1

UNITED STATES DISTRICT COURT FOR THE 

SOUTHERN DISTRICT OF FLORIDA 

MIAMI DIVISION

DECURTIS LLC,

Plaintiff, 

v. 

CARNIVAL CORPORATION, 

Defendants. 

Case No: 20-22945-CivScola/Torres

CARNIVAL CORPORATION, 

Plaintiff, 

v. 

DECURTIS CORPORATION, and 

DECURTIS LLC, 

Defendants. 

CARNIVAL CORPORATION’S MOTION FOR JUDGMENT 

AS A MATTER OF LAW PURSUANT TO RULE 50(a) 

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Carnival Corporation respectfully requests that the Court grant judgment 

as a matter of law in Carnival’s favor on all the grounds and for all the reasons 

discussed below. 

The Federal Rules of Civil Procedure permit this Court to grant judgment 

as a matter of law in favor of Carnival on any issue if it “finds that a reasonable 

jury would not have a legally sufficient evidentiary basis to find for [DeCurtis] on 

that issue.” Fed. R. Civ. P. 50(a)(1). This judgment, also called a directed verdict, 

is appropriate if “the facts and inferences so overwhelmingly favor the verdict 

that no reasonable juror could reach a contrary conclusion.” Carruthers v. BSA 

Advertising, Inc., 357 F.3d 1213, 1215 (11th Cir. 2004) (citation omitted). A “mere 

scintilla of evidence does not create a jury question”; rather, “a substantial 

conflict in evidence” is required to defeat a motion under Rule 50(a). Williams v. 

Motorola, Inc., 303 F.3d 1284, 1290 (11th Cir. 2002) (citation omitted). 

I. A REASONABLE JURY COULD ONLY FIND THAT DECURTIS 

BREACHED THE MSA. 

Carnival is entitled to judgment as a matter of law on its breach of contract 

claim. The evidence of breach is so overwhelming that no reasonable jury could 

fail to conclude that Carnival proved its case by a preponderance of the evidence. 

It is undisputed that Carnival and DeCurtis entered into the MSA. Jury 

Instr. 6.1. And the evidence establishes that Carnival complied with its 

obligations under the contract and that the conditions required for DeCurtis’s 

performance had occurred. Id.; see, e.g., 3/7 Trial Tr. 135:5-17 (Mr. Learish 

agreeing that DeCurtis “was paid for all the work it did under all 22 of those 

SOWs” that fell under the MSA). To succeed on its claim, therefore, Carnival 

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needs to show (1) that “DeCurtis failed to do something essential which the MSA 

required it to do or DeCurtis did something which the MSA prohibited it from 

doing and that prohibition was essential to the MSA” and (2) that “Carnival was 

damaged” by DeCurtis’s conduct. Jury Instr. 6.1. There can be no dispute that 

Carnival has made this showing. 

Breach of Article 4. Under the MSA, DeCurtis agreed it would “not use 

any Carnival Information for its own use or for any purpose” other than 

performing under the MSA, nor would it “disclose any Carnival Information to 

any other person or entity.” Ex. P-1 at 6 (MSA Art. 4.1). “Carnival Information” 

includes both “Deliverables”—defined as “all material prepared for Carnival 

under this Agreement (including each SOW hereto)”—and “Confidential 

Information,” including “any information of any nature and in any form” that 

DeCurtis learned “in connection with this Agreement.” Id.; see 2/28 Trial Tr. 

106:8-11 (Mr. Padgett testifying that Article 4 was of “[t]he highest” importance 

to Carnival). While the MSA entitled DeCurtis “to use the general knowledge, 

know how, experience or the skill ... gained while providing Services under this 

Agreement,” Carnival specifically restricted that right to ensure that DeCurtis’s 

use of such experience would be “without the aid of written materials of any type 

produced in connection” with the work performed for Carnival. Ex. P-1 at 7 (MSA 

Art. 4.4); see 2/28 Trial Tr. 115:12-16 (Mr. Padgett testifying he “specifically 

wrote” this caveat). 

