Federal Circuit Addresses District Court Oversight Of Expert Testimony On Infringement

• Published date: 22 May 2025
• Subject Matter: Intellectual Property, Patent
• Law Firm: Sheppard Mullin Richter & Hampton
• Author: Don Geiger

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In Steuben Foods Inc. v. Shibuya Hoppmann Corporation, the Federal Circuit addressed the boundaries a district court may impose on experts by deeming their testimony wrong as a matter of law.

Background

Steuben Foods Inc. ("Steuben") owns U.S. Patent Nos. 6,209,591 (the "'591 Patent"), 6,536,188 (the "'188 Patent"), and 6,702,985 (the "'985 Patent"), collectively (the "Asserted Patents")). All of the Asserted Patents related to systems for the aseptic packaging of food products.

Starting in 2010, Steuben filed suit against Shibuya Hoppmann Corp., Shibuya Kogyo Co. Ltd., and HP Hood LLC (collectively, "Shibuya") for allegedly infringing the Asserted Patents. In 2019, the actions were consolidated and transferred to the District of Delaware.

The district court issued its claim construction order in 2020 and denied cross-motions for summary judgment of noninfringement, infringement, and invalidity in 2021. Prior to trial, the district court denied Shibuya's motion for JMOL of noninfringement under FRCP 50(a) as to each of the Asserted Patents. Then, after a five-day jury trial the jury returned a verdict in favor of Steuben, finding that Shibuya infringed the Asserted Patents and that the Asserted Patents were not invalid. The jury awarded Steuben over $38 million in damages.

Following trial, Shibuya renewed its motions for JMOL of noninfringement under FRCP 50(b) and moved for JMOL with respect to invalidity and damages. Shibuya also moved for a new trial on noninfringement, invalidity, and damages.

With respect to Steuben's infringement case, the district court determined that Steuben's expert, Dr. Sharon, was wrong as a matter of law for each of the Asserted Patents. For the '591 Patent, the district court found that Dr. Sharon's testimony was inconsistent with the specification of the '591 Patent. For the '188 Patent, the district court found Dr. Sharon's testimony could not have convinced a reasonable juror that accused devices were substantially similar to the claimed invention. For the '985 Patent, the district court found Dr. Sharon's testimony to be contrary to one of the parties' stipulated constructions. Ultimately, and notwithstanding the jury's verdict to the contrary, the district court granted Shibuya's motion for JMOL of noninfringement for all Asserted Patents.

The district court also preemptively granted a new trial under FRCP 50(c)(1) in the event that its JMOLs with respect to noninfringement, invalidity, or damages were reversed or vacated. The district court entered an FRCP 54(b) judgment in...