Lighter Infringer Dodges Willfulness But Still Must Pay $800k

Posted on | April 30, 2008 | No Comments

2008-1324/1325 Calico Brands v. Ameritek Imports
CD/CA cv-05-205

Both parties appeal from Judge Patrick Walsh’s Order granting in part, denying in part, defendant’s JMOL. The judge affirmed the jury award of nearly $800,000, but vacated the jury’s finding of willfulness and also denied plaintiff’s motion for enhanced damages.   The case involved  trigger-type lighters.

The court had previously, on summary judgment, found the patents valid and infringed.  There, defendants had asserted some prior art under both §§ 102 and 103.  The court rejected the § 102 arguments because the references did not contain all of the limitations.  As for the § 103, there was no evidence to support a suggestion or motivation to combine.

On the JMOL, willfulness turned on the need by the patentee to "show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent."  According to the court, this standard "presumes that the infringer knew a valid patent existed." 

Calico did not present or point to any evidence that defendants knew about the Calico patents.  At best, the evidence supported that defendants acted without any knowledge of–or search for–plaintiff’s patents.  Thus the jury’s finding of willfulness was unsupported.  Further, the jury’s charge contained (without objection) an instruction requiring actual knowledge, thus such knowledge is law of the case.

As for the damages, the court upheld the amount and the use of market share data.  The court noted that defendants’ original counsel did not conduct discovery on this data whereas new counsel tried toe exclude it.  The court was unsympathetic:

In the end, the Court concludes that Defendants’ election to forgo investigation of the basis of Plaintiffs’ expert’s market share analysis is fatal to their request now. The purpose of discovery is to allow the parties to garner the facts they need to try the case.  Where, as here, a party chooses not to thoroughly examine the opposing side’s case during discovery and, instead, wait until the eve of trial and try to exclude the evidence–evidence that they did not contend at the time was false or misleading–the rules and the case law dictate that that strategy should not be rewarded.

Documents:

2008-1324_JMOL.pdf

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