The evidence establishes that DeCurtis violated Article 4 repeatedly 

through its use of Carnival’s proprietary information and property for other 

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clients and its disclosure of Carnival’s valuable non-public information to those 

clients. There is extensive evidence of DeCurtis using and disclosing material it 

prepared for Carnival under the MSA in its work for other clients. Multiple 

DeCurtis witnesses acknowledged that this was true. See, e.g., D.E. 549.01 

101:20-103:18 (Ms. Agrawal testifying that prototypes that had been “prepared 

for Carnival” were “repurposed” to be “used and made brand specific for a new 

potential client”), 105:17-106:2 (Ms. Agrawal testifying that the Greeter app that 

was “prepared for Carnival” was being demoed to a potential new customer), 

106:03-106:22 (Ms. Agrawal testifying that “the prototypes that were prepared 

for Carnival as part of Project trident” were then “reused for a demo for a potential 

new customer[] for DeCurtis”), 146:07-147:16 (Ms. Agrawal testifying that 

DeCurtis used prototypes prepared for Carnival “in the work that [DeCurtis was] 

doing for Virgin”), 157:04-158:02 (Ms. Agrawal testifying that the “starting point” 

for DeCurtis’s work for Virgin was “the Carnival Studio Prototype user interface”); 

3/7 Trial Tr. 167:18-168:21 (Mr. Learish testifying that DeCurtis was “using 

Carnival studio prototypes to do the work for Virgin”); see also, e.g., Ex. P-348; 

Ex. P-519; Ex. P-753; Ex. P-754; Ex. P-755; Ex. P-756; Ex. P-766; Ex. P-772; 

Ex. P-773; Ex. P-809; Ex. P-886; Ex. P-887; Ex. P-888; Ex. P-889; Ex. P-890; 

Ex. P-895; Ex. P-896; Ex. P-897; Ex. P-1325. This conduct cannot reasonably 

be deemed use of “general knowledge, know how, experience or ... skill”—

certainly not given the extensive use of “written materials of any type produced 

in connection” with Project Trident. Ex. P-1 at 4 (MSA Art. 4.4). 

The testimony from Norwegian Cruise Lines’ Vice President of Guest 

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Experiences and Innovation accords with this evidence. According to Mr. Murray, 

DeCurtis in 2016 told Norwegian “[t]hat DeCurtis were working on a proof of 

concept of an on-board guest experience [for Carnival] that used a medallion.” 

D.E. 549.02 61:10-21. Mr. DeCurtis even went so far as to bring a Carnival 

Medallion to Norwegian’s offices and leaving it with Mr. Murray’s team for review. 

Id. 59:19-60:08; Ex. P-900. According to Mr. Murray, Norwegian understood that 

Mr. DeCurtis was “trying to market or sell the work that he had done for 

Carnival.” Id. 62:12-15. 

Furthermore, as Carnival’s expert testified, DXP’s location engine software 

contains approximately 200 lines of “bespoke” Carnival-owned source code 

reflecting Carnival’s specific implementation of a finely-tuned Kalman filter-- 

software that was indisputably written for Carnival under various Project OCEAN 

statements of work.; 3/6 Trial Tr. 92:11-96:4 (discussing SOW for bespoke code); 

149:17 (“This is Carnival’s location engine.”); see also Ex. P-346. While DeCurtis 

has made much of the fact that Kalman filters generally are known, 3/7 Trial Tr. 

214:7-16, that is irrelevant. Carnival’s expert analyzed Level 11’s pre- and postOCEAN code; concluded that there were differences; and determined that the 

code added as part of Level 11’s work for Carnival now appears in DeCurtis’s 

source code. 3/6 Trial Tr. 148:2-14. DeCurtis’s expert agreed that the Kalman 

filter in DXP’s source code came from Level 11, and he did not disagree that it 

came from the work Level 11 did on Project Trident. 3/9 Rough Trial Tr. AM 

57:9-11 (Dr. Shoemake). This code is unquestionably protected by the MSA, at 

least as “Confidential Information,” and DeCurtis violated its obligation not to 

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“use any Carnival Information for its own use” or otherwise outside of the MSA. 

Ex. P-1 at 6. 

DeCurtis has attempted to defend its misuse of Carnival information and 

deliverables by suggesting that it was simply reusing its own pre-existing 

material that DeCurtis had prepared prior to its work for Carnival. See, e.g., 3/9 

Rough Trial Tr. AM 27:21-28:3 (Mr. DeCurtis). But there is no evidence to 

support this claim. On the contrary, the evidence establishes that the only 

preexisting software actually owned by DeCurtis was the DeCurtis Mobile 

Assembly Suite, an application that was not used by Carnival and is not the 

subject of this dispute. See, e.g., 3/1 Trial Tr. 104:7-15 (Mr. Jungen testifying 

that “MAS, Mobile Assembly System,” was not used in Carnival’s system); id. at 

45:11-15 (Mr. Padgett testifying that DeCurtis “was not a product company, with 

the exception of one product, MAS”). The remaining applications that DeCurtis 

has tried to claim as its own were all the property of Disney. See Ex. D-614 (2015 

document identifying every DeCurtis experience except the Mobile Assembly 

Suite as being for “DCL” or “NGE,” both Disney projects); 3/8 Trial Tr. 74:16-

75:23 (Mr. Schwalb, former Disney Chief Technology Officer, testifying that these 

were all “projects that Disney is commissioning DeCurtis to do work for Disney”); 

3/8 Trial Tr. 77:11-16 (Mr. Schwalb testifying that he “suppose[d] [Disney] 

wouldn’t like it” if a contractor took work owned by Disney and used it with other 

customers). 

