Earlier Recovery for Infringement from Supplier Does Not Preclude Willfulness Claim Against Customers

The court granted in part a group of customer defendants' motion to dismiss plaintiff's infringement claims because a jury in an earlier action had awarded plaintiff damages for their supplier's infringement of 2 of 3 patents-in-suit. "[T]he jury in the earlier case awarded [plaintiff] $750,000, finding that the four [accused] devices were infringing. To the degree that Counts One and Two seek recovery from the Customer Defendants for reselling the same four [accused] devices, the claims seek a double recovery that cannot be allowed. This analysis does not apply, however, to [plaintiff's] claim in Counts One and Two that the Customer Defendants committed willful infringement. While the earlier jury found that [the supplier's] infringement was not willful, that finding does not apply to the Customer Defendants because willful infringement depends on the conduct and knowledge of the party against whom the claim is made – it is not a derivative liability. . . . Moreover, an award for willful infringement is an 'enhanced' damage award that does not duplicate, or overlap with, the award for basic infringement. Thus, an award for willful infringement against the Customer Defendants in this case for their own conduct does not give [plaintiff] a double recovery when added to the damages awarded in the earlier trial against [the supplier] for its own conduct."

Fleming v. Escort, Inc., et. al., 1-12-cv-00066 (IDD August 5, 2013, Order) (Winmill, J.).