K-Tec, Inc. v. Vita-Mix Corp. , 696 F.3d 1364 ( 2012 )

United States Court of Appeals
for the Federal Circuit
__________________________
K-TEC, INC.,
Plaintiff-Appellee,
v.
VITA-MIX CORPORATION,
Defendant-Appellant,
__________________________
2011-1244, -1484, -1512
__________________________
Appeal from the United States District Court for the
District of Utah in Case No. 06-CV-0108, Judge Tena
Campbell.
____________________________
Decided: September 6, 2012
____________________________
BRETT L. FOSTER, Holland & Hart LLP, of Salt Lake
City, Utah, argued for plaintiff-appellee. With him on the
brief were L. GRANT FOSTER and MARK A. MILLER. Of
counsel was MARCY G. GLENN, of Denver, Colorado.
ALAN L. BRIGGS, Squire, Sanders & Dempsey, LLP, of
Washington, DC, argued for defendant-appellant. With
him on the brief were JEREMY W. DUTRA, and RACHAEL A.
HARRIS. Of counsel was BRAD YEE CHIN, of Vienna,
Virginia.
__________________________
K-TEC v. VITA-MIX CORP 2
Before NEWMAN, LOURIE, and PROST, Circuit Judges.
LOURIE, Circuit Judge.
Vita-Mix Corporation (“Vita-Mix”) appeals from the
district court’s final judgment in which the court con-
cluded that Vita-Mix infringed the asserted claims of two
United States patents, K-TEC, Inc. v. Vita-Mix Corp.,
Case No. 2:06-CV-0108, 2010 WL 1417862 (D. Utah Apr.
6, 2010) (“Infringement Order”), that two prior art refer-
ences were not analogous art for the purposes of an obvi-
ousness analysis, K-TEC, Inc. v. Vita-Mix Corp., 729 F.
Supp. 2d 1312 (D. Utah 2010) (“Analogous Art Order”),
that substantial evidence supported the jury’s findings
that the asserted claims were not proved invalid, that
Vita-Mix’s infringement was willful, and that K-TEC, Inc.
(“K-TEC”) was entitled to approximately $11 million in
reasonable royalty and lost profits damages, K-TEC, Inc.
v. Vita-Mix Corp., 765 F. Supp. 2d 1304 (D. Utah 2011)
(“JMOL Opinion”). On appeal, Vita-Mix challenges those
conclusions in addition to other rulings made by the
district court during trial. Because the district court did
not err in any respect and the jury’s findings were prop-
erly supported, we affirm.
BACKGROUND
I.
This patent case relates to commercial blenders that
are used to make blended beverages. K-TEC, a company
that manufactures and sells commercial blending equip-
ment, owns U.S. Patents 6,979,117 (“the ’117 patent”) and
7,281,842 (“the ’842 patent”), which generally disclose and
claim a blending system that contains a blending jar with
a specific geometry. The benefit of the claimed geometry
is that it alters the flow pattern of the liquid during
blending in a way that reduces cavitation, which occurs
3 K-TEC v. VITA-MIX CORP
when a pocket of air envelops the area surrounding the
blender blade during blending. ’842 patent, col.2 ll.11–15,
col.7 ll.4–14.
The two patents are related—the ’117 patent is the
parent of the ’842 patent. Claim 1 of the ’842 patent is
representative for the purposes of this appeal. It claims a
“blending jar” that comprises “four side walls” and a “fifth
truncated wall” arranged in a specific geometry:
1. A blending jar apparatus, comprising:
a blending jar having a blending element which
rotates on a central axis, the jar to hold at
least one foodstuff to be blended, the blending
jar comprising:
a bottom wall;
four side walls extending from the bottom wall,
the four side walls defining an opening having
a generally rectangular shape, the opening be-
ing configured to receive the at least one food-
stuff;
a fifth truncated wall disposed between two of the
four side walls;
a handle secured to the blending jar adjacent to
the fifth truncated wall;
wherein the fifth truncated wall is positioned
closer to the central axis than corners formed
by the four side walls.
Id. col.8 ll.17–31 (emphases added). The written descrip-
tion details the claimed geometry. In particular, Figure
11, reproduced below, depicts the claimed jar, with four
side walls, labeled 132, 134, 136, and 138, and a fifth
truncated wall, labeled 135.
