Case 4:14-cv-00371-ALM Document 358 Filed 04/27/17 Page 1 of 8 PageID #: 20191
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`United States District Court
`EASTERN DISTRICT OF TEXAS
`SHERMAN DIVISION
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`Civil Action No. 4:14-CV-00371
`Judge Mazzant
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`§§§§§§
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`IMPERIUM IP HOLDINGS (CAYMAN),
`LTD.
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`v.
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`SAMSUNG ELECTRONICS CO., LTD.,
`SAMSUNG ELECTRONICS AMERICA,
`INC., SAMSUNG
`TELECOMMUNICATIONS AMERICA,
`LLC, and SAMSUNG SEMICONDUCTOR,
`INC.
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`MEMORANDUM OPINION AND ORDER
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`Pending before the Court is Plaintiff’s Renewed Motion for Judgment as a Matter of Law
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`on the Validity of U.S. Patent No. 6,836,290 (Dkt. #336). After reviewing the relevant
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`pleadings, the Court denies Plaintiff’s motion.
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`BACKGROUND
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`On June 9, 2014, Plaintiff filed the instant action against Defendants, alleging
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`infringement of United States Patent Nos. 6,271,884 (the “’884 Patent), 7,092,029 (the “’029
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`Patent”), and 6,836,290 (the “’290 Patent”). On February 8, 2016, the jury returned a verdict in
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`favor of Plaintiff. Particularly, the jury found the following: (1) Defendants infringed Claims 1,
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`5, 14, and 17 of the ’884 Patent; (2) Defendants infringed Claims 1, 6, and 7 of the ’029 Patent;
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`(3) Defendants willfully infringed the patents-in-suit; and (4) Claim 10 of the ’290 Patent was
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`invalid for obviousness (Dkt. #253). The jury awarded $4,840,772 in damages for infringement
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`of the ’884 Patent and $2,129,608.50 in damages for infringement of the ’029 Patent (Dkt. #253).
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`On August 24, 2016, the Court awarded enhanced damages for willful infringement and entered
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`final judgment (Dkt. #329; Dkt. #330).
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`Case 4:14-cv-00371-ALM Document 358 Filed 04/27/17 Page 2 of 8 PageID #: 20192
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`On September 21, 2016, Plaintiff filed its motion for judgment as a matter of law (Dkt.
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`#336). On October 11, 2016, Defendants filed a response (Dkt. #339). On October 21, 2016,
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`Plaintiff filed a reply (Dkt. #342). On October 31, 2016, Defendants filed a sur-reply (Dkt.
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`#345).
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`LEGAL STANDARD
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`Upon a party’s renewed motion for judgment as a matter of law following a jury verdict,
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`the Court should properly ask whether “the state of proof is such that reasonable and impartial
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`minds could reach the conclusion the jury expressed in its verdict.” Fed. R. Civ. P. 50(b); see
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`also Am. Home Assurance Co. v. United Space All., 378 F.3d 482, 487 (5th Cir. 2004). “The
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`grant or denial of a motion for judgment as a matter of law is a procedural issue not unique to
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`patent law, reviewed under the law of the regional circuit in which the appeal from the district
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`court would usually lie.” Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1332 (Fed. Cir.
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`2008). “A JMOL may only be granted when, ‘viewing the evidence in the light most favorable
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`to the verdict, the evidence points so strongly and overwhelmingly in favor of one party that the
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`court believes that reasonable jurors could not arrive at any contrary conclusion.” Versata
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`Software, Inc. v. SAP Am., Inc., 717 F.3d 1255, 1261 (Fed. Cir. 2013) (quoting Dresser-Rand
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`Co. v. Virtual Automation, Inc., 361 F.3d 831, 838 (5th Cir. 2004)).
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`Under Fifth Circuit law, a court should be “especially deferential” to a jury’s verdict and
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`must not reverse the jury’s findings unless they are not supported by substantial evidence.
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`Baisden v. I’m Ready Prods., Inc., 693 F.3d 491, 499 (5th Cir. 2012). “Substantial evidence is
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`defined as evidence of such quality and weight that reasonable and fair-minded men in the
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`exercise of impartial judgment might reach different conclusions.” Threlkeld v. Total Petroleum,
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`Inc., 211 F.3d 887, 891 (5th Cir. 2000). A motion for judgment as a matter of law must be
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`denied “unless the facts and inferences point so strongly and overwhelming in the movant’s
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`favor that reasonable jurors could not reach a contrary conclusion.” Baisden, 693 F.3d at 498
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`(citation omitted). However, “[t]here must be more than a mere scintilla of evidence in the
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`record to prevent judgment as a matter of law in favor of the movant.” Arismendez v.
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`Nightingale Home Health Care, Inc., 493 F.3d 602, 606 (5th Cir. 2007).
