Navcom Technology, Inc et al v. OKI Semiconductor America, Inc et alRESPONSEN.D. Cal.June 19, 2014DB2/ 25145157.4 PLAINTIFFS’ OPPOSITION TO DEFENDANT’S RULE 50(B) JMOL 5:12-CV-04175 EJD 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MORGAN, LEWIS & BOCKIUS LLP ATTORNEYS AT LAW SAN FRANCISCO MORGAN, LEWIS & BOCKIUS LLP BRETT M. SCHUMAN (SBN 189247) bschuman@morganlewis.com RACHEL M. WALSH (SBN 250568) rwalsh@morganlewis.com RYAN L. SCHER (SBN 244706) rscher@morganlewis.com JEREMY N. LATEINER (SBN 238472) jlateiner@morganlewis.com One Market, Spear Street Tower San Francisco, CA 94105-1126 Tel: 415.442.1000 Fax: 415.442.1001 Attorneys for Plaintiffs NavCom Technology, Inc. and Deere & Company UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION NAVCOM TECHNOLOGY, INC. and DEERE & COMPANY, Plaintiffs, vs. OKI ELECTRIC INDUSTRY CO., LTD. and DOES ONE THROUGH TEN inclusive, Defendants. Case No. 5:12-cv-04175 EJD PLAINTIFFS’ OPPOSITION TO DEFENDANT’S RULE 50(b) MOTION FOR JUDGMENT AS A MATTER OF LAW Date: September 12, 2014 Time: 9:00 a.m. Courtroom: 4 Judge: Hon. Edward J. Davila Trial Date: April 22, 2014 Case5:12-cv-04175-EJD Document338 Filed06/19/14 Page1 of 6 DB2/ 25145157.4 1 PLAINTIFFS’ OPPOSITION TO DEFENDANT’S RULE 50(B) JMOL 5:12-CV-04175 EJD 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MORGAN, LEWIS & BOCKIUS LLP ATTORNEYS AT LAW SAN FRANCISCO I. INTRODUCTION. Defendant Oki Electric Industry Co., Ltd. (“Oki”)’s three-page Rule 50(b) motion, Dkt. No. 332, should be denied in its entirety. First, while the paper is captioned as a Rule 50(b) motion, Oki’s primary argument is that Rule 50(b) does not apply to any of the issues addressed in Oki’s Rule 50(b) motion. Oki argues that Fed. R. Civ. Proc. 49(a) controls now but, curiously, Oki does not ask the Court to take any action under Rule 49(a). See Dkt. No. 332 at 1:20-24. Second, Oki’s Rule 50(b) motion is procedurally deficient because it does include any argument or points and authorities in support of any relief and it is impermissibly vague on whether it seeks relief on anything other than Oki’s novation and abandonment defenses, and on the issue of whether Plaintiff Deere & Company (“Deere”) is a third-party beneficiary of the Agreement. Oki purports to “incorporate[] . . . by reference in its entirety” its brief in support of its Rule 50(a) motion, which was denied as moot. See Dkt. Nos. 323, 332 at 1:8-10; 5/8/2014 Trial Tr. at 1732:25-1733:8. To the extent the Court permits this procedure, Plaintiffs likewise incorporate by reference the responsive arguments and evidence in support of Plaintiffs’ Rule 50(b) motion and Plaintiffs’ Opposition to Oki’s Rule 50(a) motion. See Dkt. Nos. 301, 330. Finally, Plaintiffs understand Oki to be taking the position that all parties (including Oki) waived any right to a jury trial they may have had on issues that the jury did not reach. See Dkt. No. 332 at 1:20-22. While Plaintiffs disagree with Oki’s position regarding the applicability of Fed. R. Civ. Proc. 49(a)(3), and waiver, Plaintiffs do not oppose resolution by the Court, as fact- finder, of any remaining factual issues following disposition of Plaintiffs’ Rule 50(b) and Rule 59 motions. II. ARGUMENT. A. Oki’s Motion Should Be Denied On Procedural Grounds On All Issues Other Than Novation, Abandonment, and Third-Party Beneficiary. Oki’s Rule 50(b) motion is procedurally flawed in that it purports to seek judgment as a matter of law on “all issues that were not decided by the jury’s verdict, including but not limited to the affirmative defenses of novation and abandonment, and the issue of plaintiff Deere & Company’s Case5:12-cv-04175-EJD Document338 Filed06/19/14 Page2 of 6 DB2/ 25145157.4 2 PLAINTIFFS’ OPPOSITION TO DEFENDANT’S RULE 50(B) JMOL 5:12-CV-04175 EJD 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MORGAN, LEWIS & BOCKIUS LLP ATTORNEYS AT LAW SAN FRANCISCO status as a third party beneficiary.” See Dkt. No. 332 at 1:1-7 (italics added). It is unclear what Oki’s “including but not limited to” reference encompasses. See Fed. R. Civ. P. 7(b)(1) (motion must state “with particularity the grounds for seeking the order”). Accordingly, at a minimum, Oki’s motion should be denied on all issues raised in its Rule 50(a) motion other than novation, abandonment, and third-party beneficiary. B. Oki’s Argument That The Parties Waived Their Right To A Jury Trial On Issues The Jury Did Not Reach Is Incorrect. Rule 49(a)(3) provides: A party