K-TEC v. VITA-MIX CORP 4
In the above figure, the fifth truncated wall is dis-
posed between side walls 138 and 132 and is positioned
closer to the blending jar’s central axis 144 than the
corners formed by the four side walls. See id. col.6 l.58–
col.7 l.14. The written description explains that the fifth
wall “truncates, in essence, the typical corner that would
otherwise be formed between wall 132 and 138.” Id. col.6
ll.62–64. Similarly, K-TEC explained to the U.S. Patent
& Trademark Office (“PTO”) that the truncated wall “may
be planar or curved, as long as it truncates a typical
corner that would otherwise be formed if the truncated
wall were not present.” K-TEC, Inc. v. Vita-Mix Corp.,
No. 2:06-CV-0108, 2009 WL 3568623, at *2 (D. Utah Oct.
23, 2009) (“Claim Construction Opinion”). The corners
created by the sidewalls “may be formed at generally
5 K-TEC v. VITA-MIX CORP
right angles,” ’117 patent, col.6 ll.60–62, although the
specification depicts them also as rounded.
As a result of this geometry, the vortex created when
blending liquid inside the container moves away from the
central axis and toward the truncated wall. ’842 patent,
col.7 ll.4–14. The shifted vortex creates a flow pattern in
which, during blending, the liquid will climb up the corner
opposite the truncated wall and will be lower at the
truncated wall. Id. col.7 ll.9–12. That flow pattern re-
duces cavitation in the container, increasing the speed
and efficiency with which smoothies and other beverages
can be made. Id. col.7 ll.12–14.
K-TEC and Vita-Mix compete in the market for com-
mercial blenders. In 2001, K-TEC began selling a five-
sided blending jar that was an embodiment of the ’117
and ’842 patents’ claims. After K-TEC acquired a number
of customers in 2001 and 2002, Vita-Mix began to con-
sider upgrading its existing four-sided container. In that
process, its “example” design was K-TEC’s five-sided
container. J.A. 16507, 16511. Although Vita-Mix at-
tempted different design changes, it introduced its new
MP container in May 2003, a design that Vita-Mix per-
sonnel admitted was a copy of K-TEC’s five-sided con-
tainer. J.A. 25455–46.
After Vita-Mix released the MP container, K-TEC no-
tified Vita-Mix in March 2005 that the container infringed
the parent patent of the ’117 and ’842 patents. In late
2005, one of K-TEC’s employees notified Vita-Mix person-
nel that the ’117 patent would soon issue and that Vita-
Mix’s MP container would infringe that patent. The day
after the patent issued, the record shows that Vita-Mix’s
CEO knew that “the K-Tec patent for the MP container”
had issued, J.A. 16619.
K-TEC v. VITA-MIX CORP 6
During that period, Vita-Mix began attempting to de-
sign around the ’117 patent. In that process, Vita-Mix’s
executives sought a change that would be “as invisible as
possible” to Vita-Mix’s customers. J.A. 25439–40. Vita-
Mix considered over a dozen noninfringing designs, in-
cluding an equidistant design that it believed did not
infringe because it lacked a “truncated corner.” J.A.
25445–46. Ultimately, however, Vita-Mix opted for a
design, referred to as the XP container, in which the
planar fifth wall was no longer “flat” but became curved,
i.e., it had a “radius.” J.A. 25437; see also J.A. 25418
(explaining that Vita-Mix’s XP container differed from the
MP container in that “[t]he one corner was rounded”).
Below is a photograph of a cross-section of the XP con-
tainer that Vita-Mix submitted to the district court during
the proceedings, with the annotations provided by Vita-
Mix.
7 K-TEC v. VITA-MIX CORP
Although Vita-Mix altered the design to include a
curved portion, it maintained the same item numbers for
the XP container that it used for the MP container. As a
result, Vita-Mix concluded that it had created a container
that was “equal to our old design in blending perform-
ance” and that most of its customers would “never even
notice the change.” J.A. 16594.1. After the XP product
was launched, Vita-Mix decided to halt sales of the MP
container. See id.
II.
Shortly after the ’117 patent issued, K-TEC sued Vita-
Mix in the United States District Court for the District of
Utah, alleging that the MP container infringed a number
of claims of the ’117 patent. Thereafter, K-TEC amended
its complaint to include the ’842 patent and the XP con-
tainer. Ultimately, K-TEC pursued damages only for
sales of the XP container.
During the proceedings, the district court arrived at a
number of conclusions that serve as the basis for Vita-
Mix’s appeal. First, the district court, after rejecting Vita-
Mix’s claim construction arguments, construed the “fifth
truncated wall” limitation to mean “a wall (planar or non-
planar) that truncates, in essence, the typical corner that
would otherwise be formed between two side walls.”