Moreover, even if there were a basis to find that DeCurtis had preexisting 

work product that it used for Project Trident, that would provide no defense to 

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the breach of contract claim. If DeCurtis intended to bring prior proprietary 

work to Project Trident, it was required to disclose that intention “in writing” and 

receive “approval” from Carnival in order to prevent such material from becoming 

“property of Carnival.” Ex. P-2 (SOW 1 at 2). The undisputed testimony is that 

DeCurtis never provided any such disclosure, and that Carnival never gave any 

such approval. See, e.g., 2/28 Trial Tr. 137:22-138:3 (Mr. Padgett); 3/1 Trial Tr. 

102:8-104:6 (Mr. Jungen). No reasonable jury could infer, therefore, that any of 

the Carnival information that was repurposed or reused for other DeCurtis 

clients had legitimately originated from DeCurtis’s prior work or that it was not 

the property of Carnival. 

Breach of Section 3.4. The MSA required DeCurtis to “keep accurate and 

complete records of all matters relevant to or as required by this Agreement,” 

and entitled Carnival to have “access to inspect [DeCurtis’s] relevant books and 

records at any reasonable time or times upon prior notice to [DeCurtis] in order 

to ... [e]nsure compliance by [DeCurtis] with its obligations hereunder.” Ex. P-1 

at 5 (MSA § 3.4); see 2/28 Trial Tr. 118-19 (Mr. Padgett testifying that this 

provision was “[e]xtremely” important to Carnival). This access right was to be 

“exercised at the discretion of Carnival.” Ex. P-1 at 5 (MSA § 3.4). When Carnival 

had reason to believe that DeCurtis was not complying with its obligations under 

the MSA—namely, because it was reusing Carnival’s Confidential Information 

with other cruise line customers—Carnival invoked its rights under Section 3.4 

and asked DeCurtis “to audit their records to understand compliance with the 

contract.” 2/28 Trial Tr. 175:13-14; see Ex. P-1827. 

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DeCurtis undisputedly did not permit Carnival to perform an audit. 

DeCurtis instead responded that it would “decline[] the requested audit.” Ex. P23 

at 1; 3/7 Trial Tr. 124:14-16 (Mr. Learish agreeing that “an audit request was 

made” and “DeCurtis’s lawyers declined the request”). Even after further 

correspondence, DeCurtis continued to refuse Carnival the access it was 

guaranteed to DeCurtis’s books and records relevant to compliance with the 

MSA. DeCurtis offered to “make ... available” certain narrow categories of 

information, Ex. P-711, but that is not what Section 3.4 contemplates. Although 

DeCurtis’s witness testified that the company was “willing to provide everything 

that [it] had in terms of books and records that [it] thought were relevant,” 3/8 

Trial Tr. 15:5-8 (Mr. Carino), there is no evidence that such willingness was ever 

communicated to Carnival back in 2020 when it requested the audit. See id. 

29:11-15 (playing deposition clip of Mr. Carino recalling “that DeCurtis did not 

permit Carnival to audit DeCurtis”). And it is undisputed that DeCurtis did not 

produce—let alone permit inspection of—any relevant records until well into the 

course of this litigation. See D.E. 163 at 2-8 (largely granting, more than a year 

into the litigation, Carnival’s motion to compel DeCurtis to provide this 

information in discovery). Instead, within weeks of receiving Carnival’s audit 

request, DeCurtis filed this litigation. 2/28 Trial Tr. 176:5-18 (Mr. Padgett). 

Damages. No reasonable jury could find that Carnival was not damaged 

by DeCurtis’s breaches discussed above. The record contains ample, undisputed 

evidence of harm. As Carnival’s damages expert testified, “Carnival didn’t get 

what it paid for” when it contracted with DeCurtis, which was “exclusive use” of 

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the material developed as part of Project Trident. 3/7 Trial Tr. 222:14-25 (Dr. 

