Patent Lawyer Blog
A federal district court in Idaho has denied McCain Foods’ motions for judgment as a matter of law and for a new trial, leaving intact a jury verdict that McCain’s “Twisted Potato” French fry willfully infringed J.R. Simplot Company’s design patent and that McCain’s own design patent is invalid and not infringed.
In J.R. Simplot Company v. McCain Foods USA, Inc., Judge David C. Nye rejected every ground McCain raised, in a decision that touches on proof of infringement through photographs, the standard for willfulness, and the consequences of failing to move for judgment as a matter of law during trial.
Simplot sued McCain in 2016, alleging that the Twisted Potato infringed Simplot’s U.S. Patent No. D640,036, a design patent titled “Spiral Potato Piece.” McCain filed its own suit alleging that Simplot’s “Sidewinder” fry infringed McCain’s design patent, U.S. Patent No. D720,916, titled “Root Vegetable Product.” The jury found that the Twisted Potato infringed Simplot’s ‘036 Patent and that the infringement was willful, though it awarded Simplot zero dollars in damages. On McCain’s ‘916 Patent, the jury found no infringement by the Sidewinder and found the patent invalid.
McCain moved for judgment as a matter of law or a new trial on both patents.
On infringement of the ‘036 Patent, McCain argued that Simplot never showed the jury what the accused Twisted Potato actually looked like, because the only product McCain sold into the United States was a “distressed” lot of 4,806 cases that did not conform to its specifications. The Court disagreed. Simplot presented physical samples shown at McCain’s national sales meeting, focus group materials, and McCain’s own advertising, including a product guide, rebate sheet, and YouTube video. As the Court explained, “Simplot showed the jury a plethora of images (and videos), with multiple views of the Twisted Potato” and “was not required to produce a physical sample of the Twisted Potato or call an expert to describe it.” The Court also noted that the distressed nature of the products did not “render them exempt from § 271(a),” and that McCain’s own witness testified the SKU for the distressed product was the same as the SKU for the non-distressed product.
The Court likewise rejected McCain’s argument that Simplot failed to compare the accused product to all seven figures of the patent, finding that Simplot “showed the jury numerous images correlating to figures 1–7 of the ‘036 Patent in conformance with its legal obligations.”
On willfulness, McCain argued the verdict could not stand because Simplot failed to show conduct that was “wanton, malicious, and bad-faith.” The Court held that McCain was imposing a heightened standard the Federal Circuit has expressly disavowed, quoting the Federal Circuit’s clarification that “the concept of willfulness requires a jury to find no more than deliberate or intentional infringement.” The evidence included an internal McCain email commenting that the author would “hate to see Simplot be the innovation leaders” in the space, testimony that McCain was monitoring Simplot’s product development, and testimony that McCain had identified Simplot’s intellectual property as a corporate risk. As the Court put it, “Whether or not McCain was acting with maliciousness is irrelevant. The question is just whether it was acting deliberately and intentionally. It is clear it was—by its officers’ own admissions.” Nor did McCain’s own ‘916 Patent provide a defense, because “the existence of one’s own patent does not constitute a defense to infringement of someone else’s patent.”
The waiver rulings may be the most instructive part of the decision. McCain sought judgment as a matter of law that the ‘036 Patent was invalid, but it never moved under Rule 50(a) on invalidity before the case went to the jury. In fact, when Simplot moved for judgment as a matter of law on McCain’s invalidity defense, McCain responded that “there’s at least a jury issue” and that the matter “should go to the jury.” The Court held that “closing arguments are no substitute for an actual Rule 50(a) motion” and that McCain could not challenge the jury’s verdict on invalidity now.
The same problem doomed McCain’s motion on its own ‘916 Patent. McCain never moved for judgment as a matter of law at the close of its case-in-chief or at the close of evidence, and its post-verdict omnibus “renewal” of “judgment as a matter of law on all issues that the jury found adverse to McCain” could not cure the defect, because “one cannot renew something that was never made in the first place.” The Court also refused to treat McCain’s objections to jury instructions as an inartful Rule 50 motion, observing that “it is one thing to say, ‘the other side didn’t meet their burden’ and ‘we affirmatively deserve judgment.’ McCain did the former, not the later.” Quoting a recent Ninth Circuit decision, the Court noted that the purpose of the strict Rule 50(a) requirement “is to discourage sandbagging—remaining silent about the deficiency until it is too late to correct except by way of a new trial.”
Finally, the Court denied McCain’s request for a new trial based on alleged jury confusion. McCain argued that Simplot confused the jury by referencing its commercially sold Sidewinder product after taking the position, shortly before trial, that the Sidewinder was not the embodiment of the ‘036 Patent. The Court acknowledged its own frustration with Simplot’s shifting position, noting it had previously observed that “[t]he fact that they changed has a feeling of hiding the ball.” But the Court found Simplot complied with its rulings at trial, the Court gave a limiting instruction that the jury “may not consider the ‘036 Patent and its drawings as the same as any commercially sold Sidewinders product,” and McCain “cannot point to any question from the jury creating even an inference that they were confused.”
The decision offers several practical lessons. Photographs and marketing materials can be sufficient to prove design patent infringement without a physical sample or expert testimony. Willfulness requires only deliberate or intentional infringement, not malice. And most importantly, a party that wants to preserve judgment as a matter of law must actually make a Rule 50(a) motion on each issue before the case goes to the jury. Objections to instructions, closing arguments, and post-verdict omnibus renewals will not do the job.
J.R. Simplot Company v. McCain Foods USA, Inc., Case No. 1:16-cv-00449-DCN (D. Idaho Aug. 17, 2026)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels & Mitchell LLP. For more information about this case, contact Stan Gibson at SGibson@Jeffer.com.