Claim Construction Opinion, 2009 WL 3568623, at *1, *3.
Second, prior to trial, the court granted K-TEC’s mo-
tion for summary judgment that the XP container in-
fringed the asserted claims and partially granted K-TEC’s
motion that the asserted claims are not invalid. Regard-
ing infringement, the court concluded based on a “visual
inspection” of the XP container that there was no genuine
issue that the container had “four side walls that form
intersecting corners and a fifth nonplanar wall between
two of the side walls that truncates the typical corner that
K-TEC v. VITA-MIX CORP 8
would be formed between the two side walls.” Infringe-
ment Order, 2010 WL 1417862, at *2. In partially grant-
ing K-TEC’s motion upholding the validity of the ’117 and
’842 patents, the court concluded that Vita-Mix had failed
to raise a genuine issue of material fact that two non-
blender designs that depict five-sided containers, U.S.
Design Patents 163,117 (“Hobbs”) and 227,535 (“Grimes”),
would have been reasonably pertinent to solving the
cavitation problem that the ’117 and ’842 patents’ inven-
tor faced when he conceived those inventions. Analogous
Art Order, 729 F. Supp. 2d at 1323–24.
At the same time, Vita-Mix moved for summary
judgment that the “fifth truncated wall” limitation ren-
dered the claims invalid for indefiniteness because the
district court’s construction included the word “typical.”
In denying Vita-Mix’s motion, the court clarified its
earlier construction, explaining that “the term ‘typical
corner’ refers to a corner that, but for the addition of the
truncated wall, would otherwise be typical—or in other
words identical—to the other corners of the blending jar.”
K-TEC, Inc. v. Vita-Mix Corp., No. 2:06-CV-0108, 2010
WL 1816266, at *3 (D. Utah May 3, 2010) (“Indefiniteness
Order”). After the parties disputed which particular
language applied in their proposed jury instructions, the
district court held that the clarified construction in the
summary judgment decision applied.
In parallel with the district court proceedings, Vita-
Mix initiated inter partes reexaminations of the ’117 and
’842 patents. In reexamination, the PTO considered a
number of references that were not before the agency
during prosecution, including U.S. Patent 6,431,744
(“Ash”), a reference that Vita-Mix relied on at trial. While
Vita-Mix raised a substantial new question of patentabil-
9 K-TEC v. VITA-MIX CORP
ity to initiate the proceedings, K-TEC ultimately pre-
vailed. 1
In 2010, the parties tried the remaining invalidity,
willfulness, and damages issues to a jury, which found in
favor of K-TEC on all issues. To support its invalidity
case, Vita-Mix primarily relied on Ash and U.S. Patent
7,063,456 (“Miller”). Ash discloses a blender hopper with
a larger upper portion and a smaller lower portion. Ash,
Abstract. The upper portion is generally rectangular and
the lower portion is octagonal. Id. at Fig. 4. To achieve
this change in shape, triangular walls narrow the hopper
from the upper portion to the lower portion. Id. Vita-Mix
contends that, as a matter of law, the triangular walls in
Ash meet the “fifth truncated wall” claim limitation and
that the remaining walls meet the “four side walls” limi-
tation. Figure 1 of Ash, a portion of which is depicted
below, shows the geometry of the blender hopper:
1 We affirmed without opinion Vita-Mix’s appeal
from the decision of the Board of Patent Appeals & Inter-
ferences (“the Board”) in Reexamination No. 95/000,339
regarding the ’842 patent. Vita-Mix’s appeal to this court
regarding the reexamination of the ’117 patent remains
pending. See Vita-Mix Corp v. Kappos, Appeal No. 2012-
1447.
K-TEC v. VITA-MIX CORP 10
During the trial, the district court allowed the parties
to offer evidence on whether the PTO had considered Ash
in finding the asserted claims patentable. In addition, at
the close of the evidence, the court instructed the jury
that while Ash was not considered in prosecution, “[a]t
some time later in the proceedings, the PTO had in front
of it the Ash Patent.” Jury Instructions, K-TEC, Inc. v.
Vita-Mix Corp., No. 2:06-CV-0108 (D. Utah June 17,
2010), ECF No. 770, at 21.
Regarding Miller, Vita-Mix contests on appeal the dis-
trict court’s instructions regarding the reference and
related cross-examination. Prior to trial, the court pre-
cluded Vita-Mix from presenting evidence or argument at
trial relating to sketches, notes, and experiments from
Mr. Miller disclosing a “square-within-a-square” concept
because they were not prior art, K-TEC, Inc. v. Vita-Mix
Corp., No. 2:06-CV-0108, 2010 WL 1486781, at *1–2 (D.
