Tuesday, February 14, 2017

Nonexistent Redesign Warrants Finding of Contempt and Award of Enhanced Damages and Attorney Fees​

Following a bench trial, the court found defendants' purportedly redesigned products infringed plaintiff's radial coupler patent in violation of a permanent injunction because there was insufficient evidence of a redesign. "[Defendants] are certainly vague, or circumspect, about how this purported redesign came about. . . . An actual redesign – as opposed to some after-the-fact, illegitimate claim of redesign used to mask continued infringement – would have been a pointed and considered event that left a distinct trail and explanation from the redesigners and those who ordered it. . . . The evidence here was more than sufficient to demonstrate that there was no 'redesign' in 2008 (in the sense the Federal Circuit uses the term and people acting in good faith purposefully conduct themselves) that included changes to the thread angles. . . . [I]t is quite obvious that there is a global credibility problem with the [defendants’] case. As a result, it is difficult if not impossible to conclude that there was any 'redesign' or 'design-around' because, certainly, modifications done with an eye toward getting around the claims of a patent . . . would have been carefully done, and would have taken place on all the sizes of the accused devices within a brief time and not in dribs and drabs over the course of several months. . . . It must also be noted that [defendants] never mentioned to their customers that they made any changes at all, colorable or otherwise, to their couplers or the angle or number of interior threads. . . . Nothing that seems anything like a design around or changes amounting to a colorable difference happened here. . . . There can be no doubt that [plaintiff] is entitled to a discretionary award of attorneys’ fees under 35 U.S.C. § 285 and Octane Fitness. . . . [A]n appropriate exercise of discretion both warrants and justifies an award to [plaintiff] of treble damages . . . ."

R-Boc Representatives, Inc. v. Minemyer, 1-11-cv-08433 (ILND February 10, 2017, Order) (Cole, MJ)

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