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`In evaluating a motion for judgment as a matter of law, a court must “draw all reasonable
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`inferences in the light most favorable to the verdict and cannot substitute other inferences that
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`[the court] might regard as more reasonable.” E.E.O.C. v. Boh Bros. Constr. Co., 731 F.3d 444,
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`451 (5th Cir. 2013) (citation omitted). However, “[c]redibility determinations, the weighing of
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`evidence, and the drawing of legitimate inferences from the facts are jury functions, not those of
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`a judge.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150 (2000). “[T]he court
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`should give credence to the evidence favoring the nonmovant as well as that ‘evidence
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`supporting the moving party that is uncontradicted and unimpeached, at least to the extent that
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`the evidence comes from disinterested witnesses.”’ Id. at 151 (citation omitted).
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`ANALYSIS
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`Plaintiff moves for judgment as a matter of law based on the jury’s determination that
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`Claim 10 of the ’290 Patent was invalid as obvious in combination with other prior art.
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`Plaintiff’s motion challenges the legal sufficiency of the evidence supporting the jury’s verdict.
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`Plaintiff argues that Defendants offered no evidence to support any of their reasons to combine
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`U.S. Patent No. 6,452,632 (“Umeda”) with U.S. Patent No. 5,929,655 (“Roe”) or Japanese
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`Patent Publication No. 1997-6592 (“Toshiba”) to reach the particular combination of elements
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`mentioned in Claim 10. Specifically, Plaintiff makes the following arguments: (1) Defendants
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`produced no evidence that combining Roe or Toshiba with Umeda would have reduced pin count
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`or cost; (2) Defendants offered no evidence that combining Roe or Toshiba with Umeda would
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`increase performance or versatility; and (3) Defendants offered no evidence that Roe or Toshiba
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`would have increased the performance and versatility of Umeda by enabling support for well-
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`known standards. Thus, Plaintiff asserts that judgment as a matter of law is justified and Claim
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`10 is valid and not obvious. In response, Defendants contend that they presented clear and
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`convincing evidence that Claim 10 was obvious in view of Umeda in combination with Roe or
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`Toshiba.
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`There is a presumption that a patent is valid. Ruiz v. A.B. Chance Co., 234 F.3d 654, 662
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`(Fed. Cir. 2000). Defendants bear the burden of proving invalidity by clear and convincing
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`evidence, and the burden never shifts to Plaintiff, the patentee, to prove validity. A patent is
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`invalid for obviousness “if the differences between the claimed invention and the prior art are
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`such that the claimed invention as a whole would have been obvious before the effective filing
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`date of the claimed invention to a person having ordinary skill in the art to which the claimed
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`invention pertains.” 35 U.S.C § 103. Obviousness is a legal determination based upon
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`underlying factual findings. Soverain Software LLC v. Newegg Inc., 705 F.3d 1333, 1336 (Fed.
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`Cir. 2013). The factual findings are based upon several factors, including “(1) the scope and
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`content of the prior art, (2) the difference between the prior art and the claimed invention, (3) the
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`level of ordinary skill in the field of the invention, and (4) any relevant objective considerations.”
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`Id. (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). Although the Court must
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`determine the ultimate legal question of obviousness, the Court must presume the jury resolved
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`all underlying factual findings in favor of the verdict and accept the jury’s findings if supported
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`by substantial evidence. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1356–
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`57 (Fed. Cir. 2012).
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`Case 4:14-cv-00371-ALM Document 358 Filed 04/27/17 Page 5 of 8 PageID #: 20195
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`Here, substantial evidence supports the jury’s finding of obviousness. Claim 10 of the
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`’290 Patent recites:
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`10. A CMOS imaging apparatus, comprising:
`a CMOS image sensor, the sensor having a data interface circuit comprising:
`a first single-ended interface connected to a first signal output line;
`a second single-ended interface connected to a second signal output line;
`and
`a differential interface having a normal signal output connected to the first
`output line and a complementary signal output connected to the second
`signal output line;
`wherein an output of the data interface circuit is selectable between a
`single-ended interface output and a differential interface output; and
`an image processor connected to the CMOS image sensor to receive the
`signals output by the data interface circuit.
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`’290 Patent at 5:45–6:6 (emphasis added). The claimed invention has three primary components:
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`(1) a “CMOS image sensor”; (2) a “data interface circuit” within the CMOS image sensor that
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`sends output signals from the sensor; and (3) an “image processor” that receives signals from the
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`data interface circuit.
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`Both parties presented expert testimony regarding the obviousness of Claim 10.
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`Defendants’ invalidity expert, Dr. Jacob Baker, testified regarding the obviousness of Claim 10.
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`Dr. Baker contended that a person of ordinary skill in the art would combine the disclosure in
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`Umeda with the interface disclosed in Roe or Toshiba. Umeda discloses a solid-state image
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`sensor that includes (1) an image sensor, such as a CMOS type image sensor; (2) an interface
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`section within the image sensor that transmits signals; and (3) a section that receives signals from
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`the interface section. Umeda at Fig. 6. Umeda does not claim a particular type of interface
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`section to use with the invention.
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`At trial, Dr. Baker described what Umeda seeks in an appropriate interface section:
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`Q. (By Mr. Pepe) Now, Dr. Baker, what does this slide show?
