F.3d
13
1532, 1543-44 (11th Cir. 1996).
14
“Jury instructions must be formulated so that they fairly and adequately cover
15
the issues presented, correctly state the law, and are not misleading.” See Bixby v.
16
KBR, Inc., 2013 U.S. Dist. LEXIS 60390, at *69 (D. Or. April 26, 2013) citing
17
Gilbrook v. City of Westminster, 177 F.3d 839, 860 (9th Cir. 1999). Jury instructions
18
are erroneous if they mislead the jury as to the proper legal standard or do not
19
adequately inform the jury of the law. Bateman v. Mnemonics, Inc., supra at 1543-44.
20
Similarly, a new trial should be granted where the court determines that the jury’s
21
verdict is contrary to the clear weight of evidence, or determines that there is “no
22
substantial evidence to support recovery by the party against whom [the verdict] is
23
directed.” Moist Cold Refrigerator Co. v. Lou Johnson Co., 249 F.2d 246, 251 (9th
24
7
25 The Federal Circuit reviews denial of post-trial motions for JMOL and new trial
under regional circuit law. Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d
26
1358, 1370 (Fed. Cir. 2009).
27 32
A NEW TRIAL
1
Cir. 1957)(citing Gunning v. Cooley, 281 U.S. 90 (1930). This includes the
2
circumstance here where the admission of an incompetent and critical expert opinion
3
renders the jury’s findings speculation. See, e.g., Oiness v. Walgreen Co., 88 F.3d
4
1025, 1031 (Fed. Cir. 1996) (remanding because due to party’s failure of proof, jury’s
5
opinion was based on speculation).
6
Each of the grounds for a new trial is well established on the record here.
7
II. FAILURE TO INSTRUCT THE JURY ON CRITICAL STEPS IN THE
8 VALIDITY ANALYSES REQUIRE A NEW TRIAL ON BOTH
9 SECTION 102 AND 103 CLAIMS AND DEFENSES.
10 Failure to Instruct the Jury on the Atofina Standards for Evaluating
11 a Prior Art Teaching of Alleged Overlapping Ranges Was Clear
Error that Vitiates the Jury Verdicts on Validity.
12
A principal dispute in this litigation is the correct evaluation of the disclosures
13
of the Fottinger reference, particularly the alleged overlapping range. For the reasons
14
explained above on pages 7-11, Atofina and its progeny set forth specific legal
15
standards and conditions that must be met for a fact finder to determine whether an
16
alleged prior art range anticipates or discloses a later, different claimed range. The
17
critical evaluation of the prior art—the determination of what the prior art teaches—is
18
squarely the issue presented in this case for every one of Seirus’s alleged §102 and
19
§103 claims and defenses. The Court recognized the importance of this fact
20
determination in the Court’s detailed rulings on the parties’ cross motions for
21
summary judgment, yet declined to give the jury any instruction on this key issue, a
22
fact determination clearly beyond the ken of any juror, even after Seirus compounded
23
the error by having its expert give testimony that directly contradicts controlling
24
precedent. The Court refused to give either of Columbia’s requested, correct
25
26
27 33
A NEW TRIAL
1
instructions to implement Atofina.8 A new trial is compelled, as the jury could have
2
no ability to evaluate the Fottinger disclosure without correct instruction on the
3
Atofina standards.
4
Failure to Instruct the Jury on the Requirement to Identify a
5 Motivation to Combine the Prior Art Vitiates the Jury Verdicts on
6 Validity.
7 As explained above on pages 24-28 and in Dkt. No. 365, Seirus bore the burden
8 of proving, by clear and convincing evidence, that a person of ordinary skill in the art
9 would have had a motivation—an articulated reason supported by the record
10 evidence—to combine the art in the ways suggested by Dr. Block, and a reasonable
11 expectation that such a combination would be successful. This key issue was the
12 subject of both a Daubert and a summary judgment motion in this case. [Dkt. Nos.
13 108, 113, 159.] Columbia requested a jury instruction on this key issue, which
14 accurately stated the law, as Columbia explained in separate briefing before the Court.
15 [See Dt. No. 365; see also Dkt. 228, Req. Instr. No. 37. The Court declined to give
16 this—or any—instruction to the jury on this critical fact determination. A new trial is
17 required, as the jury was not informed of this legal requirement underlying its verdict
18 that the patent was obvious.
19
20
21
22
8
23 Columbia requested a correct Atofina instruction. Dkt 228, p. 74, (Requested no. 33)
that indisputably referenced the parties’ fact contentions here. The Court refused this
24
instruction. Columbia submitted a second, correct instruction, deleting accurate
25 guidance to which the Court objected. See, Declaration of David W. Axelrod, Exhibit
1; [Trial Tr. 2208-09.] The Court declined to give Columbia’s second requested
26
instruction. [Id. 2203, 2208.]
27 34
A NEW TRIAL
1 III. THE ADMISSION OF INCOMPETENT OPINION TESTIMONY FROM