11 K-TEC v. VITA-MIX CORP
Utah Apr. 13, 2010), a decision that Vita-Mix does not
contest here. At trial, Vita-Mix presented Mr. Miller as a
witness, and during his live testimony, the district court
concluded that Miller strayed into discussing the previ-
ously-excluded evidence. J.A. 12948–51. As a result, the
court instructed the jury to confine its invalidity analysis
to “the words of the [Miller] patent and the drawings” but
that, as determined in the court’s summary judgment
opinion, Miller did not describe “a blending jar of a square
within a square or such.” J.A. 12975–76.
The court also allowed K-TEC to cross-examine Mr.
Miller based on the PTO’s statements in an office action
for an application related to the Miller reference. Specifi-
cally, the court allowed K-TEC’s counsel to ask a series of
“would it surprise you” questions based on the examiner’s
conclusions in the office action. See J.A. 13000–07.
However, K-TEC never introduced the prosecution history
into evidence and the court did not allow Miller to see
that history. J.A. 13001.
After the jury returned a verdict in favor of K-TEC,
the district court denied Vita-Mix’s post-trial motions,
concluding that substantial evidence supported the jury’s
factual findings on anticipation, willfulness, and damages,
and that Vita-Mix was not entitled to judgment as a
matter of law. JMOL Opinion, 765 F. Supp. 2d at 1311–
16. The district court thereafter entered judgment
against Vita-Mix, from which it timely appealed. We
have jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
I.
We apply the law of the regional circuit, here the
Tenth Circuit, to review the district court’s denial of Vita-
Mix’s motion for judgment as a matter of law. Voda v.
K-TEC v. VITA-MIX CORP 12
Cordis Corp., 536 F.3d 1311, 1318 (Fed. Cir. 2008). The
Tenth Circuit reviews a denial of a motion for judgment
as a matter of law de novo, applying the same legal stan-
dard as the district court. Equal Emp’t Opportunity
Comm’n v. Heartway Corp., 466 F.3d 1156, 1160 (10th
Cir. 2006). Judgment as a matter of law is only appropri-
ate if the record, viewed in the light most favorable to the
prevailing party, lacks substantial evidence to support the
jury’s findings. Fed. R. Civ. P. 50(a); United Int’l Hold-
ings, Inc. v. Wharf (Holdings) Ltd., 210 F.3d 1207, 1227
(10th Cir. 2000).
A grant of summary judgment is also reviewed de
novo. Eisai Co. Ltd. v. Dr. Reddy’s Labs., Ltd., 533 F.3d
1353, 1356 (Fed. Cir. 2008). Summary judgment is ap-
propriate if the movant “shows that there is no genuine
dispute as to any material fact and the movant is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56(a). In
deciding that issue, we credit all of the non-movant’s
evidence and draw all justifiable inferences in its favor.
Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255 (1986).
Finally, we review evidentiary rulings under the law
of the regional circuit. Utah Med. Prods., Inc. v. Graphic
Controls Corp., 350 F.3d 1376, 1381 (Fed. Cir. 2003). The
Tenth Circuit reviews evidentiary rulings under an abuse
of discretion standard. Pandit v. Am. Honda Motor Co.,
82 F.3d 376, 379 (10th Cir. 1996). Under that standard,
“‘a trial court’s decision will not be disturbed unless the
appellate court has a definite and firm conviction that the
lower court made a clear error of judgment or exceeded
the bounds of permissible choice in the circumstances.’”
Boughton v. Cotter Corp., 65 F.3d 823, 832 (10th Cir.
1995) (quoting McEwen v. City of Norman, 926 F.2d 1539,
1553 (10th Cir. 1991)). Even if that standard is met, “we
will set aside a jury verdict only if the error prejudicially
13 K-TEC v. VITA-MIX CORP
affects a substantial right of a party.” Hinds v. Gen.
Motors Corp., 988 F.2d 1039, 1049 (10th Cir. 1993).
II.
Vita-Mix raises numerous issues on appeal. First,
Vita-Mix argues that the district court erred in granting
summary judgment that the XP container infringed the
asserted claims. Vita-Mix highlights that it provided
expert testimony that showed under the court’s construc-
tion how the XP container had three walls, not the “four
side walls” or the “fifth truncated wall” limitations of the
asserted claims. That testimony, according to Vita-Mix,
raised a genuine issue of material fact for trial.
