Making the Right Moves: District Court Finds Waiver on Rule 50(b) Motion Because the Patentee Raised a Different Issue in Its Rule 50(a) Motion

July 11, 2023

Reading Time : 2 min

By: Jason Weil, Rachel J. Elsby, Ange Christiani

The District Court for the District of Delaware recently held a patentee waived its right to seek JMOL on infringement following a jury verdict of non-infringement because the patentee’s Rule 50(a) motion focused solely on the issue of validity. As a result of the district court’s ruling, the patentee is likely precluded from seeking appellate review relating to the sufficiency of the evidence of the jury’s adverse verdict on infringement.

At trial, both Plaintiff/Patentee (Deere) and Defendant/Accused Infringer (Precision Planting) brought motions for JMOL under Rule 50(a). Deere requested JMOL of only invalidity, while Precision broadly sought JMOL on essentially all issues raised at trial. The district court deferred ruling on Deere’s motion, and granted Precision’s motion in-part. Notably, the district court denied Precision’s motion for JMOL of non-infringement.

Following the district court’s rulings, the jury returned a verdict of non-infringement on all asserted claims. Because the verdict form specifically instructed the jury to only reach the question of invalidity in the event it found infringement, the jury did not make any determination with respect to invalidity.

Post-verdict, Deere attempted to renew its motion for JMOL under Rule 50(b), but rather than renew its motion on invalidity (an issue not reached by the jury), Deere instead argued that it was entitled to JMOL under Rule 50(b) on the issue of infringement.

Precision disputed the appropriateness of Deere’s Rule 50(b) motion, arguing that Deere waived its right to seek JMOL of infringement because it failed to make that argument in its Rule 50(a) motion. Deere did not dispute that it failed to seek judgment of infringement under Rule 50(a), but argued that no formal motion was required because the district court stated that it was sending infringement to the jury when it denied Precision’s Rule 50(a) non-infringement motion.

The district court rejected that argument, holding a Rule 50(b) motion can only be decided on the particular grounds advanced by the movant in its own Rule 50(a) motion at the conclusion of the non-moving party’s case. Deere could not rely on Precision’s motion to avoid waiver because the standard for a party who bears the burden of proof are different from a party who does not and because a party must specify the judgment sought and supporting facts in its Rule 50(a) motion in order to preserve an issue for judgment under Rule 50(b). The district court added that it would have denied Deere’s JMOL on infringement even if not waived because there was sufficient evidence produced at trial from which a reasonably jury could find Precision had not infringed.

Importantly, the district court’s waiver determination likely extends to Plaintiff’s ability to seek appellate review of the sufficiency of the evidence of infringement. See Salazar v. AT&T Mobility LLC, 2023 WL 2778774 (Fed. Cir. Apr. 5, 2023) (emphasis added). The Federal Circuit recently found waiver in a case involving similar circumstances where a party raised Rule 50(a) motions on certain grounds, only to appeal other grounds. Id. There, the court reasoned, “[a] party must make proper motions under Rule 50 in order to appeal an adverse verdict on grounds related to sufficiency of the evidence.” Id. at *6.

Practice Tip: It is important to challenge at the Rule 50(a) stage every aspect of a case that a party may wish to challenge in a post-verdict Rule 50(b) motion and on appeal to ensure that arguments are properly preserved both at the trial court and before the Federal Circuit.

Share This Insight

Previous Entries

IP Newsflash

August 5, 2025

The Federal Circuit recently vacated a decision by the Patent Trial and Appeal Board after concluding that the board’s analysis of licensing evidence offered as a secondary consideration of nonobviousness constituted legal error and was not supported by substantial evidence. According to the court, the board applied a more exacting and improperly heightened nexus standard than is required by law for license evidence.

...

Read More

IP Newsflash

August 5, 2025

In a recent decision designated as Informative, the USPTO Director determined that the Patent Trial and Appeal Board abused its discretion by instituting two inter partes review proceedings challenging the same patent, based on petitions advancing different constructions of the same claim term. The Director expressed concerns that permitting multiple petitions based on alternative claim constructions effectively circumvents word count limitations, strains board resources, and undermines procedural efficiency.

...

Read More

IP Newsflash

July 25, 2025

Earlier this year, the Federal Circuit’s decision in Qualcomm Inc. v. Apple Inc. (Qualcomm II) raised questions about the extent to which petitioners can rely on applicant admitted prior art (“AAPA”) in inter partes review proceedings.  The Federal Circuit’s recent decision in Shockwave Medical, Inc. v. Cardiovascular Sys., Inc. largely cabins the Qualcomm II decision to its particular facts and makes clear that AAPA can be used as evidence of background knowledge as part of an obviousness argument.

...

Read More

IP Newsflash

July 11, 2025

The Federal Circuit recently reversed a PTAB determination on remand that a patent was obvious over applicant admitted prior art (“AAPA”) in combination with prior art patents, holding that expressly designating AAPA as a “basis” for a ground is improper under 35 U.S.C. § 311(b). In doing so, the Court rejected the PTAB’s “blanket rule” that “AAPA used in combination with prior art patents or printed publications under § 311(b) is ipso facto not the basis or part of the basis of a ground.” Ultimately, while the case clarifies that expressly listing AAPA in an IPR ground is improper, the precise line between proper and improper uses of AAPA in other instances remains unclear.

...

Read More

IP Newsflash

July 1, 2025

In an appeal from an inter partes review, the Federal Circuit recently clarified that the enablement inquiry applied to prior art references in the context of an anticipation defense differs from the enablement inquiry applied when evaluating the claims of a patent.

...

Read More

IP Newsflash

June 26, 2025

The Northern District of Ohio denied a motion to compel the plaintiff to produce test results referenced in its initial disclosures and complaint. The court found that because the “test results are not facts but rather are opinions,” the information was protected as work product. Furthermore, because that testing would not be used as evidence in the litigation, the defendant was not prejudiced.

...

Read More

IP Newsflash

June 6, 2025

In a precedential opinion, the Federal Circuit definitively held that the Patent Trial and Appeal Board has jurisdiction over IPRs that concern expired patents.

...

Read More

IP Newsflash

June 6, 2025

In a patent infringement litigation in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap denied a joint motion to stay the litigation pending resolution of inter partes review when it was uncertain that all defendants would be bound by the statutory estoppel provision of 35 U.S.C. § 315(e).

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.