waives the right to a jury trial on any issue of fact raised by the pleadings or evidence but not submitted to the jury unless, before the jury retires, the party demands its submission to the jury. If the party does not demand submission, the court may make a finding on the issue. If the court makes no finding, it is considered to have made a finding consistent with its judgment on the special verdict. Fed. R. Civ. P. 49(a)(3) (emphasis added). Here, Plaintiffs indisputably complied with Rule 49(a)(3) and preserved their right to a jury trial on the issue of whether Deere is a third party beneficiary as well as Oki’s affirmative defenses of novation and abandonment, among others. See e.g., Dkt. No. 211, 248, 303. In fact, in light of those demands, as well as the demands of Oki, see e.g., Dkt. Nos. 217, 246, 304, the special verdict form submitted to the jury included questions on all of those issues. See Dkt. No. 318 (Verdict Form) at Question #5, 6, 8. Oki contends, however, that all parties waived a jury trial on the third party beneficiary, novation and abandonment issues by failing to demand, after the jury had returned a verdict, that the verdict form be resubmitted to the jury to answer questions on those issues even though the jury had been previously instructed not to answer those questions if it found no breach of contract. See Dkt. No. 332 at 1:20-24. Rule 49(a)(3) is focused exclusively on submission of issues before the jury retires and does not address at all potential re-submission after the jury returns its verdict. Oki’s reliance on Goodwall Const. Co. v. Beers Const. Co., 991 F.2d 751 (Fed. Cir. 1993), is misplaced. Goodwall is a patent case from the Federal Circuit (where the Federal Circuit was applying 11th Circuit procedural law) in which the jury found infringement based on Case5:12-cv-04175-EJD Document338 Filed06/19/14 Page3 of 6 DB2/ 25145157.4 3 PLAINTIFFS’ OPPOSITION TO DEFENDANT’S RULE 50(B) JMOL 5:12-CV-04175 EJD 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MORGAN, LEWIS & BOCKIUS LLP ATTORNEYS AT LAW SAN FRANCISCO literal infringement and therefore did not reach the issue of infringement under the doctrine of equivalents. Id. at 754. The jury was instructed to answer “no” to all doctrine of equivalent questions if it found literal infringement. Id. at 756-57. After the trial, out of concern for possible reversal on literal infringement, the district court granted JMOL to the plaintiff on the doctrine of equivalents. Id. at 754. On appeal, the Federal Circuit affirmed the district court’s decision, but stated in dicta that the district court should have invoked Rule 49(a) instead of Rule 50(b). Id. at 757. Goodwall is not controlling and should not be followed for several reasons. First, Goodwall is not the law in the Ninth Circuit. It has never been cited on this point by the Ninth Circuit or any court in the Circuit. Indeed, on the issue Oki cites it for, it has only been cited once, by a subsequent Federal Circuit case. See Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1358 (Fed. Cir. 2012). As such, this Court is not bound to follow it. See O’Keefe v. Gillespie, No. 2:11-CV- 02109-GMN, 2012 WL 367048, at *3 (D.Nev. Feb. 2, 2012) (district courts in the Ninth Circuit are “bound to follow the holdings of the Ninth Circuit, not dicta from other circuits.”). Second, Goodwall was decided at a time when the procedural mechanism for a post-trial motion to obtain judgment on a jury issue not decided by a verdict was, at least to some, unclear. In 2006, however, Rule 50 was amended to provide a deadline for a Rule 50(b) “motion [that] addresses a jury issue not decided by the verdict.” See Advisory Committee Notes for 2006 Amendments to Fed. R. Civ. P. 50 (“an explicit time limit is added for making a post trial motion when the trial ends without a verdict or with a verdict that does not dispose of all issues suitable for resolution by verdict.”). Thus, to the extent the Federal Circuit found the proper procedure for a motion such as this to be unclear in 1993, the 2006 Amendment to Rule 50 clarified that Rule 50 is the proper procedure. Third, Goodwall misinterprets Rule 49(a). The effect of Rule 49(a) is that: “A party’s omission of a fact issue in the special verdict form waives the right to a trial by jury on that issue (unless, before the jury retires to deliberate, the party recognizes the error and demands submission of the issue).” See Fed. Civ. Trials & Evid. (The