K-TEC responds that Vita-Mix raises claim construc-
tion issues, not a genuine factual dispute about the struc-
ture of the XP container. K-TEC argues that the intrinsic
record supports the district court’s construction that the
claimed “truncated wall” may be curved. Regarding the
XP container’s structure, K-TEC argues that there is no
genuine dispute that the container contained four side
walls and a curved fifth truncated wall.
We agree with K-TEC that the district court properly
entered summary judgment of literal infringement. In
the summary judgment context, “[a] party does not manu-
facture more than a merely colorable dispute simply by
submitting an expert declaration asserting that some-
thing is black” when no reasonable juror reviewing the
evidence could reach such a conclusion. Invitrogen Corp.
v. Clontech Labs., Inc., 429 F.3d 1052, 1080 (Fed. Cir.
2005). That maxim is especially true in cases involving
relatively simple technology, such as this one, because
“the technology will be ‘easily understandable without the
need for expert explanatory testimony.’’’ Centricut, LLC
v. Esab Group, Inc., 390 F.3d 1361, 1369 (Fed. Cir. 2004)
K-TEC v. VITA-MIX CORP 14
(quoting Union Carbide Corp. v. Am. Can Co., 724 F.2d
1567, 1573 (Fed. Cir. 1984)).
In this case, despite Vita-Mix’s and its expert’s at-
tempt to redraw the XP container, there is no genuine
dispute that the container has the claimed four side walls
and fifth truncated wall. The XP container’s geometry
matches that of the claimed blending jar, which generally
has side walls that are “arranged in a generally rectangu-
lar, tapered shape,” ’842 patent col.6 ll.58–62, although
those walls need not be planar, id. col.8 ll.22–27, 45–49.
Likewise, the asserted patents also explain that while the
fifth truncated wall need not be planar, id., it truncates,
“in essence, the typical corner that would otherwise be
formed” between the side walls, id. col.6 ll.62–64; see also
Claim Construction Opinion, 2009 WL 3568623, at *2.
There is no genuine dispute that the XP container’s
geometry falls within that claim limitation. Indeed, a
visual comparison of Fig. 11 of the asserted patents and
Vita-Mix’s annotation of the XP container further shows
that the district court properly granted K-TEC’s motion
for summary judgment.
III.
Second, Vita-Mix argues that the district court erred
in granting summary judgment that Grimes and Hobbs
are not analogous art. To support its argument that those
references were reasonably pertinent art, Vita-Mix points
to the inventor’s deposition testimony that the problems
he confronted during the development of the patented jar
included designing a jar that would fit within a particular
dimension. Vita-Mix also points to its expert’s report on
invalidity. Finally, Vita-Mix points to the PTO’s reex-
amination of the ’117 patent, in which the Board held that
Hobbs and Grimes were analogous art.
15 K-TEC v. VITA-MIX CORP
K-TEC responds that the ornamental designs of con-
tainers had no bearing on the inventor’s cavitation prob-
lem, a problem specific to the field of blenders. K-TEC
argues that the size of the container and the jar’s hand
clearance were not problems in the prior art. Finally, K-
TEC argues that even if Hobbs and Grimes are analogous
prior art, inclusion of those references would not have had
a material effect on the district court’s determination of
obviousness.
We agree with K-TEC that the district court properly
granted summary judgment that Grimes and Hobbs are
not analogous art. To qualify as prior art for an obvious-
ness analysis, a reference must qualify as “analogous art,”
i.e., it must satisfy one of the following conditions: (1) the
reference must be from the same field of endeavor; or (2)
the reference must be reasonably pertinent to the particu-
lar problem with which the inventor is involved. Innoven-
tion Toys, LLC v. MGA Entm’t, Inc., 637 F.3d 1314, 1321
(Fed. Cir. 2011). A reference is reasonably pertinent if it,
as a result of its subject matter, “logically would have
commended itself to an inventor’s attention in considering
his problem.” Id.
Here, Vita-Mix does not dispute that Hobbs and
Grimes are not in the same field of endeavor as the ’117
and ’842 patents. However, Vita-Mix also failed to raise a
genuine issue of material fact that the references would
have been reasonably pertinent the inventor in consider-
ing his problem.
First, the inventor’s testimony, by itself, failed to raise
a genuine issue of material fact that Hobbs and Grimes
would have been considered reasonably pertinent art.
