United States: Failure To Move For JMOL Under Rule 50(A) Leads To A Forfeiture Of JMOL Under Rule 50(B)

In Medisim Ltd. v. BestMed, LLC, No. 13-1451 (Fed. Cir. July 14, 2014), the Federal Circuit vacated the district court's grant of JMOL on anticipation, affirmed the district court's grant of JMOL on unjust enrichment, and affirmed the district court's conditional grant of a new trial on anticipation.

Medisim Ltd. ("Medisim") owns U.S. Patent No. 7,597,668 ("the '668 patent"), directed to a fast noninvasive thermometric device that displays a core body temperature.  More than a year before the filing date for the '668 patent, Medisim marketed and sold the FHT-1 thermometer, which uses a heat-flux algorithm to quickly estimate a local body temperature.  For several years, BestMed, LLC ("BestMed") marketed and sold several of Medisim's thermometers.  But the parties parted ways, after which BestMed began selling competing thermometer products.

Medisim sued BestMed for, inter alia, infringement of the '668 patent and unjust enrichment.  Both parties made several motions requesting JMOL under Fed. R. Civ. P. 50(a), but the district court denied all motions.  The jury found the '668 patent to be not invalid and infringed, and awarded Medisim damages for both its patent infringement and unjust enrichment claims.  Postverdict, BestMed moved for JMOL of anticipation and no unjust enrichment under Rule 50(b).  The district court granted both motions, overturning the verdict and finding the '668 patent anticipated by the FHT-1 thermometer.  The district court also granted BestMed's motion for a new trial on anticipation, though conditioned it on an appellate court determining that BestMed failed to preserve its right to bring a post-trial JMOL motion.  Medisim appealed.

"No procedural principle is more familiar to this Court than that a . . . right may be forfeited . . . by the failure to make timely assertion of the right before a tribunal having jurisdiction to determine it."  Slip op. at 9 (quoting Yakus v. United States, 321 U.S. 414, 444 (1944)).

On appeal, the Federal Circuit held that BestMed forfeited its right to move for JMOL on anticipation under Rule 50(b) by not moving for JMOL under Rule 50(a).  The Court explained that Rules 50(a) and (b) "are linked together," and "[a] motion under Rule 50(b) is not allowed unless the movant sought relief on similar grounds under Rule 50(a) before the case was submitted to the jury."  Slip op. at 6 (alteration in original) (quoting Exxon Shipping Co. v. Baker, 554 U.S. 471, 486 n.5 (2008)).  The Court rejected BestMed's reliance on a statement made in opposing Medisim's Rule 50(a) JMOL motion of no anticipation "that the jury can readily find that the FHT-1 product, Medisim's own product, is anticipatory," but "it's definitely something for the jury."  Id. at 7 (citation omitted).  The Court concluded that it was insufficient that the statement put Medisim on notice of BestMed's position since "the Supreme Court has held previously that our Federal Rules of Civil Procedure are to be strictly followed in circumstances such as this one."  Id. at 8.  Moreover, the Court noted, the statement actually indicated the opposite of JMOL—that the decision was for the jury—and was made in opposition, with BestMed never moving on its own for JMOL on anticipation before the case went to the jury.  Thus, the Court vacated the district court's grant of JMOL on anticipation without addressing the merits. 

Turning to Medisim's appeal of the district court's grant of JMOL of no unjust enrichment, the Court first held that BestMed did not forfeit its right to move for JMOL under Rule 50(b) because it adequately made the proper Rule 50(a) motion.  The Court concluded that BestMed's generic motion under Rule 50(a) was adequate because, although Medisim based its unjust enrichment claim on appeal on misappropriation of its allegedly proprietary water bath testing procedure, during the district court proceedings, its claim requested a disgorgement-of-profits remedy without explanation of the basis.  On the merits, the Court held that "Medisim failed to present any evidence to support a finding that BestMed received an incremental benefit from Medisim's allegedly proprietary water bath testing procedure over that compensable by the patent laws," and, thus, the Court could not "conclude that equity and good conscience require restitution."  Id. at 12-13. 

Finally, the Federal Circuit affirmed the district court's conditional grant of a new trial under Rule 50(c)(1).  Rejecting Medisim's argument that the district court's decision lacked reasoning and failed to state the grounds for conditionally granting the motion, the Court held that the district court's reasoning was "clear enough to pass Rule 50(c)(1) muster."  Id. at 14.   Specifically, according to the Court, the district court called BestMed's anticipation argument overwhelmingly strong and discussed all of the evidence that supported its conclusion.  While the Court acknowledged that the district court's discussion of the evidence ended with the grant of JMOL on anticipation, the Court nevertheless concluded that the same reasoning applied to the conditional grant of a new trial.  Furthermore, the Court held that the district court was not foreclosed from entertaining a motion of SJ on remand.

This article previously appeared in Last Month at the Federal Circuit, August, 2014.

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