Late last month, the Federal Circuit issued its opinion in Jiaxing Super Lighting Electric Appliance, Co. v. CH Lighting Technology Co., a patent infringement case we have been tracking because it attracted an amicus brief. In this case, the Federal Circuit reviewed a judgment of the Western District of Texas, which granted a partial judgment as a matter of law that asserted patents are not invalid and entered judgment on a jury verdict of infringement and no invalidity. The panel, consisting of Judges Dyk, Chen, and Hughes, affirmed the jury’s verdict as to one of the patents, reversed the districts court’s JMOL that two of the asserted patents were not invalid, vacated the damages award, and remanded the case for a new trial on the validity of two of the asserted patents and damages for all three patents. This is our opinion summary.
The opinion, authored by Judge Dyk, began by providing the relevant background:
On January 10, 2020, Super Lighting brought suit against CH Lighting for infringement of the three asserted patents in the U.S. District Court for the Western District of Texas. Before trial, CH Lighting stipulated to infringement for all accused products except the “LT2600 chips,” which it contended did not infringe the ’140 patent’s claims. At trial, the parties disputed the validity of the tube patents (the ’125 and ’540 patents); CH Lighting argued that the America Invents Act’s (“AIA”) on-sale bar provision rendered the tube patents invalid. The district court excluded evidence offered by CH Lighting to show that three LED tube lamp products (the “prior art tubes”) were on sale before the effective filing dates of the tube patents. Nonetheless, CH Lighting’s invalidity expert Dr. Lebby testified that the prior art tubes embodied the tube patents’ claims and were on sale before the tube patents’ effective filing dates.
After the presentation of CH Lighting’s invalidity defense, the district court granted Super Lighting’s Rule 50(a) motion for JMOL that the tube patents were not invalid on the ground of an on-sale bar, holding that Dr. Lebby’s testimony alone did not constitute sufficient evidence upon which a reasonable jury could find that the prior art tubes embodying the claimed inventions were on sale prior to the tube patents’ 2015 effective filing dates. The district court also denied CH Lighting’s Rule 50(a) motion for JMOL that the claims of the asserted patents were invalid. On November 4, 2021, the jury returned a verdict finding that the ’140 patent was infringed and not shown to be invalid, ultimately awarding $13,872,872 to Super Lighting for infringement of the three asserted patents.
After trial, CH Lighting filed a renewed Rule 50(b) motion for JMOL that the three patents were invalid and that the LT2600 chips did not infringe the ’140 patent. CH Lighting also filed a Rule 59(a) motion for a new trial, arguing that a new trial was warranted as to the validity of the tube patents because the district court erred in excluding evidence showing that the prior art tubes were on sale before the tube patents’ effective filing dates. CH Lighting additionally argued in its Rule 59(a) motion that a new trial was warranted for damages because the district court improperly admitted the testimony of Super Lighting’s damages expert Ms. Kindler over CH Lighting’s Daubert objection and because her testimony was legally insufficient to prove damages. The district court denied both of CH Lighting’s motions and also granted Super Lighting’s motion for enhanced damages, doubling the jury’s damages verdict. CH Lighting now appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).
Judge Dyk explained the panel concluded the “district court’s exclusion of . . . authenticating testimony resulted in the exclusion from evidence of the MaxLite documents relied upon by Dr. Lebby.” According to Judge Dyk, this “error was prejudicial because Dr. Lebby relied on the MaxLite documents . . . for his finding that the MaxLite tube was on sale prior to the tube patents’ effective filing dates.” The panel accordingly reversed “the district court’s grant of JMOL to Super Lighting and remand[ed] for a new trial on the invalidity of the tube patents because of the district court’s erroneous exclusion of . . . authenticating testimony, the MaxLite documents,” and the internal Super Lighting presentation.
Regarding “CH Lighting’s argument that the jury’s verdict of no invalidity is incompatible with its verdict of infringement,” the panel disagreed. Judge Dyk explained that the “problem with CH Lighting’s argument is that Super Lighting’s expert . . . testified that, unlike in Ono, the LT2600 chips’ pulses do also control the switch as required by the ’140 patent’s claims.” He explained the “jury was . . . free to credit Super Lighting’s other expert[‘s] . . . unrebutted testimony that the switches disclosed ‘pulses . . . that turn on and off a semiconductor switch.'” Thus, Judge Dyk explained, the “jury’s finding of infringement is . . . supported by substantial evidence and is not inconsistent with its finding of no invalidity.”
Finally, Judge Dyk wrote, on remand “the district court should consider the reliability” of the expert testimony “in light of EcoFactor, with a particular focus on whether ‘she reasonably rel[ied] on [the] kinds of facts or data in forming an opinion’ that would be reasonably relied upon by an expert in her field.” The panel noted that, “[i]n the context of patent damages,” the Federal Circuit has “repeatedly explained that the damages expert must apportion among licenses.”
In conclusion, Judge Dyk stated, the court “affirm[ed] the jury’s verdict of validity and infringement of the ’140 patent” and “reverse[d] the district court’s grant of JMOL that the tube patents were not invalid, vacate[d] the jury’s award of damages, and remand[ed] for a new trial on the tube patents’ validity and damages.”