`A. This slide shows what Umeda desires with an interface.
`Q. And what are those characteristics?
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`A. Well, it wants a small number of pins so that we can reduce the size and lower
`the cost, but at the same time, you want to have high performance and high
`versatility and be able to use well-known standards, like the PC card and like
`IEEE 1394, the FireWire I mentioned a moment ago.
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`(Dkt. #271, Feb. 4, 2016 P.M. Trial Tr. at 11:21–12:3 (referring to the Umeda patent at 1:61–
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`67)). Dr. Baker testified that Roe and Toshiba provide all of the characteristics desired by
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`Umeda—minimal pins, high versatility and performance, and support for well-known standards.
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`Dr. Baker then presented evidence and testimony regarding how Roe and Toshiba possess
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`Umeda’s desired characteristics. He mentioned that Roe, Umeda, and Toshiba are all in the
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`same technical field (Dkt. #271, Feb. 4, 2016 P.M. Trial Tr. at 35:10–14). Roe discloses a dual-
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`purpose input/output (“I/O”) integrated circuit that can support either single-ended I/O,
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`differential I/O, or both, and Toshiba discloses an integrated circuit that allows use of both a
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`single-ended interface and a differential interface. Roe at 3:38–43; Toshiba at p. 16:15–19. Dr.
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`Baker explained that Roe and Toshiba achieve the desired Umeda characteristics by sharing
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`single-ended and differential interface pins (Dkt. #271, Feb. 4, 2016 P.M. Trial Tr. at 25:23–26.6
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`(describing the Roe interface); Dkt. #271, Feb. 4, 2016 P.M. Trial Tr. at 16:21–17:21 (describing
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`the Toshiba interface)). He further explained that reducing the number of pins decreases size and
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`lowers cost while also creating a flexible interface that uses single-ended and differential
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`interfaces (Dkt. #271, Feb. 4, 2016 P.M. Trial Tr. at 34:5–8). In addition, Dr. Baker testified that
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`because Roe and Toshiba share single-ended and differential interface pins, these references
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`offer support for well-known standards (Dkt. #271, Feb. 4, 2016 P.M. Trial Tr. at 34:14–17; Dkt.
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`#271, Feb. 4, 2016 P.M. Trial Tr. at 11:13–19 (indicating Figure 14 of Umeda gives examples of
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`well-known standards, such as a PC card, which uses a single-ended or differential interface, and
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`the IEEE 1394, which uses a differential interface or the like (citing Umeda at Fig. 14)). Lastly,
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`Dr. Baker stated that Toshiba’s interface could be used in a broad range of applications, which
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`Dr. Baker acknowledged could include Umeda’s video system (Dkt. #271, Feb. 4, 2016 P.M.
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`Trial Tr. at 15:13–18 (discussing Toshiba at p. 49:15–18)).
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`Plaintiff’s expert, Dr. Cameron Wright testified to rebut Dr. Baker’s testimony. He
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`claimed that Dr. Baker combined two dissimilar patents to “come up with something close to the
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`interface patent” (Dkt. #322, Feb. 5, 2016 P.M. Trial Tr. at 114:2–3). Other than argument, Dr.
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`Wright offered no other specific testimony to rebut Dr. Baker’s reasons for why a person of
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`ordinary skill would not have combined Umeda with Roe or Toshiba to create Claim 10.
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`The jury weighed the competing testimony and the credibility of the experts. Ultimately,
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`the jury agreed with Dr. Baker’s testimony and found Claim 10 was invalid. After reviewing the
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`record and considering the parties’ arguments, the Court finds substantial evidence in the record
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`to support the jury’s factual finding of invalidity. Dr. Baker’s testimony included not only
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`specific citations to each of the prior art references but also an explanation for why a person of
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`ordinary skill in the art would use the interface of Roe or Toshiba in the system disclosed by
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`Umeda. “Where there is substantial evidence for a reasonable jury finding, it is not [the Court’s]
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`function to second guess or reevaluate the weight given to that evidence.” MobileMedia Ideas
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`LLC v. Apple Inc., 780 F.3d 1159, 1168 (Fed. Cir. 2015). The Court will not substitute its
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`judgment for that of the jury. The Court also finds that a reasonable jury could have determined
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`that Defendants established by clear and convincing evidence that Claim 10 would have been
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`obvious to one of ordinary skill in the art at the time of the invention.
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`Therefore, the Court will not disturb the jury’s verdict.
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`CONCLUSION
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`It is therefore ORDERED that Plaintiff’s Motion for Judgment as a Matter of Law on the
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`Validity of U.S. Patent No. 6,836,290 (Dkt. #336) is hereby DENIED.
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`Case 4:14-cv-00371-ALM Document 358 Filed 04/27/17 Page 8 of 8 PageID #: 20198
`Case 4:14-cv-00371-ALM Document 358 Filed 04/27/17 Page 8 of 8 PagelD #: 20198
`SIGNED this 27th day of April, 2017.
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`AMOS L. MAZZANT E ’2
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`UNITED STATES DISTRICT JUDGE
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