United States District Court, D. Nebraska
MEMORANDUM AND ORDER
F. Bataillon Senior United States District Judge.
matter is before the Court on plaintiff Exmark Manufacturing
Company, Inc.'s (“Exmark”) motion to reaffirm
the jury's verdict that Briggs & Stratton
Corporation's (“Briggs”) infringement was
willful, Filing No. 723. This action was remanded from the
United States Court of Appeals for the Federal Circuit.
Exmark Mfg. Co. Inc. v. Briggs & Stratton Power Prod.
Grp., LLC, 879 F.3d 1332, 1338 (Fed. Cir. 2018).
Issues on Remand
Federal Circuit vacated this Court's enhanced damages
award and remanded the action for the court to determine
whether a new trial on willfulness is necessary. Id.
at 1353. The Appeals Court also reversed the Court's
finding on summary judgment that the patent was not invalid
as anticipated or obvious, remanding for a determination of
whether there was a genuine issue of material fact on the
invalidity defense. Id. at 1341-42. This court has
now determined that there is not and has reaffirmed its
finding of no invalidity. Filing No. 800.
respect to willfulness, the Appeals Court found error
“to the extent [the court] excluded [evidence of prior
art] without also determining whether it was relevant to
Briggs' state of mind at the time of accused
infringement.” Id. The Appeals Court stated:
In Halo [Elecs., Inc. v. Pulse Elecs.,
Inc., 136 S.Ct. 1923 (2016)], the Supreme Court held
that “[t]he subjective willfulness of a patent
infringer, intentional or knowing, may warrant enhanced
damages, without regard to whether his infringement was
objectively reckless.” Id. Thus, under
Halo, the district court no longer determines as a
threshold matter whether the accused infringer's defenses
are objectively reasonable. Rather, the entire willfulness
determination is to be decided by the jury. In this case, the
sole basis for excluding the prior art from the willfulness
trial was the district court's determination that
Briggs' litigation defenses were unreasonable.
Exmark, 879 F.3d at 1353. It found “[t]o the
extent that decision excluded evidence relevant to
Briggs' state of mind at the time of the accused
infringement, however, it does not comport with the standard
articulated in Halo, which mandates that willfulness
is an issue for the jury, not the district court.”
Id. The Appeals Court directed this court on remand
to “reconsider its decision to exclude evidence of the
prior art during the jury trial on willfulness to determine
whether Briggs had developed any views about the prior art at
the time of accused infringement or whether the evidence only
relates to Briggs' litigation-inspired defenses.”
Id. (noting “[a]s the Supreme Court explained
in Halo, timing . . . matter[s]. [A party] cannot
insulate itself from liability for enhanced damages by
creating an (ultimately unsuccessful) invalidity defense for
trial . . . .”) (quoting WBIP, LLC v. Kohler
Co., 829 F.3d 1317, 1341 n.13 (Fed. Cir. 2016)). On
remand, this Court is to determine in the first instance
“[w]hether there is a genuine issue of material fact
about when Briggs knew of its prior art defenses, and thus
whether a new jury trial is required.” Exmark,
879 F.3d 1353.
moves the Court to reaffirm the jury's finding that
Briggs's infringement of the patent was willful. It
argues that it asserted willful infringement only for the
time period prior to the filing of this action in 2010 and
contends that it is undisputed that Briggs did not form any
belief prior to suit that the '836 patent was invalid.
opposes the motion, it argues that it had actually formed a
belief that the baffles it saw on the Exmark mower in the
late-1990s were not inventive because of its knowledge of
prior art. It contends that the prior art, which had been
excluded at trial, is relevant to Briggs's subjective
state of mind at the time of infringement and a new trial on
willfulness is necessary.
Prior Art Evidence
facts are set forth in the Federal Circuit opinion and will
be repeated herein only as necessary to this opinion. Before
the trial of this action in September of 2015, the court had
determined as a matter of law that: 1) the patent was not
invalid as anticipated, obvious, or indefinite; 2) Briggs had
infringed the patent with respect to the original design; 3)
Briggs's defenses (invalidity, obviousness, and
indefiniteness) were objectively unreasonable for purposes of
the willfulness determination. In response to Exmark's
motion for a summary judgment of no invalidity as to the
original Briggs designs, Briggs had argued there were genuine
issues of material fact on anticipation in light of the
Walker reference and on obviousness based on the Simplicity
prior art mower combined with the Kidd patent's or the
Koehn patent's (or others') teaching of a front flow
control baffle that is spaced apart from the front wall.
Filing No. 381, Briggs's Brief at 7-8. The court rejected
that contention, based, in part, on the court's claim
construction. Filing No. 476, Memorandum and Order at 26-27.
court had also ruled on several motions in limine before the
trial. See Filing No. 496, Exmark Motion; Filing No.
