promptly sent them to Glazer and requested advice. This occurred even though, at the time, IMPRA was still selling Kendall's product, and it would have been easy (though incorrect) to fob off the Inquiry as Kendall's problem.
By the time it went into production with its own device, IMPRA had four comfort letters from Mr. Glazer, three addressing a variety of patents and a fourth dealing exclusively with Mahurkar's '141 patent. These are careful, reasoned letters. Mr. Green testified that he relied on them in fact, and I credit that testimony.
The letters are competently prepared, at least on the surface. Mr. Glazer assessed the devices factually and legally. Before rendering a final opinion, Mr. Glazer obtained the prosecution history of the patents. On reviewing this history, he found and discussed the design-to-utility conversion, which created the possibility that Mahurkar's Canadian patent disabled him from obtaining valid United States patents. The letters discuss some of the prior art. The letter of May 28, 1986, suggests that the deflection of the septum at the very tip of IMPRA's catheter distinguishes the '968 patent. A reasonable business manager could rely on such advice and would not find it, In the language of Read, an "obviously bad opinion." I conclude that Mr. Green did rely on these letters.
Notice that I have relied on the qualifying language of Read: "obviously" bad opinion. The letters are notable, at least in retrospect, for what they omit as well as for what they say. Nowhere in any of the letters does Mr. Glazer expressly state that the IMPRA devices would not literally infringe all of Mahurkar's patents. In one of the letters, for example, Glazer concludes that "IMPRA has avoided infringement of Claims 1-6 of the '141 patent." What about the other claims? Similarly, the letters did not discuss the doctrine of equivalents, although the circumstances cried out for it--especially after Mr. Glazer himself concluded that IMPRA's device avoided literal Infringement only barely, by a last millimeter deflection of the septum. The lack of a firm conclusion that IMPRA's products would not infringe Mahurkar's patents might have served as a warning, perhaps fortified by oral exchanges. Intentional infringement of a patent in the hope that the patent will be overturned is wilful infringement if the court ultimately sustains the validity of the patents.
The letters have another interesting omission. By the time IMPRA started making double-D catheters, other manufacturers were leaving that part of the business, many after concluding that Mahurkar's patents gave them no alternative. Either Glazer did not ask these manufacturers why they had quit, or he asked and left the answers out of his letters.
Nonetheless, these weaknesses do not make the letters incompetent. As the Federal Circuit said in Read, the acid test is what happens in the litigation. The accused infringers (Vas-Cath and Kendall as well as IMPRA) put on a good defense, strong enough to lead me to invalidate two of Mahurkar's many patents because of the design-to-utility dating problem. The Federal Circuit concluded that factual issues prevented summary judgment but left untouched the conclusion that Vas-Cath (and hence IMPRA) had substantial defenses to Mahurkar's claims. The validity of the '968 patent remained in question through the trial because of the Northwest Kidney sales. With a good faith defense on validity, and the advice of counsel, even a deliberate decision to make the article exactly as described in the patent is not wilful infringement.
Mahurkar bears the burden of proof on wilfulness and has not carried it. I believe that Mr. Glazer's letters were the sort of communications on which manufacturers are entitled to rely, and that the competence of Mr. Glazer's advice has been borne out by the existence of substantial issues in this litigation. An enhancement of damages is therefore inappropriate.
Quinton and Mahurkar are entitled to an injunction in addition to damages. "It is the general rule that an injunction will issue when infringement has been adjudged, absent a sound reason for denying it." Richardson v. Suzuki Motor Co., 868 F.2d 1226, 1247 (Fed. Cir. 1989). A patent conveys the right to exclude others from making, using, or selling the invention, and this right implies the propriety of an injunction enforcing exclusivity. The injunction creates a property right and leads to negotiations between the parties. A private outcome of these negotiations--whether they end in a license at a particular royalty or in the exclusion of an infringer from the market--is much preferable to a judicial guesstimate about what a royalty should be. The actual market beats judicial attempts to mimic the market every time, making injunctions the normal and preferred remedy. See Schlicher, Patent Law: Legal and Economic Principles §§ 1.14,9.03. No "sound reason" counsels against injunctive relief in this case. The burdens an injunction will impose on IMPRA do not differ from those other infringers experience when told that they must change or abandon a product. Windsurfing International, Inc. v. AMF, Inc., 782 F.2d 995, 1003 n.12 (Fed. Cir. 1986); Polaroid Corp. v. Eastman Kodak Co., 641 F. Supp. 828, 228 U.S.P.Q. 305, 344 (D. Mass. 1985), affirmed, 789 F.2d 1556 (Fed. Cir. 1986).
IMPRA contends that I should not issue an injunction (or should stay enforcement of any injunction) because the Federal Circuit is going to reverse my decision concerning the on-sale question. Every unsuccessful litigant has hopes of triumph in the next tribunal, but this line of reasoning would keep the victors from savoring the fruits. I have adjudged this case to the best of my ability and do not believe that IMPRA has unusually high prospects of success on appeal. Accordingly, I shall enter the injunction, and I will not stay that injunction pending appeal. I will, however, refrain from formally entering the injunction until the final decision on damages, so that the Federal Circuit need not hear multiple appeals, and the injunction will include a two-week delay to give IMPRA time to seek a stay from the Federal Circuit.
IMPRA also argues that Mahurkar's delay in seeking injunctive relief disentitles him to that remedy. Although this contention might have some force if Mahurkar were seeking a preliminary injunction, it has none now that the trial is over. (All of the cases IMPRA cites dealt with delay in seeking interlocutory relief.) Delay short of laches is irrelevant, and IMPRA cannot establish either that Mahurkar's delay was excessive or that it suffered prejudice attributable to this delay.
One subject lies outside the injunction. By virtue of 28 U.S.C. § 1498 (a), IMPRA is entitled to continue selling infringing catheters to the United States and its agencies (principally the Veterans Administration). See also W.L. Gore & Associates, Inc. v. Garlock, Inc., 842 F.2d 1275, 1282 (Fed. Cir. 1988); Trojan, Inc. v. Shat-R-Shield, 885 F.2d 854, 856 (Fed. Cir. 1989). The privilege of selling existing inventory to the government (recall that IMPRA already has stopped manufacturing infringing catheters) also means that IMPRA is not likely to suffer irreparable harm while the appeal is under consideration.
I have considered the parties' submissions about the form of appropriate equitable relief. Contemporaneously with the final calculation of damages, I will enter the following combined declaratory judgment and injunction:
1. United States Patent No. 4,583,968, owned by Sakharam D. Mahurkar, is valid and enforceable.