The opinion of the court was delivered by: Milton I. Shadur Senior United States District Judge
MEMORANDUM OPINION AND ORDER Meyer Intellectual Properties Limited and Meyer Corporation, U.S. (collectively "Meyer," treated for convenience as a singular noun to avoid awkward verb usage) prevailed during a November 2010 jury trial on its claim that Bodum, Inc. ("Bodum") has infringed its United States patent numbers 5,780,087 ("Patent '087," entitled "Apparatus and Method for Frothing Liquids") and 5,939,122 ("Patent '122," entitled "Method for Frothing Liquids")(collectively "Meyer Patents")--see the Complaint's Request for Relief ¶B). At the end of the trial the jury returned a verdict in Meyer's favor, finding that the Meyer Patents were valid and that Bodum's infringement was willful,*fn1 and it awarded Meyer its requested damages of $50,000.
Meyer now files a motion under 35 U.S.C. §§284 and 285*fn2
for treble damages, for a finding that the case is "exceptional" in the
statutory sense and for an award of attorneys' fees. For the reasons
stated in this memorandum opinion and order, the motion is
Section 284 and 285 Standards
Under Section 284 a court may increase the award of damages for patent infringement up to three times the amount awarded by the trier of fact. That involves a two-step inquiry, as taught in Mentor H/S, Inc. v. Med. Device Alliance, Inc., 244 F.3d 1365, 1380 (Fed. Cir. 2001)(citation omitted):
First, the fact-finder must determine if an accused infringer is guilty of conduct, such as willfulness, upon which increased damages may be based. If so, the court then exercises its discretion to determine if the damages should be increased given the totality of the circumstances.
In turn Section 285 gives a court discretion to "award reasonable attorney fees to the prevailing party" in exceptional cases.
Courts consider the same set of specific factors in determining
whether damages should be increased and whether attorneys' fees should
be awarded under Sections 284 and 285, respectively (Read Corp. v.
Portec, Inc., 970 F.2d 816, 826-27 (Fed. Cir. 1991);*fn3
nCube v. SeaChange Int'l, Inc., 436 F.3d 1317,
1325 (Fed. Cir. 2006)).*fn4 Read, 970 F.2d at 827
(citations and footnotes omitted) sets out those factors:
(1) whether the infringer deliberately copied the ideas of design of another;
(2) whether the infringer, when he knew of the other's patent protection, investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed;
(3) the infringer's behavior as a party to the litigation.
(4) Defendant's size and financial condition.
(5) Closeness of the case.
(6) Duration of defendant's misconduct.
(7) Remedial action by the defendant.
(8) Defendant's motivation for harm.
(9) Whether defendant attempted to conceal its misconduct.*fn5
Factors 1 through 3 are given special emphasis because they speak to whether the infringer acted in bad faith (id. at 826). Of course "[t]he paramount determination...is the egregiousness of the defendant's conduct based on all the facts and circumstances" (id.).
Read No. 1: Deliberate Copying
Meyer argues that Bodum deliberately copied its patents. Its Mem. 7-8 describes in detail how Bodum's 3-Cup Chambord product is identical to Meyer's BonJour Caffe Froth product. In response Bodum Mem. 3 protests that the various components of the 3-Cup Chambord were either ...