Jury Finding of Willful Infringement Does Not Satisfy Section 287 Notice Requirement

Following remand, the court granted defendant's motion for summary judgment to preclude plaintiff from seeking pre-suit damages and rejected plaintiff's argument that the jury's willful infringement finding satisfied plaintiff's obligation to establish actual notice. "⁠[Plaintiff] argues . . . that it meets it burden to show actual notice under Section 287 based on both the Court’s rulings and the jury’s findings of willful infringement. [Plaintiff] further points to evidence introduced at trial that [defendant] knew about the [patents-in-suit] and was aware internally about potential infringement. But the reading of the statute that [plaintiff] urges conflates the patentee-centered inquiry of notice [...]

2018-08-14T11:17:03+00:00August 14th, 2018|Docket Report, Patent|

Counsel’s Removal of Non-Disclosure Footer From Purported Prior Art Document Warrants Award of Monetary and Evidentiary Sanctions

The court imposed monetary sanctions against defense counsel for removing a non-disclosure footer from an exhibit in support of defendant's motion to dismiss on the ground that the accused device was publicly disclosed prior art. "I do not find that [counsel] intentionally doctored the Power Point presentation or intentionally proffered false or misleading evidence to the Court when he filed [defendant's] motion to dismiss. . . . However, I do find that his conduct was reckless . . . both as to the initial filing of the Power Point presentation from which the non-disclosure footer was removed, and as to [...]

2018-08-13T11:22:02+00:00August 13th, 2018|Docket Report, Patent|

Knowledge of Potential Infringement During Prior Settlement Does Not Trigger Equitable Estoppel

Following jury and bench trials, the court found that equitable estoppel did not preclude plaintiff's claims for infringement of its footwear design patents because there was no misleading conduct following the parties' settlement of an earlier case. "⁠[Plaintiff] did not act in a misleading way when it contractually gave [defendant] the right to sell potentially infringing boots in the [prior] Settlement Agreement. . . . [Defendant] argued that [plaintiff] was aware of the [current accused] designs as early as [seven years ago]; even if that were true, [plaintiff] did not act in a misleading manner because [plaintiff] had no obligation [...]

2018-08-10T11:21:02+00:00August 10th, 2018|Docket Report, Patent|

Instruction That Jury “Should” Consider Objective Indicia Not Erroneous

Following a jury verdict of invalidity, the court denied plaintiff's motion for a new trial because the jury instructions regarding obviousness were proper. "⁠[T]he Court instructed the jury that it 'should' consider objective indicia of nonobviousness in making its obviousness determinations. [Plaintiff] contends that the jury should have been instructed that it 'must' consider objective indicia of non-obviousness because such considerations are mandatory. . . . [Plaintiff's] argument . . . has more traction in the context of statutes and contracts: words written by lawyers, argued over by lawyers, and interpreted by lawyers. Here, however, in the context of jury [...]

2018-08-09T11:52:02+00:00August 9th, 2018|Docket Report, Patent|

Post-Verdict Sales of Infringing Product Support Award of Enhanced Damages

Following a jury verdict of willful infringement, the court granted in part plaintiff's motion for enhanced damages and increased the damage award by 25% because one-quarter of defendant's sales at issue took place after the verdict. "⁠[E]nhancement is appropriate in light of evidence of culpable conduct presented at trial and [defendant's] deliberate and conscious decision to continue selling [the accused product] after the verdict. . . . [O]n the pre-trial record, the question of infringement was, without doubt, debatable. But the situation changed at trial. [Plaintiff] presented credible evidence of deliberate copying. . . . The evidence also raised doubts [...]

2018-08-08T11:30:03+00:00August 8th, 2018|Docket Report, Patent|

Vague Interrogatories a “Gift” to Answering Party

The court granted in part plaintiff's motion to compel further interrogatory responses regarding defendants' offers to sell the accused surgical products. "The dispute lies with Defendants’ response to the portion of the Interrogatory calling for a 'detailed description of the circumstances of [defendants'] offering to each customer.' Defendants assert that this portion of the request is vague, irrelevant and not proportional. . . . Its vagueness was a gift from Plaintiff; Defendants were free to interpret it and provide a response, so long as the response was reasonable. Doing nothing was not acceptable. . . . Defendants need not, in [...]

2018-08-07T11:26:02+00:00August 7th, 2018|Docket Report, Patent|

Defense Counsel’s Past Representation of Party to Confidential Settlement Agreement Does Not Justify Disqualification

The court denied plaintiff's motion to disqualify defense counsel who represented a third party as a defendant in another case involving the same patent-in-suit that resulted in a confidential settlement agreement. "⁠[B]ecause [counsel] did not represent [plaintiff] in that prior matter, there is no way that he could have had access to relevant privileged information belonging to [plaintiff], which is the third requirement of the test. The only claim is that he is now aware of the information contained in the confidential settlement agreement entered into in that case. There is no claim that [counsel] violated his duty of loyalty [...]

2018-08-06T11:50:03+00:00August 6th, 2018|Docket Report, Patent|

Conclusory Disclaimer Stricken From Expert’s Report

The court granted plaintiff's motion to strike portions of the reports of defendant's invalidity experts which included disclaimers. "⁠[Plaintiff] insists that the following language should be stricken from the claim charts included with [the experts'] Invalidity Reports: 'Even if these references do not expressly disclose this claim element, the claim is obvious due to the inherent disclosure of the references and/or the knowledge of one of ordinary skill in the art. . . .' The failure of [defendant's] experts to provide any analysis supporting their conclusions is prejudicial to [plaintiff] because it cannot adequately prepare to cross-examine [them] regarding said [...]

2018-08-03T11:53:02+00:00August 3rd, 2018|Docket Report, Patent|

Victory at Trial Does Not Justify Increase in Rate for Ongoing Royalty

Following a jury trial, the court partially granted plaintiff's motion for an ongoing royalty and awarded the same royalty rate imposed by the jury. "⁠[T]he Court refused to grant a preliminary injunction . . . finding that because [plaintiff] did not practice that patent, [it] could not show any irreparable harm. . . . [T]he Court is unwilling to award [plaintiff] a royalty enhancement predicated only upon its victory at trial. This is especially so because the hypothetical negotiation the Court must now envision mirrors the hypothetical negotiation the jury already considered in setting the $4-per-sale royalty rate which [plaintiff] [...]

2018-08-02T11:52:03+00:00August 2nd, 2018|Docket Report, Patent|

“Obscure” Royalty Rate Does Not Render Jury Award Excessive

Following a jury trial, the court denied defendant's motion for new trial and rejected defendant's argument that the jury's damages award was excessive. "Because the Court granted judgment of matter of law against [plaintiff] on the issue of lost profits, [plaintiff] was only entitled to a reasonable royalty. . . . [Defendant] argues that the jury’s damages award 'does not appear to be based on a reasonable royalty since it amounts' to obscure percentages. . . . [Defendant] cites no authority requiring the jury to award a reasonable royalty based on a round number. But even then . . . [...]

2018-08-01T12:26:03+00:00August 1st, 2018|Docket Report, Patent|