2 DR. BLOCK WAS PREJUDICIAL AND LEAVES THE JURY’S
VERDICTS ON ANTICIPATION AND OBVIOUSNESS BASED ON
3 SPECULATION.
4 Failure to Exclude Dr. Block’s New Opinion Testimony—Disclosed
5 for the First Time From the Stand—that Fottinger Disclosed a
Specific Example of 36% Coverage Vitiates the Jury Verdicts on
6 Validity.
7 As explained on pages 11-17, above, Columbia objected and moved to exclude
8 Dr. Block’s new, unfounded, factually and legally erroneous testimony that Fottinger
9 discloses a specific embodiment having 36% coverage. The Court declined to exclude
10 this highly prejudicial testimony. Dr. Block’s opinions cannot sustain a jury verdict,
11 and, to the extent JMOL is not granted, a new trial is required.
12
Dr. Block’s Obviousness Opinions Failed to Apply the Correct Legal
13 Standard, are Thus Incompetent, and Cannot Sustain the Jury’s
14 Verdicts.
The Court allowed incompetent testimony from Dr. Block concerning
15
obviousness, permitting him to testify to a legal opinion on obviousness that fails
16
without question to meet the legal standards for such opinion. See, supra, pp. 19-21 &
17
28-31. Columbia repeatedly moved to exclude this unsupported opinion in
18
Columbia’s Daubert and Summary Judgment motions. The Court denied the former
19
motion and allowed Seirus to submit a supplemental declaration and opinion, though
20
the supplemental declaration does not cure or even address the defects. Columbia
21
repeated its objections in motions in limine before and at trial. At trial, Seirus failed
22
to introduce the opinions and testimony submitted with Dr. Block’s supplemental
23
declaration, and Dr. Block instead admitted that he applied the wrong legal standard,
24
rendering his opinion testimony faulty for the reasons originally articulated above and
25
in Columbia’s Daubert motion. [Dkt. Nos. 113, 124.] Dr. Block’s opinions cannot
26
27 35
A NEW TRIAL
1
sustain a jury verdict, and, to the extent JMOL is not granted, a new trial is required.
2
For the reasons stated above, Columbia respectfully requests that, in the
3
alternative to judgment as a matter of law, this Court grant Columbia a new trial
4
pursuant to Fed. R. Civ. P. 59.
5
6 Dated: January 5, 2018
8
9 By: s/ David W. Axelrod
David R. Boyajian
10 E-mail: dboyajian@schwabe.com
David W. Axelrod, pro hac vice
11 E-mail: daxelrod@schwabe.com
Brenna K. Legaard, pro hac vice
12 E-mail: blegaard@schwabe.com
Nicholas F. Aldrich, Jr., pro hac vice
13 E-mail: naldrich@schwabe.com
15
16
17
18
19
20
21
22
23
24
25
26
27 36
A NEW TRIAL
1
CERTIFICATE OF SERVICE
2
I hereby certify that on January 5, 2018, I served the foregoing document
3
on the following counsel of record for Defendant Seirus Innovative
4
Accessories, Inc.:
5
6 By electronic service via the Renée E. Rothauge
Court’s CM/ECF System ReneeRothauge@markowitzherbold.com
7 Markowitz Herbold PC
8 Suite 3000, Pacwest Center
1211 SW Fifth Avenue
9 Portland, OR 97204-3730
10
Christopher S. Marchese
11 marchese@fr.com
12 Garrett K. Sakimae
sakimae@fr.com
13 Michael A. Amon
14 amon@fr.com
Seth M. Sproul
15 sproul@fr.com
16 Tucker N. Terhufen
terhufen@fr.com
17 Oliver J. Richards
18 orichards@fr.com
Fish & Richardson PC
19 12390 El Camino Real
20 San Diego, CA 92130
21
22 by delivering to them a true and correct copy thereof, certified by me as such.
23
s/ David W. Axelrod
24 David W. Axelrod
25 Email: daxelrod@schwabe.com
26
27
28
1 – CERTIFICATE OF SERVICE
PDX\106477\192966\DWA\22101646.7
Case 3:17-cv-01781-HZ Document 429-1 Filed 01/05/18 PageID.18582 Page 1 of 3
1 DAVID R. BOYAJIAN (SBN #257825)