Rutter Group 2013) § 18:40, pp. 8- 14-15 (emphasis added; citations omitted). This understanding of Rule 49(a) is consistent with Therrell v. Georgia Marble Holdings Corp., 960 F.2d 1555 (11th Cir. 1992), which Goodwall cites for the proposition that “where neither party demands that an issue be presented to the jury, Case5:12-cv-04175-EJD Document338 Filed06/19/14 Page4 of 6 DB2/ 25145157.4 4 PLAINTIFFS’ OPPOSITION TO DEFENDANT’S RULE 50(B) JMOL 5:12-CV-04175 EJD 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MORGAN, LEWIS & BOCKIUS LLP ATTORNEYS AT LAW SAN FRANCISCO the parties consent to the court acting as a trier of fact on that issue and the court ‘[does] not issue the equivalent of a directed verdict.’” Goodwall, 991 F.2d at 757 (quoting Therrell, 960 F.2d at 1563) (brackets in original). That passage from Therrell states in its entirety: “Neither party demanded that the statute of limitations issue be presented to the jury. They therefore consented to the court acting as trier of fact on this issue, and the court ruled on the issue as a trier of fact; it did not issue the equivalent of a directed verdict.” Therrell, 960 F.2d at 1563. As discussed previously, unlike Therrell, both parties in this case demanded that the third party beneficiary, novation and abandonment issues be presented to the jury, and in fact they were presented to the jury. See Dkt. Nos. 211, 217, 246, 248, 303, 304 and 318. Accordingly, there was no waiver under Rule 49(a). C. Oki’s Motion Should Be Denied On The Merits For the Reasons Set Forth in Plaintiffs’ Rule 50(b) Motion and Plaintiffs’ Opposition to Oki’s Rule 50(a) Motion. Oki’s motion simply incorporates by reference its brief in support of its Rule 50(a) motion without further argument or support. See Dkt. No. 332 at 1:8-10. Plaintiffs likewise incorporate by reference the responsive arguments and evidence discussed in Plaintiffs’ Rule 50(b) motion and Plaintiffs’ Opposition to Oki’s Rule 50(a) motion. See Dkt. Nos. 301, 330. Oki’s Rule 50(b) motion mentions only its novation and abandonment defenses, and the issue of Deere’s status as a third-party beneficiary. Dkt. No. 332 at 1:5-7. Oki’s motion should be denied as to each issue: Novation. Oki’s argument that the 2006 amendment to the Agreement was a “novation” fails as a matter of law. See Dkt. No. 330 (Plaintiffs’ Rule 50(b) motion) at 16:16-17:2 (citing Stinnett v. Damson Oil Corp., 648 F.2d 576 (9th Cir. 1981)); see also Dkt. No. 301 (Plaintiffs’ Opposition to Oki’s Rule 50(a) motion) at 24:11-22; Abandonment. Oki failed to adduce any evidence of a mutual intent to abandon the Agreement. Indeed, the evidence establishes that Oki unilaterally terminated the Agreement long after the various dates when Oki contends the parties mutually abandoned it. See Dkt. No. 331-22 (PX 165, Oki’s July 8, 2008 termination Case5:12-cv-04175-EJD Document338 Filed06/19/14 Page5 of 6 DB2/ 25145157.4 5 PLAINTIFFS’ OPPOSITION TO DEFENDANT’S RULE 50(B) JMOL 5:12-CV-04175 EJD 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MORGAN, LEWIS & BOCKIUS LLP ATTORNEYS AT LAW SAN FRANCISCO letter); Dkt. No. 330 at 17:3-21:3 (establishing that Plaintiffs, not Oki, are entitled to JMOL on this purported defense); see also Dkt. No. 301 at 23:10-24:10. Deere’s status as third-party beneficiary. Plaintiffs adduced overwhelming evidence that Deere was the intended third-party beneficiary of the Agreement and that Oki knew this prior to entering into the Agreement. Contrary to Oki’s argument, Section 24 of the Agreement does not defeat Deere’s status as a third- party beneficiary. See Dkt. No. 301 at 17:1-18:19 (citing Prouty v. Gores Technology Group, 121 Cal.App.4th 1225 (2004)). Again, to the extent Oki’s Rule 50(b) motion purports to address other issues not specifically addressed in Dkt. No. 332, and to the extent the Court is willing to consider those issues, Plaintiffs respectfully incorporate and refer the Court to Plaintiffs’ Opposition to Oki’s Rule 50(a) motion, which addresses all issues raised by Oki in its Rule 50(a) motion, and to Plaintiffs’ Rule 50(b) motion. See generally Dkt. Nos. 301, 330. III. CONCLUSION. For the foregoing reasons, Plaintiffs respectfully request that the Court deny Oki’s Rule 50(b) motion. Dated: June 19, 2014 MORGAN, LEWIS & BOCKIUS LLP By: /s/ Brett M. Schuman Brett M. Schuman Attorneys for Plaintiffs NavCom Technology, Inc. and Deere & Company Case5:12-cv-04175-EJD Document338 Filed06/19/14 Page6 of 6