Coleman testifying that this caused Carnival “significant harm”). Mr. Padgett 

illustrated some of the concrete effects of this broken bargain, testifying to 

Carnival’s attempts to mitigate the devastating financial effects of the COVID-19 

pandemic on the cruise industry. When Carnival tried to market its innovative 

OCEAN platform to investors to raise capital, it was told that the platform was 

“not bespoke,” because DeCurtis had the same product. 2/28 Trial Tr. 177:16-

178:23 (Mr. Padgett). Moreover, DeCurtis’s misuse of Carnival’s proprietary 

information—and its stonewalling of Carnival’s requests to investigate the 

records that would ultimately prove that misuse—forced Carnival to spend years 

engaging in this litigation, including defending against DeCurtis’s now-rejected 

claims of tortious interference, antitrust violations, and other supposed 

misconduct. Beyond the direct financial costs, Carnival also suffered “the 

opportunity cost of time”—and it did so at a particularly painful point, “during 

COVID, under extreme financial stress.” 2/28 Trial Tr. 177:1-6 (Mr. Padgett). 

There is no contrary evidence, and no reasonable jury could find that 

Carnival was unharmed by DeCurtis’s violation of its contractual obligations. 

Furthermore, no reasonable jury could award damages of less than the modest 

$3.2 million that Carnival’s damages expert calculated. 3/7 Trial Tr. “An award 

of damages for breach of contract is intended to place the injured party in the 

position he or she would have been in had the breach not occurred.” Mnemonics, 

Inc. v. Max Davis Assocs., Inc., 808 So. 2d 1278, 1280 (Fla. Dist. Ct. App. 2002). 

Dr. Coleman applied this principle in her analysis, conservatively calculated the 

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amounts that were paid to DeCurtis for work performed under the MSA, and 

verified the resulting number by looking to other estimates of economic 

reasonability. 3/7 Trial Tr. 220, 222-24. DeCurtis did not present a competing 

damages analysis. No reasonable jury could find that DeCurtis’s breach caused 

Carnival any less harm than the minimum $3.2 million that Carnival paid 

DeCurtis, without receiving the expected benefit of exclusive use of the work that 

Carnival commissioned. 

II. A REASONABLE JURY COULD ONLY FIND THAT DECURTIS 

INFRINGED THE ’184 PATENT. 

Carnival bears the burden of proving patent infringement by a 

preponderance of the evidence. Jury Instr. 9.1. No reasonable jury could find 

that Carnival failed to meet this burden. See, e.g., Broadcom Corp. v. Emulex 

Corp., 732 F.3d 1325, 1330-31, 1333 (Fed. Cir. 2013) (affirming grant of Rule 

50(a) judgment of patent infringement). 

Direct infringement. Carnival has shown that DeCurtis directly infringed 

claims 11, 12, and 15 of the ’184 patent. Carnival’s expert demonstrated that 

the DXP system—as described in DeCurtis’s presentation to investors and 

prospective customers—meets every limitation of the asserted claims. See 3/6 

Trial Tr. 182:3-197:8 (Mr. de la Iglesia). DeCurtis’s non-infringement position 

consists primarily of legally irrelevant statements, for example about the guest 

engagement systems currently used on Norwegian and Virgin ships. See, e.g., 

3/9 Rough Trial Tr. AM 60-61 (Dr. Shoemake). Even though Norwegian 

eventually fired DeCurtis for poor performance, Ex. P-796, and Virgin eventually 

agreed with Carnival to avoid using infringing technology, 3/1 Trial Tr. 36:9-18 

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(Mr. Padgett), that does not erase past infringement. DeCurtis’s expert also took 

an unduly narrow view of what it means to “make” an infringing system. 3/9 

Rough Trial Tr. AM 64 (Dr. Shoemake). “[A] final assembler can be liable for 

making an infringing combination ... even if it does not make each individual 

component element.” Centrak, Inc. v. Sonitor Techs., Inc., 915 F.3d 1360, 1372 

(Fed. Cir. 2019). And even if DeCurtis were not an infringing finally assembler, 

DeCurtis’s expert’s suggestion that DeCurtis cannot “offer to sell” anything it 

doesn’t also “make” is simply wrong. See 3/9 Rough Trial Tr. AM 64:12-13 (“They 

don’t make and, therefore, they don’t offer to sell.”) (Dr. Shoemake). The patent 

statute separately calls out making and offering to sell as different acts of 

infringement. 35 U.S.C. § 271(a). And DeCurtis’s contracts with Norwegian and 

Virgin plainly reflect offers to sell a “guest experience system[].” Ex. P-908. 

DeCurtis has not rebutted Carnival’s showing that the system DeCurtis 

offered to sell met each limitation of claims 11, 12, and 15 of the ’184 patent. 

Nor has DeCurtis rebutted Carnival’s showing that the testing conducted at 

Virgin’s Florida facility constituted “use” of an infringing system. DeCurtis’s 

defense relies on the assertion that the testing included only one door panel and 

thus lacked “a plurality of sensors” and a “communication network.” 3/9 Trial 

Tr. 69:19-70:16 (Dr. Shoemake). But the contemporaneous evidence of testing 

belies that assertion. See, e.g., Ex. P-1864; Ex. P-1865; Ex. P-1866; Ex. P-1867. 