According to the specification, there are four prior art
problems that the invention solves: blender speed, safety,
cavitation, and the blender’s ability to blend frozen ingre-
K-TEC v. VITA-MIX CORP 16
dients. ’842 patent col.1 l.52–col.2 l.23. Consistent with
that description, the inventor testified that he sought to
create a blending jar that “would reduce or prevent cavi-
tation when blending frozen drinks.” J.A. 7583; see gen-
erally J.A. 7583–86 (same). While the inventor’s
testimony also mentioned that, in developing the patented
jar, he also wanted the resulting jar to fit within K-TEC’s
existing quiet box, there is no dispute that creating a
smaller jar was not the problem he set out to solve be-
cause K-TEC’s existing jars already fit within the quiet
box. Thus, the inventor’s testimony does not raise a
genuine issue of material fact.
Second, Vita-Mix’s expert’s report on invalidity failed
to raise a genuine issue of material fact because, as the
district court correctly concluded, the report was “silent
on the question of why [the inventor] would have looked
to non-blending containers to discover the[] commonplace
designs” depicted in Hobbs and Grimes. Analogous Art
Order, 729 F. Supp. 2d at 1324. Indeed, the report did not
address the Grimes reference. Id. at 1324 n.3. Ulti-
mately, the district court rightly concluded that the report
did not “explain any rational underpinning for [the inven-
tor] to have consulted non-blending containers or food
mixers in order to solve the problems he encountered in
designing a new blending container,” and properly con-
cluded that the report failed to raise a genuine issue of
material fact. Id. at 1324.
Finally, the Board’s decision that Hobbs and Grimes
were analogous art does not raise a genuine issue of
material fact. As an initial matter, the district court did
not have the benefit of the Board’s analysis because the
Board’s opinion did not issue until well after the district
court entered final judgment in this case. But, regardless
whether we consider such post-judgment events in this
appeal, see Marine Polymer Techs., Inc. v. HemCon, Inc.,
17 K-TEC v. VITA-MIX CORP
672 F.3d 1350, 1362 (Fed. Cir. 2012) (en banc), summary
judgment was appropriate in this case. Here, it was Vita-
Mix’s burden before the district court to proffer evidence
such that a reasonable juror could find the ’117 and ’842
patents invalid under the clear and convincing standard
of proof. As recounted above, Vita-Mix failed to meet that
burden.
IV.
Next, Vita-Mix argues that the district court denied it
a fair trial, pointing to four alleged errors. First, Vita-Mix
argues that the district court erred when it informed the
jury that the PTO had considered Ash, because the agency
did not consider Ash during the prosecution of the as-
serted claims but, at the time of trial, was considering
Ash in the ongoing reexamination proceedings. Second,
Vita-Mix contends that the district court changed the
construction of “truncated wall” during trial to an incor-
rect construction and prejudiced Vita-Mix as a result.
Third, Vita-Mix asserts that the district court permitted
improper impeachment of Vita-Mix’s principal invalidity
witness, Mr. Miller, with inadmissible hearsay evidence
from the prosecution history of a continuation application
of the Miller patent. Finally, Vita-Mix argues that the
district court improperly commented on Miller’s disclo-
sure. In toto, argues Vita-Mix, these errors entitle it to a
new trial.
We disagree. First, it was not an abuse of discretion
to allow the parties to discuss the extent to which the
PTO had considered Ash or instruct the jury that Ash was
before the PTO in the reexamination proceedings. It is
generally true that evidence of non-final reexamination
determinations is of little relevance and presents a risk of
jury confusion. Callaway Golf Co. v. Acushnet Co., 576
F.3d 1331, 1342–43 (Fed. Cir. 2009) (applying Third
K-TEC v. VITA-MIX CORP 18
Circuit law). But it is the province of the district court to
weigh those interests and determine admissibility in each
case, a decision about which the court has very broad
discretion. Webb v. ABF Freight Sys., Inc., 155 F.3d 1230,
1246 (10th Cir. 1998). In this case, the court determined
that the probative value of the evidence was not substan-
tially outweighed by the potential of the evidence to
unfairly prejudice Vita-Mix, cause confusion of the issues,
or mislead the jury. See Fed. R. Evid. 403. Indeed, the
court explained the status of the reexamination proceed-
ings to the jury and, if anything, cured any potential
unfair prejudice to Vita-Mix by informing the jury that
the PTO’s consideration of Ash in the reexaminations
proceedings “ha[d] really no value.” J.A. 13840.