2 DAVID W. AXELROD (OSB #750231)
admitted pro hac vice
3 BRENNA K. LEGAARD (OSB #001658),
NICHOLAS F. ALDRICH, JR. (OSB #160306),
1211 SW 5th Ave., Suite 1900
7 Portland, OR 97204
8 Telephone: 503.222.9981
E-mail: dboyajian@schwabe.com
9 daxelrod@schwabe.com
blegaard@schwabe.com
10 naldrich@schwabe.com

12
13
UNITED STATES DISTRICT COURT
14
FOR THE SOUTHERN DISTRICT OF CALIFORNIA
15
SAN DIEGO DIVISION
16
COLUMBIA SPORTSWEAR NORTH Case No.: 3:17-cv-01781-HZ
17 AMERICA, INC., an Oregon corporation,
DECLARATION OF DAVID W.
18 Plaintiff, AXELROD IN SUPPORT OF
COLUMBIA’S MEMORANDUM
19 v. IN SUPPORT OF RENEWED
MOTION FOR JUDGMENT AS
20 SEIRUS INNOVATIVE ACCESSORIES, A MATTER OF LAW AND
INC., a Utah corporation, MOTION FOR A NEW TRIAL
21
Defendant. Judge: Marco A. Hernandez
22
Date Action Filed: January 12, 2015
23 Trial Date: September 18, 2017
24
25
I, David W. Axelrod, do hereby declare and say:
26
1. I am an attorney with the firm of Schwabe, Williamson & Wyatt, counsel
27
for Columbia Sportswear North America, Inc. (“Columbia”). I have personal
28
AXELROD DECLARATION ISO CASE NO.: 3:17-CV-01781-HZ
COLUMBIA’S MEMO ISO JMOL AND
MOTION FOR A NEW TRIAL
1 knowledge of the facts recited below and if called as a witness, I could and would
2 competently testify as stated herein. I make this declaration in support of Columbia’s
3 Memorandum in Support of Renewed Motion for Judgment as a Matter of Law and
4 Motion for New Trial.
5 2. Attached as Exhibit 1 is a true and correct copy of an email sent to Judge
6 Hernandez and Defendant’s counsel on or about 6 a.m. on September 28, for
7 consideration at the parties’ conference with the Court on jury instructions that
8 morning.
9 3. Exhibit 1 was not included with the Court’s PACER record.
10 4. Exhibit 1 was submitted in response to the Court’s ruling at the
11 unrecorded meeting of the Court and parties on September 27, at which time the Court
12 advised the parties that the Court would not give Columbia’s requested jury
13 instruction No. 33 (see, Dkt. 228, pp. 66-67).
14 5. Exhibit 1 is the request that is referenced by the Court at Trial Tr.
15 2203:10-21.
16 I HEREBY DECLARE THAT THE ABOVE STATEMENTS ARE TRUE TO
17 THE BEST OF MY KNOWLEDGE AND BELIEF, AND THAT I UNDERSTAND
18 THAT THIS DECLARATION IS MADE FOR USE AS EVIDENCE IN COURT
19 AND IS SUBJECT TO PENALTY FOR PERJURY.
20 Dated this 5th day of January, 2018.
21
22 s/ David W. Axelrod
23 David W. Axelrod
24
25
26
27
28 2
AXELROD DECLARATION ISO CASE NO.: 3:17-CV-01781-HZ
COLUMBIA’S MEMO ISO JMOL AND
MOTION FOR A NEW TRIAL
1 CERTIFICATE OF SERVICE
2 I hereby certify that on January 5, 2018, I served the foregoing document on the
3 following counsel of record for Defendant Seirus Innovative Accessories, Inc.:
4 By electronic service via the Renée E. Rothauge
5 Court’s CM/ECF System ReneeRothauge@markowitzherbold.com
Markowitz Herbold PC
6 Suite 3000, Pacwest Center
7 1211 SW Fifth Avenue
Portland, OR 97204-3730
8
9 Christopher S. Marchese
marchese@fr.com
10 Garrett K. Sakimae
11 sakimae@fr.com
Michael A. Amon
12 amon@fr.com
13 Seth M. Sproul
sproul@fr.com
14 Tucker N. Terhufen
15 terhufen@fr.com
Oliver J. Richards
16 orichards@fr.com
17 Fish & Richardson PC
12390 El Camino Real
18 San Diego, CA 92130
19
20 by delivering to them a true and correct copy thereof, certified by me as such.
21
22
s/ David W. Axelrod
23 David W. Axelrod
24 Email: daxelrod@schwabe.com
25
26
27
28
CERTIFICATE OF SERVICE CASE NO.: 3:17-CV-01781