It also belies any suggestion that the testing was unsuccessful at unlocking the 

door. See, e.g., 3/7 Trial Tr. 118:5-23 (Mr. Learish acknowledging successful 

testing of the Virgin wearable device triggering the door panel). 

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DeCurtis’s § 272 Defense. DeCurtis has asserted an affirmative defense 

under 35 U.S.C. § 272, which excludes from infringement “[t]he use of any 

invention in any vessel, aircraft or vehicle of any country which affords similar 

privileges” to U.S. vessels “entering the United States temporarily or 

accidentally.” This defense applies only if the invention is not “offered for sale or 

sold in” the United States. 35 U.S.C. § 272. DeCurtis’s defense fails as a matter 

of law, for at least the reason that DeCurtis’s DXP system is offered for sale in 

the United States (and has been used in the United States). See supra 9-10. 

Inducement. Carnival has shown that DeCurtis induced infringement of 

all asserted claims of the ’184 patent in multiple ways. First, to the extent that 

the testing described above was conducted by Virgin, not by DeCurtis, it 

constitutes direct infringement by Virgin. DeCurtis is “liable as an infringer” for 

“actively induc[ing]” that infringement. 35 U.S.C. § 271(a). DeCurtis served as 

the general contractor and, through that role, “actively induced others to 

infringe.” 3/6 Trial Tr. 179:2-7 (Mr. de la Iglesia); see also, e.g., 3/8 Trial Tr. 

230:18 (Mr. DeCurtis describing himself as “Virgin’s chief architect”). And it is 

undisputed that DeCurtis was aware of Carnival’s patent. 

Second, DeCurtis used that same general contractor role to actively induce 

infringement by Virgin on its ships. The undisputed evidence is that DeCurtis 

provided wearables with BLE capability to Virgin, and that Virgin used these 

wearables for location services on its ship until March 2022. 3/8 Trial Tr. 67:19-

24 (Mr. Schwalb); see also 3/9 Rough Trial Tr. PM 20 (Dr. Shoemake). As 

specified in DeCurtis’s September 2019 contract with Virgin, those wearables 

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included “a beacon with an Assa Abloy format.” 3/9 Rough Trial Tr. PM 22; see 

Ex. P-562 at 18. The only reasonable inference is that the wearables were being 

used in conjunction with Assa Abloy’s BLE-capable door panels. 

Contributory infringement. Carnival has shown that DeCurtis infringed 

the ’184 patent by “offer[ing] to sell or sell[ing] within the United States ... a 

component of a patented” system that “constitut[es] a material part of the 

invention, knowing the same to be especially made or especially adapted for use 

in an infringement of such patent.” 35 U.S.C. § 271(c). Carnival’s expert testified, 

and DeCurtis does not dispute, that DeCurtis’s system includes at least the 

“entire software operation that is running the wearable” and “the DeCurtis 

wearable,” which constitute “a material part of the invention” of the ’184 patent. 

3/6 Trial Tr. 178:4-10 (Mr. de la Iglesia). He further testified that “both the DXP 

software and the DXP wearables are specially adapted for infringement” and not 

“capable of substantial non-infringing use.” Id. 178:13-179:1. 

DeCurtis’s only response to this showing is its expert’s testimony that the 

DXP system is capable of doing things other than controlling door locks, as the 

claims recite. See 3/9 Rough Trial Tr. AM 76:13-79:8 (testifying to “a number of 

DeCurtis suites that leverage location” but do not involve door locks). That is 

legally irrelevant. The fact that an infringing system has other capabilities, 

beyond the infringing one, is not sufficient to avoid liability for contributory 

infringement. See, e.g., Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325, 1337 

(Fed. Cir. 2008). DeCurtis has offered no evidence to rebut Carnival’s showing 

that the DXP software and wearables are specially adapted for use in the 

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infringing DXP system and incapable of substantial use outside of that system. 

271(f) Infringement. Carnival is entitled to judgment that DeCurtis 

infringed the ’184 patent by “suppl[ying] or caus[ing] to be supplied in or from 

the United States all or a substantial portion of the components of a patent 

invention,” so as to induce the combination of those components outside of the 

United States and/or knowing that the components will be combined outside of 

the United States in an infringing manner. 35 U.S.C. § 271(f)(1)-(2). As discussed 

above, Carnival’s expert presented unrebutted testimony that the DXP software 

and wearables supplied by DeCurtis from the United States were at least a 

substantial portion of the DXP system and were “not a staple article or 

commodity of commerce suitable for substantial noninfringing use,” id. 

