Judge Robinson Grants New Trial

March 17, 2016

Publication| Intellectual Property

In Carrier Corp. v. Goodman Global, Inc. et al., C.A. No. 12-930-SLR (D. Del. Feb. 22, 2016), Judge Robinson “reluctantly” granted a motion for a new trial brought by the defendants (“Goodman”) based on: (1) improper statements made by the plaintiff regarding an indemnity provision in a purchase order between Goodman and the manufacturer of the infringing product; (2) improper statements about copying and comparing the standard for invalidating a patent to that of the termination of parental rights; and (3) conclusory testimony from the plaintiff’s expert that established the infringing product practiced the claim elements.

First, Goodman argued that a new trial was warranted because the plaintiff’s closing rebuttal may have led the jury to improperly believe that an indemnity clause in the contract between Goodman and a manufacturer of the infringing product was evidence of willful blindness. Goodman utilized a “standard purchase” order in all of its transactions with manufacturers, including the manufacturer of the infringing product, Emerson. During its trial closing argument, the plaintiff stated that evidence of this indemnity clause in Goodman’s standard purchase order was evidence of willful blindness because Goodman knew of the infringement but yet “put the exposure on Emerson.” Judge Robinson agreed with Goodman, holding that the plaintiff’s statements were inappropriate as they were raised “in connection with the use of a standard purchase order unrelated to the issues of patents or infringement.” Judge Robinson also found that the evidence had not shown that Goodman “sought to insure itself against liability via indemnification from Emerson.” Judge Robinson found that the statements made by the plaintiff were particularly prejudicial because they were made during the closing rebuttal and thus were “the last [statements] to be heard by the jury.”

Second, Judge Robinson considered the prejudicial effect of the plaintiff’s argument during closing about copying, which the parties had agreed to take out of the case with respect to infringement, and the burden of proof for “clear and convincing evidence,” which the plaintiff compared to the standard to terminate parental rights. Judge Robinson found that the statements made by the plaintiff were “gratuitous” and likely tipped a “complex” trial record “for the wrong reason.”

Finally, Judge Robinson granted a new trial because of insufficient evidence regarding secondary considerations of nonobviousness. The testimony by the plaintiff’s expert in support of nonobviousness, which was “limited to a series of yes/no questions regarding whether the [plaintiff’s “Infinity System”] practiced the claim elements,” was “[c]onclusory testimony.” In general, the Court was not confident that the verdict was based only on the properly admitted evidence presented to the jury.

Analysis: Parties need to carefully tailor closing arguments to reflect rulings made by the Court during the trial.

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