PDX\106477\192966\DWA\22145199.1
Burnside, Samantha J.
From: Axelrod, David <DAxelrod@SCHWABE.com>

Sent: Thursday, September 28, 2017 6:04 AM
To: 'Marco_Hernandez@ord.uscourts.gov'
Cc: Seirus Counsel; ColumbiaCounsel
Subject: Columbia's requested supplement to pending instruction no. 21
Judge Hernandez,
Columbia requests that the Court give the following requested instruction, either as a
supplement to the Court’s proposed instruction no. 21 (Utility Patent—Anticipation) or
separately.
“Where a patent claims a value range and a prior art reference contains range that overlaps
the claimed range, the prior art reference anticipates only if a person of ordinary skill in the art
would understand the range in the prior art to disclose the range in the patent.”
See SJ Opinion, Dkt. 159, pages 12‐13; Atofina v. Great Lakes Chem. Co., 441 F. 3d 991,999
(Fed. Cir. 2012)
Thank you. David
Schwabe Williamson & Wyatt
David Axelrod
Shareholder
Direct: 503‐796‐2906
Cell: 971‐235‐3558
daxelrod@schwabe.com
Vcard
Ideas fuel industries. Learn more at:
www.schwabe.com
1 Exhibit 1
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Columbia's Motion For JNOV

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Case 3:17-cv-01781-HZ Document 429 Filed 01/05/18 PageID.

1 DAVID R. BOYAJIAN (SBN #257825)

11 Attorneys for Plaintiff

1 1. Seirus’s obviousness case was wrong as a matter of law. ............. 19

12 Bateman v. Mnemonics, Inc.,

1 Hagen v. City of Eugene,

3 Ineos USA LLC v. Berry Plastics Corp.,

14 Medien Patent Verwaltung AG v. Warner Bros. Entm’t,

25 Monroe Truck Equip., Inc. v. Universal Truck Equip., Inc.,

3 Montgomery Ward & Co. v. Duncan,

14 Pfizer, Inc. v. Apotex, Inc.,

1 Weisgram v. Marley Co.,

3 Zoltek Corp. v. United States,

6 35 U.S.C. § 102 ................................................................................................... 2, 31, 33

1 II. THE VERDICTS OF INVALIDITY OF CLAIMS 2 AND 23 ARE NOT

19 2. The heat management material of claim 1, wherein the base material

1 3. Factual Background Regarding the Fottinger Reference

1 A. How can it not -- well, yes, you're correct.

1 2. Seirus failed to present clear and convincing evidence that

17 A. That is correct. . . . As I say, it wasn’t relevant.

1 III. THE ADMISSION OF INCOMPETENT OPINION TESTIMONY FROM

1 DAVID R. BOYAJIAN (SBN #257825)

11 Attorneys for Plaintiff

CERTIFICATE OF SERVICE CASE NO.: 3:17-CV-01781

From: Axelrod, David <DAxelrod@SCHWABE.com>

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