§ 271(f)(2). Carnival also presented unrebutted testimony that DeCurtis “actively 

induced others to infringe” through its contracts with Norwegian and Virgin. 3/6 

Trial Tr. 178:24-179:7 (Mr. de la Iglesia). To the extent DeCurtis alleges that the 

full system was not used within the United States, Carnival is at least entitled to 

judgment of infringement under § 271(f). 

Willful infringement. A reasonable jury could only find that DeCurtis’s 

infringement was willful, such that the Court has discretion to award enhanced 

damages under 35 U.S.C. § 284. To do so, the jury needs to “find no more than 

deliberate or intentional infringement.” Eko Brands, LLC v. Adrian Rivera Maynez 

Enterprises, Inc., 946 F.3d 1367, 1378 (Fed. Cir. 2020). Particularly in view of 

the extensive evidence of DeCurtis’s misuse of Carnival’s proprietary technology 

that was prepared for Project Trident, see supra 2-5, no reasonable jury could 

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fail to find this standard met. 

III. NO REASONABLE JURY COULD FIND THAT DECURTIS MET ITS 

BURDEN TO PROVE THE ’184 PATENT INVALID. 

Carnival’s ’184 patent is presumed valid, and DeCurtis has the burden of 

proving by clear and convincing evidence that any individual claim is invalid. 

Jury Instr. 10.1. DeCurtis’s sole asserted ground of invalidity is that the ’184 

patent claims would have been obvious in view of what it calls “the Disney Magic 

Band system” combined with what it calls “the Assa Abloy system.” 3/9 Rough 

Trial Tr. AM 92:4-13. DeCurtis therefore must prove, by clear and convincing 

evidence, (1) that both these alleged systems are prior art to the ’184 patent; 

(2) that a person of ordinary skill in the art would have been motivated, before 

the priority date of the ’184 patent, to combine the Disney Magic Band and the 

Assa Abloy system; and (3) that a person of ordinary skill in the art, before the 

priority date of the ’184 patent, would have had a “reasonable expectation of 

success” in “combin[ing] the teachings of the prior art to achieve the claimed 

invention.” InTouch Tech., Inc. v. VGO Commc’ns, Inc., 751 F.3d 1327, 1347 (Fed. 

Cir. 2014). For at least the reasons set forth below, DeCurtis has not presented 

evidence from which a reasonable jury could find that DeCurtis satisfied this 

heavy burden. Accordingly, the Court should grant judgment as a matter of law 

that the ’184 patent is not invalid. See, e.g., Amgen Inc. v. Sanofi, 872 F.3d 1367, 

1379 (Fed. Cir. 2017) (affirming district court’s grant of JMOL of nonobviousness). 

First, DeCurtis has not shown by clear and convincing evidence that either 

of its alleged systems is prior art to the ’184 patent. It is undisputed that the 

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’184 patent is entitled to a priority date no later than November 11, 2016. 3/9 

Rough Trial Tr. AM 80:15-22 (Dr. Shoemake). DeCurtis therefore has the burden 

of showing that the Disney and Assa Abloy “systems” were used with the 

components and configuration that DeCurtis relies on for its obviousness analysis 

before November 11, 2016. See, e.g., Radware, Ltd. v. F5 Networks, Inc., 147 

F. Supp. 3d 974, 987 (N.D. Cal. 2015). DeCurtis has not provided evidence to 

meet this burden. As just one example, DeCurtis’s expert referred in his 

obviousness analysis to Disney Magic Bands “being used with Bluetooth and 

NFC” in theme parks. 3/9 Rough Trial Tr. AM 93:9-10. But DeCurtis’s own 

witness acknowledged that, according to his friends, Disney’s Magic Bands 

began using Bluetooth (that is, BLE) only “relatively recently.” 3/8 Trial Tr. 72:5-

9 (Mr. Schwalb); see also, e.g., Ex. P-1968 (Disney’s Mr. Kaufman stating in 

February 2020 that “our bands aren’t BLE”). DeCurtis’s expert also testified that 

his investigation relied on a Magic Band that he had obtained in the course of 

working on this case—that is, years after the priority date of the ’184 patent—

without clarifying when that model of Magic Band was actually in use. 3/9 

Rough Trial Tr. AM 86:18-24; see also id. at 96:16-20 (purporting to identify BLE 

capability in this Magic Band in performing obviousness analysis). He made no 

attempt in his testimony to distinguish between the capabilities of a Magic Band 

in 2013 and the capabilities of a Magic Band in 2023. Nor did Dr. Shoemake 

provide any evidence that Assa Abloy’s Allure 2 door panel—the version he 

purported to rely on for his obviousness analysis, see 3/9 Rough Trial Tr. AM 

39:9-12—was the same product advertised in the 2016 Assa Abloy catalog that 

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he cited for its priority date, see id. 91:10-17. 