Second, the district court did not cause unfair preju-
dice to Vita-Mix by changing its construction of “truncated
wall” prior to trial. Instead, the court simply clarified its
construction by formally incorporating its rejection of
Vita-Mix’s claim construction positions. The court’s
Indefiniteness Order provided Vita-Mix with ample notice
that it could not recycle its rejected claim construction
arguments as part of its invalidity case. And rather than
clarify any potential ambiguity sufficiently before trial,
Vita-Mix chose to wait until the eve of trial—when it
submitted its proposed jury instructions—to re-raise its
claim construction position. In any event, Vita-Mix has
failed to show error in the court’s clarified construction,
which finds support in the intrinsic record. See Indefi-
niteness Order, 2010 WL 1816266, at *3 (citing reexami-
nation history); ’842 patent, Figs. 10–13, col.6 l.38–col.7
l.14 (describing jar with identical corners but for the
truncated wall).
Third, Vita-Mix has failed to show that the district
court abused its discretion by allowing K-TEC to cross-
examine Mr. Miller based on the prosecution history from
19 K-TEC v. VITA-MIX CORP
a patent application related to the Miller reference. It
was not an abuse of discretion to conclude that K-TEC did
not offer the prosecution history for the truth of the
statements therein, see Fed. R. Evid. 801(c), and the
statements from the prosecution history were never
introduced into evidence.
Finally, Vita-Mix has not shown that the district court
erred in instructing the jury regarding Miller. After
reviewing the record, it appears that the district court’s
comments were tailored to enforcing its prior summary
judgment order that excluded evidence that Vita-Mix
failed to prove was prior art, a decision that Vita-Mix does
not appeal.
In sum, Vita-Mix has failed to show that the district
court denied it a fair trial.
V.
Vita-Mix also argues that the district court erred in
denying its motion for judgment as a matter of law that
the Ash reference invalidates the asserted claims. Vita-
Mix argues that Ash plainly discloses the claimed “four
side walls” and “fifth truncated wall” required by the
asserted claims. Regarding the claims that additionally
require a handle, Vita-Mix argues that it would have been
obvious as a matter of law to modify the blending con-
tainer disclosed in Ash to include a handle, citing a num-
ber of prior art references that disclose blending
containers with handles.
In response, K-TEC argues that Ash does not disclose
the claimed “truncated wall” because the reference does
not truncate a typical corner that would otherwise be
formed between the sidewalls and does not disclose cor-
ners that are formed by sidewalls. K-TEC also points to
testimony by both parties’ technical experts as supporting
K-TEC v. VITA-MIX CORP 20
evidence. Regarding Vita-Mix’s obviousness arguments,
K-TEC argues that substantial evidence demonstrates
that it would not have been obvious to add a handle to
Ash because the hopper in Ash is not a pouring vessel. K-
TEC also points to objective evidence such as commercial
success and Vita-Mix’s attempts to copy K-TEC’s five-
sided blending container.
We agree with K-TEC that Vita-Mix is not entitled to
judgment as a matter of law that the asserted claims are
invalid. To prove that a claim is invalid for anticipation,
“the accused infringer must show by clear and convincing
evidence that a single prior art reference discloses each
and every element of a claimed invention.” Silicon
Graphics, Inc. v. ATI Techs., Inc., 607 F.3d 784, 796 (Fed.
Cir. 2010). Here, K-TEC presented substantial evidence
from which a jury could reasonably find that Ash does not
disclose the claimed “fifth truncated wall.” As K-TEC’s
expert testified, it appears from the reference that what
Vita-Mix identified as truncated walls are simply side-
walls that form typical transitional corners and do not
truncate an otherwise typical corner. See J.A. 14071–82.
Even if the triangular walls served as “truncated walls”
as a matter of law, K-TEC proffered substantial evidence
that Ash would then fail to disclose the “corners formed
by the four sidewalls” limitation because, at the heights at
which Ash discloses a truncated wall, the reference only
discloses corners formed by the intersection of truncated
walls and sidewalls, not corners formed between two
sidewalls. Compare Ash, Fig.1, with ’842 patent, Fig. 10.
Regarding obviousness, it was Vita-Mix’s burden to
prove by clear and convincing evidence that the claimed
subject matter “as a whole would have been obvious at the
time the invention was made” to those skilled in the art.
35 U.S.C. § 103(a). Here, Vita-Mix argues that it would
have been obvious to modify the Ash reference to include
21 K-TEC v. VITA-MIX CORP
a handle. Vita-Mix does not argue, however, that it would
have been obvious to modify Ash to include a fifth trun-
cated wall, and nothing in the record indicates that modi-
fying Ash to include a fifth truncated wall would have
been obvious as a matter of law. In addition, Ash dis-
closes not a fifth truncated wall, but four flat corners,
none of which is closer to the central axis, a required
claim limitation. Accordingly, the district court correctly
denied Vita-Mix’s motion for judgment as a matter of law
that the asserted claims are invalid.
