Judge Conditions New Trial Denial on Remittitur in Ice Cream Case

On June 9th, United States District Judge Colm F. Connolly in a memorandum opinion stated “I will deny the motion for new trial on the condition that Plaintiffs accept a remittitur,” which would lower the amount of damages awarded at trial.  

Plaintiffs, F’Real Foods, LLC and Rich Products Corporation originally filed a complaint in January 2016, alleging patent infringement against Hamilton Beach Brands, Inc. and Hershey Creamery Company.  The patents-in-suit were U.S. Patent Nos. 5,803,377; 7,144,150; 7,520,658; 7,520,662.  In 2010, Hamilton Beach reached out to F’Real about suppling milkshake blending equipment to various fast food restaurants, and ice cream stores.  Hamilton Beach obtained a license from F’Real so it would not risk infringing on it’s the ‘150, ‘658, and ‘662 patents, but by August 2011, Hamilton Beach terminated the license agreement.  Then in 2013, the complaint stated, “Hamilton Beach teamed up with co-defendant Hershey Creamery to go into direct competition with f’real in f’real’s core convenience store market.”  F’Real asserted “the MIC2000 blenders made by Hamilton Beach practice blending inventions disclosed and claimed in f’real’s ‘377 patent as well as blender sanitation inventions disclosed and claimed in f’real’s ‘150, ‘658 and ’662 patents.”

In April and May 2019, a four-day jury trial was held, where ultimately the jury awarded plaintiffs $2,988,869.00 in lost profits.  Since then the defendants have filed a Renewed Motion for Judgment as a Matter of Law of No Lost Profits or, in the Alternative, Motion for a New Trial on or Remittitur of Lost Profits, as described in a letter to Judge Connolly. 

Judge Connolly granted the defendants’ Renewed Motion for Judgement as a Matter of Law of Noninfringement of Claim 21 of the ‘662 patent, and further noted “as here, a judge makes a posttrial ruling of noninfringement of a patent claim as a matter of law and “the jury rendered a single verdict on damages, without breaking down the damages attributable to each patent, the normal rule would require a new trial as to damages.”  But Judge Connolly also noted “the Federal Circuit has also directed courts to “apply a harmlessness analysis” before ordering a new trial and has said that a new trial is not “automatically required” if a reasonable jury would have found the same damages award even without the error.”  To support his opinion, Judge Connolly noted the jury found Hamilton Beach’s MIC2000 infringed on claims 20 and 22 of the ‘150 patent and claims 1 and 5 of the ‘658 patent.  Specifically, because of that he stated, “Those other findings of infringement independently support the jury’s lost profits award because those apparatus claims cover the entire MIC2000. Accordingly, my ruling of noninfringement of claim 21 of the #662 Patent does not make it necessary to order a new trial on damages.”

Judge Connolly did agree with defendants’ argument that the plaintiffs’ damages expert’s damages calculation “attributable to when Hershey rented its machines [was] flawed.”  F’Real argued lost profits for renting was roughly $150.00 per month, because that was what Hershey rented its machines for.  However, F’Real offered up no evidence at trial that it ever rented its machines for $150.00 per month or would.  Dr. Akemann, the plaintiffs’ damages expert, calculated lost rental profits as $897,028.00.  So, Judge Connolly stated he will deny the motion for a new trial if the plaintiffs “accept a remittitur to the amount of $2,091,841.00,” essentially no lost rental profits.

Counsel for the plaintiffs is Morris, Nichols, Arsht & Tunnell LLP, and Sideman & Bancroft LLP.  Defendants are being represented by Faegre Drinker Biddle & Reath LLP.  This case is in the District of Delaware.