Treble Damages Awarded to Former Business Partner After Relationship Went Sour by Judge Swain

Briese Lichttenchink Vertriebs GmbH et al. v. Brent Langton et al.

Case Number: 1:09-cv-09790-SC-MHD (Dkt. 477)

Following a jury verdict of $300K for infringement of U.S. Patent No. 5,841,146 (entitled “Reflector”) and a finding of willfulness, the court decided several motions.

First, the court denied a new trial for two individual partner defendants despite the defendants’ argument that a jury instruction reading, “[a]dditionally, personal liability may be imposed [for direct infringement] upon corporate officers for participating in, inducing, and approving act of patent infringement” was incorrect. The court said that under New York law, partners are jointly and severally liable for torts committed by a partnership. Further, to the extent that patent law, not New York tort law, determines liability for direct infringement, the court said, “Since [the partners] are liable for the acts of [the partnership], the issue of whether or not they committed direct infringement is moot.” Accordingly, the jury instruction did not prejudice the individual defendants.

Second, the court declined to reverse the jury’s finding of willful infringement. The defendants argued that theirs was a close case, arguing specifically that under their claim construction there was no infringement. “The fundamental problem with Defendants’ argument,” the court said, was that “the Court and the jury found that Defendants infringed the ‘146 patent using these very constructions.”

Third, the court declined to order JMOL or to grant a new trial to the individual defendants. These defendants argued that “Plaintiff failed to meet their evidentiary burden,” but the court disagreed. Illustratively, (1) one individual defendant personally conducted business under the name B2Pro, an entity that rented, assembled, and set up complete infringing products, (2) the other individual defendant testified that “he personally worked with and ‘made every single part’ of the infringing devices,” and (3) both individual defendants repeatedly testified that they personally used or rented the accused products.

The court trebled the jury’s damages, finding that several Read factors (970 F.2d 816 (Fed. Cir. 1992)) favored increased damages and that none of the factors counseled otherwise. Persuasive factors included copying (defendants had previously marketed plaintiff’s patented device, and started making their own after the business relationship between the parties “went sour,” and defendants produced their products in the same sizes as plaintiffs did and had no evidence of designing around), defendants knew of the patent (one individual defendant had assisted plaintiff in a prior infringement case on the same patent), and litigation misconduct (defendants were sanctioned multiple times by the magistrate judge, and they attempted to circumvent some of the court’s discovery orders).

The court did not find the case to be exceptional under 35 U.S.C. § 285, and so did not award attorney fees. (The court noted that attorney fees had already been awarded for sanctionable conduct during discovery.)

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