565, Memorandum and Order. Exmark moved to preclude evidence
on, inter alia, issues over which Briggs had claimed
privilege, third-party mowers, patent invalidity, and
irrelevant prior art. Id. Exmark's prior art
argument related to the potential offer of several dozen
pieces of prior art exhibits at trial. Exmark argued that
Briggs should not be allowed to relitigate the invalidity
defense the court had earlier rejected on summary
judgment. In opposition to the motion, Briggs argued
that prior art was relevant to damages as evidence relating
to whether Briggs knew or should have known the '863
patent was valid in connection with damages. Filing No. 514,
Briggs's Opposition to Exmark's Fourth Motion in
Limine at 5-6. Briggs argued that evidence underlying the
invalidity and non-infringement defenses went to the heart of
the issue of whether its infringement was “so
obvious” that Briggs should have known about it.
Id. It also contended that the prior art reflected
“old modes” for doing the same thing as the
patented invention, which is one of the damages factors set
out in Georgia-Pacific Corp. v. U.S. Plywood Corp.,
318 F.Supp. 1116, 1120 (S.D.N.Y. 1970). See Filing
No. 565, Memorandum and Order at 5-6.
Court granted Exmark's motion to exclude “to the
extent the evidence relates to the invalidity defense but
denied [it] with respect to evidence related to damages,
without prejudice to its reassertion via timely objection at
trial.” See id.The Court stated that
prior art was not relevant to willfulness for the reasons
stated in its earlier order addressing willfulness under
In re Seagate Tech., LLC, 497 F.3d 1360, 1371 (Fed.
Cir. 2007) (en banc). Id. In the earlier
order, the Court had addressed the then-applicable
willfulness analysis under In re Seagate, 497 F.3d
at 1371. Filing No. 564, Memorandum and Order at 3. The Court
found that Briggs “[could] not credibly argue that it
relied on reasonable defenses to infringement”
(including invalidity by anticipation) and it had acted
“despite an objectively high likelihood that its
actions constituted infringement of a valid patent.”
Id. at 3. The Court noted:
The evidence presented in connection with the summary
judgment motions also establishes that Briggs's defenses,
and any reliance thereon, were not reasonable. The court
finds as a matter of law that no reasonable litigant could
realistically expect those defenses to succeed. Notably,
Briggs has asserted attorney-client privilege with respect to
the details of its lawyers' involvement and advice in
connection with the issue of infringement of the redesigned
mowers and it does not rely on advice of counsel in
defense of the willfulness allegations in connection with the
Id. (emphasis added). The Court determined that the
“issue of Briggs's subjective state-of-mind-whether
the objectively-defined risk ‘was either known or so
obvious that it should have been known to the accused
infringer' remained to be determined by the jury.”
Court based its finding that Briggs had proceeded in the face
of an objectively high likelihood of infringement on evidence
that Briggs was aware of the '863 patent at least as of
2002 because Philip Wenzel, the president of Briggs'
predecessor in interest, Ferris Industries, had been deposed
in the Toro v. Scag Power Equip. case in 2002.
Id. at Filing No. 564 at 2-3. In 2001, Exmark and
its parent, The Toro Company (“Toro”), sued Scag
Power Equipment, Inc. (“Scag”), et al. for
infringement of the '863 patent and three other patents.
Toro Co. v. SCAG Power Equip., Inc., No.
8:01-CV-279, Filing No. 1, Complaint (D. Neb. May 16, 2001).
The '863 patent is a continuation of the '475 patent.
Filing No. 193, Memorandum and Order at 2 (Jan. 27, 2003).
The Toro action was heard in this Court. Scag
asserted an inequitable conduct defense, contending that
Exmark employee Garry Busboom, one of the inventors of the
'863 patent, had intentionally misled the USPTO by
failing to disclose the Walker mower as prior art. See
Toro, Filing No. 185, Memorandum and Order at 6 (D. Neb.
Jan. 15, 2003). This Court rejected Scag's argument,
finding that the Walker reference had been disclosed to the
USPTO during the original examination of the '863 patent.
Toro, Filing No. 185, Memorandum and Order at 6-7;
Filing No. 188, Memorandum and Order at 6-7 (D. Neb. Jan. 22,
2003). The Court also denied the defendants' motion for a
summary judgment of invalidity of the the ‘475 patent.