VI.
Fifth, Vita-Mix argues that the district court erred in
denying its motion for judgment as a matter of law that it
did not willfully infringe the asserted claims. Specifically,
Vita-Mix argues that because its above-described nonin-
fringement and invalidity positions were reasonable, K-
TEC failed to establish objective recklessness as a matter
of law. Vita-Mix argues that, at every stage, it acted
reasonably and in good faith by designing around the
asserted claims and initiating reexamination of the as-
serted claims.
We disagree. To prevail on an allegation of willful in-
fringement, the patentee must prove (1) that the accused
infringer “acted despite an objectively high likelihood that
its actions constituted infringement of a valid patent”;
and (2) that this objectively defined risk was either known
or so obvious that the accused infringer should have
known about it. In re Seagate Tech., LLC, 497 F.3d 1360,
1371 (Fed. Cir. 2007) (en banc).
Here, Vita-Mix has failed to show that the district
court erred in denying its motion for judgment as a mat-
ter of law regarding willfulness. Vita-Mix’s noninfringe-
ment theory and most of its invalidity theories were
properly disposed of on summary judgment. Its remain-
K-TEC v. VITA-MIX CORP 22
ing theories were soundly rejected by the jury. In addi-
tion, as recounted above, K-TEC presented evidence that,
in designing the XP product, Vita-Mix started with the
MP container—a direct copy of K-TEC’s five-sided jar—
and made only a trivial change. Specifically, K-TEC
offered evidence that, rather than adopting one of numer-
ous noninfringing designs, Vita-Mix opted for a design
that allowed Vita-Mix to produce a container that per-
formed in the same way as the MP container and employ
a design that its customers would not be able to distin-
guish from the MP container. Indeed, Vita-Mix main-
tained the same product numbers for both the MP and XP
containers. Similarly, K-TEC presented substantial
evidence that Vita-Mix knew of the objectively high risk of
infringing K-TEC’s valid patents but decided to proceed
anyway. In view of this record, we cannot conclude that
the district court erred in denying Vita-Mix’s motion for
judgment as a matter of law on willful infringement.
VII.
Lastly, Vita-Mix argues that the district court erred
in denying its motion for judgment as a matter of law that
K-TEC failed to adequately prove damages. Vita-Mix
argues that K-TEC did not provide actual notice that the
XP container infringed the ’117 patent until April 7, 2006,
when K-TEC amended its complaint to allege infringe-
ment of the XP container. Thus, argues Vita-Mix, K-TEC
failed to proffer sufficient evidence of damages because its
damages expert employed an accounting period that
began on December 27, 2005, prior to the date when K-
TEC provided notice to Vita-Mix. Accordingly, Vita-Mix
requests that this case be remanded for a new trial on
damages.
We disagree. In the absence of marking a patented
article, a patentee who makes, offers for sale or sells a
23 K-TEC v. VITA-MIX CORP
patented article must notify a party of the infringement
for damages to accrue. 35 U.S.C. § 287(a). If a patentee’s
initial notice is sufficiently specific to accuse one product
of infringement, “ensuing discovery of other models and
related products may bring those products within the
scope of the notice.” Funai Elec. Co. v. Daewoo Elecs.
Corp., 616 F.3d 1357, 1373 (Fed. Cir. 2010). Here, K-TEC
proffered evidence that (1) it provided notice that the MP
container infringed various claims of the ’117 patent’s
parent patent in March 2005; (2) it provided subsequent
notice to Vita-Mix that the MP container infringed the
’117 patent’s claims in late October 2005; (3) its notice
resulted in Vita-Mix having actual notice of the ’117
patent, which its CEO referred to as “the K-Tec patent for
the MP container,” when the patent issued on December
27, 2005, J.A. 16619; and (4) Vita-Mix treated the XP and
MP containers as related products, see, e.g., J.A. 16594.1
(explaining that both products will use the same item
numbers and that most of Vita-Mix’s customers “will
never even notice the change” from the MP to the XP). In
light of this evidence, the district court did not err in
denying Vita-Mix’s motion for judgment as a matter of
law on damages. No substantial challenge is made on
appeal concerning the amount of the damages found by
the jury.
CONCLUSION
We have considered Vita-Mix’s remaining arguments
and conclude that they are without merit. For the forego-
ing reasons, the judgment of the district court is
AFFIRMED