In a December 18, 2013 ruling, Judge Samuel Conti denied the
defendants’ motion for a new trial or for judgment as a matter of law following
a jury verdict of patent infringement against them, and granted in part the
plaintiff’s motion for enhanced damages and attorneys’ fees (in light of the
jury’s finding of willful infringement) and for a permanent injunction.
With respect to the new trial motion, Judge Conti rejected the
two individual defendants’ challenge to a jury instruction that they contended
improperly allowed the jury to impute infringement to them in their individual
capacities. Since the jury found that the
individuals are general partners in a partnership that was also found liable
for infringement, the individuals could be held liable under general
partnership law, mooting the issue about the jury instruction. The Court also rejected the defendants’
contention that the plaintiff’s expert’s use of demonstrative exhibits that
were not disclosed as part of the expert report warranted a new trial, noting
that the exhibits merely illustrated points that were included in the report,
and the exhibits were not admitted into evidence.
Judge Conti analyzed the request for enhanced damages under
the nine factors set out in Read Corp. v.
Portec, Inc., 970 F.2d 816, 826 (Fed. Cir. 1992). The Court found that the first three factors –
whether the infringer deliberately copied the ideas or design of another, whether
the infringer acted with knowledge of the patent and formed a good faith belief
of non-infringement or invalidity, and whether the infringer engaged in
litigation misconduct – all strongly favored the enhancement of damages. Judge Conti found that the remaining factors
did not mitigate against enhancing damages, and accordingly trebled the jury’s
$300,000 damages award. The Court declined
to award attorneys’ fees, though, finding that the defendants’ conduct was not
egregious, and that “some of the positions advanced at trial by Defendants had
merit.” In a later January 8, 2014 ruling, Judge Conti awarded prejudgment interest at the prime rate (3.25%), rejecting the plaintiff's request to use the 9% rate specified in the New York CPLR. The Court awarded prejudgment interest only on the $300,000 damages award, not on the enhanced. amount.
Judge Conti also entered a permanent injunction against further infringement. The Court found irreparable injury because the parties are direct competitors, the plaintiff’s practice is to decline to license the patented technology, and “the evidence showed that the key selling point and distinguishing feature of both Plaintiffs and Defendants’ umbrella reflectors was” a patented feature. Since the other factors – the balance of hardships and the public interest factor – likewise weighed in favor of injunctive relief, the Court entered a permanent injunction.
