The accused process has as its genesis the Parity® system discussed in the ’099 patent. Originally introduced in 1992, Parity® allowed bidders using a modem to access bid calculation software on a central server over a proprietary computer network and input data to calculate a TIC for a given bid. Bidders could then submit a bid over the electronic network to a central server, which ordered the bids according to TICs and transmitted the bids to issuers’ computers for display. In 1995, 21st Century Municipals modified Parity® to work with other bid calculation programs, including Thomson’s BidComp software, originally introduced in 1988. In 1997, Thomson acquired Parity® from 21st Century Municipals and integrated the BidComp and Parity® products into a single system marketed as BidComp/Parity®. In 1998, Thomson modified BidComp/Parity® to allow issuers to view bids over the Internet using a web browser rather than over a proprietary computer network.
On June 1, 2001, Muniauction filed suit against Thomson, alleging that Thomson infringes method claims 1, 2, 9, 14, 18, 20, 24, 31, 32, 36, 40, 42, 46, and 56 of the ’099 patent when it conducts auctions on its BidComp/Parity® system.
After trial, a jury found that the asserted claims were not obvious and that Muniauction, Inc. was entitled to $38,482,008 in lost profits damages for Thomson’s willful infringement. On October 20, 2006, Thomson filed a motion for judgment as a matter of law (“JMOL”) or a new trial, asserting, inter alia, that the claims of the ’099 patent were obvious and that Thomson did not infringe the claims under the appropriate standard for joint infringement. On April 30, 2007, the Supreme Court issued KSR International Co. v. Teleflex Inc., which rejected a rigid application of this court’s teaching-suggestion-motivation test for obviousness. 127 S. Ct. 1727, 1739 (2007). The district court considered KSR, but denied Thomson’s motion in all respects, enhanced the damages award to $76.9 million, awarded $7.7 million in pre-judgment interest, and granted a permanent injunction against Thomson. The district court entered a final judgment on July 30, 2007, and Thomson filed a timely notice of appeal on August 1, 2007. Thomson also sought a stay of the injunction pending appeal.
While the appeal was pending, this court issued two opinions relevant to issues presented by this case. First, on August 20, 2007, In re Seagate Technology, LLC changed the standard of willful infringement from one akin to negligence to that of objective recklessness. 497 F.3d 1360, 1371 (Fed. Cir. 2007). Second, on September 20, 2007, BMC Resources, Inc. v. Paymentech, L.P. held that where steps of a method claim are performed by multiple parties, the entire method must be performed at the control or direction of the alleged direct infringer. 498 F.3d 1373, 1380–81 (Fed. Cir. 2007). This court thus granted Thomson’s motion for a stay of the injunction pending appeal, concluding that Thomson had shown a likelihood of success on the merits under BMC Resources. Muniauction, Inc. v. Thomson Corp., 07-1485, 2007 WL 2827915 (Fed. Cir. Sept. 28, 2007). We have jurisdiction over this appeal pursuant to 28 U.S.C. § 1295(a).
The denial of a JMOL motion is “a procedural issue not unique to patent law, which we review under the law of the regional circuit where the appeal from the district court normally would lie.” Riverwood Int’l Corp. v. R.A. Jones & Co., 324 F.3d 1346, 1352 (Fed. Cir. 2003). Under Third Circuit law, “[w]e exercise plenary review of an order granting or denying a motion for judgment as a matter of law and apply the same standard as the district court.” Lightning Lube, Inc. v. Witco Corp., 4 F.3d 1153, 1166 (3d Cir. 1993); see also Juicy Whip v. Orange Bang, 292 F.3d 728, 736 (Fed. Cir. 2002).
At trial and in its Motion for Judgment as a Matter of Law or for a New Trial (“JMOL Motion”), Thomson argued that the asserted claims were obvious over a proposed modification of the prior art Parity® system to incorporate the use of a web browser. Muniauction, 502 F. Supp. 2d at 491. In its denial of Thomson’s motion, the district court concluded that substantial evidence supported the jury’s verdict that Thomson had not proved the invalidity of the asserted claims of the ’099 patent by clear and convincing evidence. First, the district court concluded that “the jury could only reasonably have found that [Parity®] did not contain all of the elements found in the asserted claims of the ’099 Patent.” Id. Second, the court noted that the jury’s verdict
was supported by sufficient evidence of secondary indicia that the asserted claims were not obvious. Id. We disagree.
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