Rule 50(a) motions are truly the stuff of nightmares. If you are unfamiliar (experienced trial attorneys can skip the next two paragraphs), almost all patent cases involve post-trial briefing, where the losing side seeks judgment as a matter of law on the basis that no reasonably jury could find for the opposing party, even though that's exactly what the jury did.
Post-trial JMOL motions are not throwaway motions. Parties actually win them. And if you don't win your post-trial Rule 50(b) motion, what do you do? Appeal and try again, based on the arguments you preserved in that motion. These motions are critically important—albeit, only if you lose at trial.
But the post-trial Rule 50(b) motion for judgment as a matter of law is actually a renewed motion. To include an issue in your Rule 50(b) motion, you have to first make a 50(a) motion on the issue, and that motion must be made before the case is submitted to the jury. Otherwise, the issue is waived for post-trial briefing.
The problem, of course, is that you have to make your Rule 50(a) motion at the exact moment you are most stressed and concerned about actually winning the trial, when the motion feels like a giant distraction. And you have to do it knowing that you will almost certainly lose the 50(a) motion. The point is to preserve the arguments, not to win.
Trial teams handle this many different ways, but the most common seems to boil down to "give it to a junior associate to draft, ignore it, and then panic and try to fix it just before we have to make the motion. And maybe wing it a little."
Obviously, that process risks error, because often those junior associates don't have a complete grasp of the arguments at trial, and even more often those junior associates are extremely sleep deprived and being pulled in multiple different directions for multiple different tasks over the course of trial. They have little time to sit down and focus on the Rule 50(a) motion. Meanwhile, the more senior attorneys tend to be focused on closings as the case winds down.
So, as you can imagine, waiver happens.
Just How Precise Does the Rule 50(a) Have to Be? Pretty Precise, It Turns Out.
There are a couple of common questions during this process: do we make the motion orally, or file a written motion? How precise does it have to be to avoid waiver? Can we just say that we move for JMOL on infringement, validity, and damages, and be covered?
We got another data point on the "how precise" question yesterday, in an opinion from Chief Judge Connolly. He addressed a number of post-trial motions and whether they were waived.
To start, he held that while he agreed with the defendant's first non-infringment JMOL motion, it had been waived, because the defendant's fairly lengthy verbal Rule 50(a) motion didn't touch on it. So he denied it:
Kurin argues in its Rule 50(b) briefing that Magnolia's infringement expert, Dr. Santiago, "disregarded" my construction of "fluid reservoir" at trial and that his testimony therefore cannot support the jury's verdict of infringement of claim 1. . . . I agree with this argument, as the infringement opinion Dr. Santiago offered at trial was based on a purely functional (as opposed to structural) definition of" fluid reservoir." But I also agree with Magnolia that Kurin failed to preserve this argument in its Rule 50(a) motion as required by Rule 50(b).
"A post-trial Rule 50 motion can only be made on grounds specifically advanced in a motion for a directed verdict at the end of plaintiff's case." . . . The Rule 50(a) motion must have been "sufficiently specific to afford the party against whom the motion is directed with an opportunity to cure possible defects in proof which otherwise might make its case legally insufficient." . . . .
Kurin did not state or imply in its Rule 50(a) motion that Dr. Santiago's testimony was inconsistent with my claim construction order. Nor did it object at trial to Dr. Santiago's testimony about the "fluid reservoir" limitation. Moreover, as I now appreciate having had the benefit of Magnolia's Rule 50(b) briefing, Kurin's own expert, Dr. Antonsson, identified at trial a "fluid reservoir" in the accused device that also was not defined in structural terms. . . . And consistent with Dr. Antonsson's testimony, the only substantive statement Kurin made with regard to noninfringement of the "fluid reservoir" limitation in its Rule 50(a) motion was: "To the extent that there is a fluid reservoir in the Kurin device it's the entire U-shaped channel not a subportion of it." This statement in no way expressed or implied the argument or even the tenor of the argument Kurin is now making in support of its Rule 50(b) motion with respect to claim 1's "fluid reservoir" limitation. Accordingly, Kurin has waived the argument.