Second, DeCurtis has not shown by clear and convincing evidence that a 

person of ordinary skill in 2016 would have been motivated to combine the 

Disney Magic Band and the Assa Abloy door panel. “A reason for combining 

disparate prior art references is a critical component of an obviousness analysis; 

‘this analysis should be made explicit.’” InTouch, 751 F.3d at 1351 (quoting KSR 

Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)). Dr. Shoemake did not provide 

any explicit analysis. His testimony was limited to a brief, vague assertion that 

“we have Assa Abloy saying you can use wearables to open doors,” “[w]e also 

know that Assa Abloy had new door panels on the left that had Bluetooth and 

NFC,” and “we also know that the[re] were Magic Bands that were being used 

with Bluetooth and NFC to open doors at the Disney theme parks, and cruise 

ships.” 3/9 Rough Trial Tr. AM 92:22-93:10. 

Even if those assertions were factually correct, they amount to no more 

than an assertion that certain elements of the claim limitations were present in 

each alleged prior-art reference. See also 3/9 Rough Trial Tr. AM 102:12-21. 

That is far below what is required to show a motivation to combine. It is, in fact, 

strikingly similar to the kind of “vague” testimony that the Federal Circuit has 

rejected because it “d[oes] not articulate reasons why a person of ordinary skill 

in the art at the time of the invention would combine these references.” InTouch, 

751 F.3d at 1352; see also, e.g., ActiveVideo Networks, Inc. v. Verizon Commc’ns 

Inc., 694 F.3d 1312, 1328 (Fed. Cir. 2012) (testimony by expert that one would 

“want[] to build something better” with “more features” was “generic” and 

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“insufficient for a reasonable jury to support a determination of obviousness”). 

Dr. Shoemake did not even provide adequate testimony to support his assertion 

that a skilled artisan could combine the Magic Band and Assa Abloy references; 

he certainly did not do what is required, which is to prove that a skilled artisan 

would combine those two distinct technologies. See, e.g., In re Nuvasive, Inc., 842 

F.3d 1376, 1385-86 (Fed. Cir. 2016) (vacating PTAB holding of obviousness 

because the Board “failed to articulate a reason why the [person of ordinary skill] 

would have been motivated” to combine prior-art references). 

Third, DeCurtis has not provided clear and convincing evidence from 

which a reasonable jury could conclude that a person of ordinary skill in 2016, 

even if motivated to do so, would have had a reasonable expectation of success 

in combining a Disney Magic Band and an Assa Abloy door panel to achieve a 

result that meets all the limitations of the asserted ’184 patent claims. Dr. 

Shoemake did not offer any testimony for why this would be so. He simply 

pointed to various elements of Disney technology and Assa Abloy technology—

not even limited to the Magic Band and door panel themselves—and purported 

to find each claim limitation present somewhere in the mix. 

Fourth, DeCurtis’s expert failed to show that the combination of the 

Disney Magic Band and the Assa Abloy door panel available in 2016—even if 

successfully made—would practice each limitation of any asserted claim of the 

’184 patent. For example, with respect to claim 1, Dr. Shoemake failed to identify 

in the prior art an access panel comprising “a radio configured for wireless 

communication with a door lock communication module.” See 3/9 Rough Trial 

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Tr. PM 38 (Mr. de la Iglesia). Dr. Shoemake did not even attempt to locate this 

limitation in the prior-art references that he was purporting to combine. He 

instead pointed to an Assa Abloy patent—not the Assa Abloy “system”—for this 

limitation. 3/9 Rough Trial Tr. AM 105:1-3. But Dr. Shoemake did not even 

attempt to provide a motivation for a person of ordinary skill to combine this 

patent with the Magic Band and the Assa Abloy door panel product. 

As another example, with respect to claim 11, Dr. Shoemake failed to 

identify in the prior art the limitation of a sensor operative to “transmit a 

command to a guest device ... to cause the guest device to change operating 

mode between” the beacon mode and the bidirectional communication mode. See 

id. Here too, Dr. Shoemake did not attempt to identify this capability in either 

the Disney Magic Band or the Assa Abloy door panel. Instead, he relied on the 

totally separate “X band reader that was in the Disney parks”—again, without 

providing any basis for pulling a component of this separate device into the 

obviousness analysis. 3/9 Rough Trial Tr. AM 111:11-15. 