Toro, Filing No. 193, Memorandum and Order at 6
(Jan. 27, 2003). Shortly thereafter, on the eve of trial, the
case settled. See Toro, Filing No. 195, Settlement
Agreement (Sealed). On November 16, 2004, an Ex Parte
Reexamination certificate was issued by the USPTO which
affirmed the patentability of claims 1 - 10 of the '863
patent and required no changes to the patent. See
Toro, Filing No. 322, Ex. 36. At trial in the present
case, the court allowed evidence of prior art as relevant to
damages with respect to Briggs's argument regarding
Georgia-Pacific factor 9, but found the evidence was
only relevant to the extent the patent was commercialized.
Filing No. 565 at 6. Accordingly, the court stated that
Briggs was “entitled to introduce side discharge mowers
that were actually used prior to Exmark's
was allowed to argue and to present evidence on the Walker
prior art. Filing No. 615, Trial Transcript (“T.
Tr.”) at 1193; Filing No. 724-3; Ex 179. Jim Marshall,
Ferris's engineering technician, testified that he had
seen a similar baffle before on a single- bladed walk-behind
mower. Filing No. 616, T. Tr. at 1486. The jury was presented
with a sketch of that baffle. Id.; Filing No. 739-2.
The Court excluded prior art evidence directed to mulching
mowers (including the Koehn, Simplicity, and Samejima
references) because they were not relevant to the Asserted
Claims, which required a side-discharge mower.
challenged the Court's exclusion of prior art evidence in
connection with willfulness at a conference outside the
presence of the jury. Filing No. 615 at 1211-14. The
following colloquy between the court and Briggs's counsel
ensued during the testimony of Briggs CEO Philip Wenzel, who
had formerly been the CEO of Briggs's predecessor in
interest, Ferris Industries. Wenzel had just testified that
he relied on advice of counsel concerning the baffle redesign
despite Briggs's assertion of attorney client privilege.
Id. at 1204.
MR. WOLF: Very briefly, Your Honor. And it's tricky and I
invite your guidance.
THE COURT: Good luck.
MR. WOLF: Yeah. That was actually sincere in that particular
instance. So as Your Honor's aware, there is a
willfulness allegation against the old design but not the new
design. For the first time that at least I'm aware of, we
heard allegations in-or argument in this cross that somehow
that stub period after the filing of the lawsuit, when there
was the wind-down of the old product, that that's somehow
evidence of willfulness. Now, here's the - THE COURT:
Well, here's the way I took the evidence.
MR. WOLF: Okay.
THE COURT: Mr. Wenzel is coming across as the lamb that has
been led to the shearer, okay?
MR. WOLF: Yes.
THE COURT: He's not the lamb that's been led to the
shearer. He's like my old boss's secretary. She's
crazy like a fox. Okay? So he says that he would have-if he
would have been contacted originally, he would have done X.
And the answer was he was contacted originally on the
redesign and he did Y. (emphasis added)
MR. WOLF: Well, here's the problem-
THE COURT: Whether that goes to willfulness, I see your
point. But now you want to do what?
MR. WOLF: Well, here's the problem. Almost
immediately-and we've kept this out entirely-almost
immediately there were discussions of the invalidity of the
THE COURT: Yeah.
MR. WOLF: And so I-we have studiously avoided that topic.
THE COURT: Well, he-yeah. And-and during cross-examination
stuff comes up and he's already testified. We've had
numerous opinions that the patent is invalid and you have
studiously tried to keep attorney-client privilege out of the
redesign process and he brought it in, okay? He did. Not me,
not the defendant's lawyer, but your CEO of this mark,
okay? Now, it's my intention not to let [plaintiff]
pursue that because it happened during cross-examination. So,
you know, I'm not sure where you're going. What do
you want to do?
MR. WOLF: Your Honor, I actually don't want to do
anything. What-I think at the end of the day what I'd
like is an instruction that the stub period doesn't weigh
into the willfulness analysis.
THE COURT: Well, [the jury is] not going to be asked about
willfulness with respect to the redesign. Your client's
conduct before the redesign and then his conduct after the
redesign is by the same person, and his conduct in total
helps decide what his thinking was before the redesign. And
that's just unfortunately the way it is, Mr. Wolf. If you
had two different executives, maybe you could get away with
it, but you don't.
MR. WOLF: Well, Your Honor, we'll-we'll leave it for
today, but we may come back at you to request that
THE COURT: And I have no problem with that at all. I-it's
just that, you know, there's overlap on all of these
issues- MR. WOLF: Understood.
THE COURT: -and the question is how far do you get into the
overlap before you really are inquiring about something the
jury ought not to be inquiring. And I-I-at this juncture, I
don't think we've gone over the threshold. And
that's why I would be reluctant to allow anyone to
continue to probe these issues any more deeply, certainly to
cover them, but not to probe them any more deeply.
MR. WOLF: All right. Well -
THE COURT: So that would be my general direction. If
there's something specific you want to do and you want to
ask me in advance how I'm likely to rule on it, ...