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Evidence Exclusion And Daubert Motion Denials Must Be Supported By Valid Legal Rule And Reasoning; Damage Calculation Must Account For Patents Not Asserted In The Case
08/05/2025In Jiaxing Super Lighting Elec. Appliance, Co. v. CH Lighting Tech. Co., Ltd, the Court of Appeals for the Federal Circuit reviewed the judgment in a patent infringement case involving three patents owned by Jiaxing Super Lighting Electric Appliance Co., Ltd. The patents in question—U.S. Patent Nos. 10,295,125 (’125 patent), 10,352,540 (’540 patent), and 9,939,140 (’140 patent)—relate to the physical configuration of LED tube lamps.
Prior to trial before the District Court for the Western District of Texas, CH Lighting conceded infringement of the ’125 and ’540 patents. At trial, the district court granted Super Lighting’s motions to exclude evidence relating to the validity of the asserted claims of the ’125 and ’540 patents and subsequently granted Super Lighting’s motion for judgment as a matter of law (“JMOL”) that the ’125 and ’540 patents were not invalid on the ground of an on-sale bar. The jury found the ’140 patent infringed and not invalid and awarded damages for infringement of claims of all three patents. CH Lighting appealed.
At the Federal Circuit, the central issue was whether the ’125 and ’540 patents were invalid under the on-sale bar provision of 35 U.S.C. § 102(a), which prohibits the patenting of inventions that were on sale before their effective filing dates.
In the district court, CH Lighting had attempted to authenticate documents that would establish the on-sale date of patented products through a new witness after CH Lighting’s original witness had become unavailable. But the district court excluded the new witness’s testimony on procedural grounds, finding insufficient notice. CH Lighting also tried to introduce documentary evidence that patented products were on the market before the patent filing date, but the district court also excluded this piece of evidence—first stating that it was only relevant to CH Lighting’s abandoned inequitable conduct defense, then later reasoning that the tubes described in the document were of a different wattage than the bulbs that CH Lighting’s expert had physically reviewed and analyzed.
The Federal Circuit held both exclusions to be an abuse of discretion. With respect to the exclusion of the authenticating witness, the Federal Circuit determined that there is no Federal Rule or local rule requiring parties to identify in advance which witnesses would authenticate documents. With respect to the exclusion of documentary evidence, the Federal Circuit found that the evidence did relate to invalidity (and not just inequitable conduct) and that the wattage was not relevant to the on-sale bar question (although it might be relevant to the expert’s credibility).
Regarding the ’140 patent, the Federal Circuit affirmed the jury’s infringement and validity verdicts, concluding that substantial evidence supported them.
The Court also addressed the admissibility and reliability of Plaintiff’s damages expert’s testimony under Rule 702 of the Federal Rules of Evidence and in light of the recent Federal Circuit EcoFactor, Inc. v. Google LLC case. Below, CH Lighting filed a Daubert motion and a motion for a new trial, arguing that—while the expert relied on prior portfolio licenses to calculate a reasonable royalty—the expert did not adequately apportion the license fees to account for patents in the portfolio that were not asserted in the case. Because the district court denied the Daubert motion without explanation and provided only a brief elaboration when denying the motion for a new trial, the Federal Circuit found that the district court should have conducted a more thorough analysis of the expert testimony to ensure its reliability and proper apportionment.
In sum, the Federal Circuit affirmed in part (as to infringement and validity of the ’140 patent), reversed in part (as to the JMOL on the ’125 and ’540 patents), vacated the damages award, and remanded for a new trial on the validity of the ’125 and ’540 patents and on damages for all three patents.