Fifth, DeCurtis’s expert made no attempt to assess the role of secondary 

considerations of non-obviousness in his analysis. These secondary 

considerations include factors such as “commercial success, long felt but 

unsolved needs, failure of others,” and other facts that “give light to the 

circumstances surrounding the origin of the subject matter sought to be 

patented.” Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). And, when 

present, these factors “must be considered in determining obviousness.” Ruiz v. 

A.B. Chance Co., 234 F.3d 654, 667 (Fed. Cir. 2000); see also, e.g., Ortho-McNeil 

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Pharm., Inc. v. Mylan Labs., Inc., 520 F.3d 1358, 1365 (Fed. Cir. 2008) (evidence 

of secondary considerations “is not just a cumulative or confirmatory part of the 

obviousness calculus but constitutes independent evidence of nonobviousness”). 

Carnival’s expert testified that his opinion on validity was influenced by 

several such factors, including the “commercial success” of Project OCEAN, the 

“praise within the industry” (including in the wake of the 2017 CES 

presentation), and the fact that “DeCurtis and Assa appeared to have copied the 

architecture described in Carnival’s ’184 patent.” 3/9 Rough Trial Tr. PM 51. 

Even if DeCurtis could make a prima facie showing of obviousness, these factors 

would preclude any reasonable jury from finding the patent claims obvious. 

IV. A REASONABLE JURY COULD ONLY FIND THAT CARNIVAL IS 

ENTITLED TO A REASONABLE ROYALTY OF NO LESS THAN $24.8 

MILLION FOR DECURTIS’S INFRINGEMENT. 

As discussed above (Part III), Carnival is entitled to judgment as a matter 

of law that DeCurtis has infringed the ’184 patent. As such, Carnival is also 

entitled to “damages adequate to compensate for the infringement, but in no 

event less than a reasonable royalty.” 35 U.S.C. § 284. A reasonable jury could 

only conclude that the reasonable royalty is no less than the $24.8 million that 

Carnival’s expert calculated. 3/7 Trial Tr. 221:11-13. Indeed, DeCurtis failed to 

offer any competing calculation, so the jury has heard no contrary opinion on 

what constitutes a reasonable royalty. And DeCurtis’s attempts to attack the 

reasonableness of Dr. Coleman’s royalty calculation amounted to no more than 

mischaracterizing her analysis, as she repeatedly explained. See, e.g., 3/7 Trial 

Tr. 268:12-22, 269:16-23, 271:20-272:12. 

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DeCurtis has argued that Carnival’s damages are limited based on an 

alleged failure to mark its products pursuant to 35 U.S.C. 287(a). But DeCurtis 

failed to meet its burden of production “to articulate the products it believes are 

unmarked ‘patented articles’ subject to § 287.” Arctic Cat Inc. v. Bombardier 

Recreational Prods. Inc., 876 F.3d 1350, 1368 (Fed. Cir. 2017). Even if it had 

done so, Carnival would at least be entitled to a reasonable royalty of no less 

than $11 million—the uncontradicted calculation offered by Carnival’s expert. 

3/7 Trial Tr. 261:23-262:20 (Dr. Coleman). 

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Dated: March 10, 2023

By: /s/ Diana Marie Fassbender 

Diana Marie Fassbender 

Florida Bar No. 0017095 

dszego@orrick.com 

Steven J. Routh (pro hac vice) 

T. Vann Pearce, Jr. (pro hac vice) 

Eileen M. Cole (pro hac vice)

Emily Luken (pro hac vice)

ORRICK, HERRINGTON & SUTCLIFFE LLP 

Columbia Center, 1152 15th Street, N.W., 

Washington, D.C. 20005-1706 

Tel: 202/339-8533 

Jorge Espinosa 

Fla. Bar No. 779032 

jorge.espinosa@gray-robinson.com 

GRAYROBINSON, P.A. 

333 S.E. 2nd Avenue, Suite 3200 

Miami, FL 33131 

Phone: (305) 416-6880 

Robert L. Uriarte (pro hac vice) 

David R. Medina (pro hac vice) 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

355 S. Grand Ave. 

Los Angeles, CA 90071 

Tel: (213) 629-2020 

Olivia Clements (pro hac vice) 

ORRICK, HERRINGTON & SUTCLIFFE LLP

51 West 52nd Street 

New York, NY 10019-6142 

Tel: (212) 506-5000 

Johannes Hsu (pro hac vice) 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

2050 Main Street 

Suite 1100 

Irvine, CA 92614-8255 

Tel: (949) 567-6700 

Sheryl Garko (pro hac vice 

Laura Najemy (pro hac vice) 

ORRICK, HERRINGTON & SUTCLIFFE LLP 

222 Berkeley Street 

Suite 2000 

Boston, MA 02116 

(617) 880-1800 

Attorneys for Carnival Corporation

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