Magnolia Medical Techs., Inc. v. Kurin, Inc., C.A. No. 19-97-CFC, at 13-14 (D. Del. May 14, 2024).
The Court likewise found that the defendant failed to preserve its next non-infringement JMOL argument, because it didn't specifically list the grounds during the oral Rule 50(a) motion:
Magnolia argues, and I agree, that Kurin also failed to preserve in its Rule 50(a) motion its argument that Magnolia failed to adduce evidence to establish that the Kurin Lock satisfied the "sample reservoir" limitation of claim 24. . . . Kurin did not mention claim 24's "sample reservoir" limitation in its Rule 50(a) motion or imply in any way in its Rule 50(a) motion that it was challenging the sufficiency of the evidence of the Kurin Lock's infringement of the "sample reservoir" limitation. Accordingly, Kurin has waived the argument.
Id., 14-15.
Luckily for defendant, on its final non-infringement JMOL argument, the Court found that it had preserved the argument, and granted the motion—permitting the motion as to both of the asserted claims even though the defendant had explicitly raised it only as to one of them:
The devices taught by claim 1 and claim 24 have both a seal and a vent. . . . But as Kurin argued at trial, in its Rule 50(a) motion, and again in support of its Rule 50(b) motion, . . . because the porous plug serves as both the Lock's seal (when sufficiently wetted with the patient's blood) and its vent (before it is sufficiently wetted), the Lock never has both a seal and a vent at the same time. For that reason, there is no moment in time when the Lock meets both the seal and vent limitations and therefore, as a matter of law, there is no moment in time when the Lock infringes the asserted claims. . . .
Magnolia . . . argues that Kurin failed to preserve this argument with respect to claim 24 in its Rule 50(a) motion because Kurin's counsel "raised 'issues based on the vent and seal terminology' only 'with respect to Claim 1 [and not asserted claim 24].'" . . . But under Third Circuit law, courts "do not measure [a Rule 50(a) motion's] sufficiency by the text alone, but against the background, as reflected in the record, of what the party now claiming waiver understood as to the tenor of the Rule 50 movant's position and theory." . . . That background here makes clear that Kurin's Rule 50(a) argument that the Lock's porous plug "cannot reasonably be considered to be both a vent and a seal at the same point in time" was not limited to claim 1. Throughout the trial, both sides treated the vent and seal limitations as being the exact same for both asserted claims. . . . As Magnolia's counsel stated in his closing argument, "about half of Claim 24 is identical to Claim 1," . . . ; and in their questioning of witnesses and their arguments to the jury and Court, both sides' counsel dealt with the vent and seal imitations as if they were identical for both asserted claims. Substantively, there is no difference between Kurin' s position with respect to why the Lock does not meet the vent and seal limitations of claim 1 and its position with respect to why the Lock does not meet the vent and seal limitations of claim 24. And for that reason, at the time Kurin's counsel made his Rule 50(a) argument, I understood-and I suspect Magnolia understood-that his discussion of the vent and seal limitations applied equally to both asserted claims.
Accordingly, I find that Kurin is entitled to a judgment of noninfringement of claims 1 and 24 of the #483 patent as a matter of law.
Id., 16-18. There were only two asserted claims, so that's the difference between winning and losing the whole case. If the attorney had omitted the vent+seal seal argument in their Rule 50(a) motion, the client would be paying a $2.1m lump sum verdict plus an ongoing royalty on every unit sold.
So, next time you are in trial:
- Think about your Rule 50(a) motion from the beginning, and consider drafting it in advance and adding any arguments that arise during trial;
- Don't shove it off on a junior associate without supervision;
- Consider making a written Rule 50(a) motion in addition to your verbal one, for filing after review by all of the relevant attorneys to ensure nothing is missed (before it's due); and
- Try to sleep at night during trial knowing that, if you did all of the above, you have a much better chance at not waiving your potentially case-winning post-trial JMOL grounds. But you still might.
If you enjoyed this post, consider subscribing to receive free e-mail updates about new posts.
