A federal judge from the Western District of Washington has enjoined a basketball manufacturer from continuing to market and sell its dual-cushion basketball in the wake of a jury’s determination that the manufacturer infringed upon the patent of the plaintiff, another basketball manufacturer.
The court, however, sided with the defendant Molten U.S.A. on the matter of the plaintiff’s bid for enhanced damages and attorneys’ fees, finding that the plaintiff Baden Sports did not show that the defendant acted in “bad faith.”
Early in the opinion, the court offered some background on the litigation. In February 2006, Baden sued Molten for patent infringement and false advertising, alleging that Molten’s “dual cushion technology,” which Molten incorporated into a number of its basketball models, duplicated Baden’s patented design. Baden also alleged that Molten falsely advertised that its basketball design was “innovative,” in violation of the Lanham Act. Before trial, the Court granted summary judgment to Baden on the issue of whether Molten’s “dual cushion” basketball infringed Baden’s patent. On August 16, 2007, the jury found that Molten had continued to offer for sale the infringing “dual cushion” basketball that Molten willfully infringed Baden’s patent, and that Molten had intentionally falsely advertised its basketballs. The jury awarded Baden $38,031 in patent infringement damages and $8,054,579 in Lanham Act damages.
After the verdict, Baden sought enhanced damages, attorneys’ fees, prejudgment interest, and a permanent injunction.
Addressing the latter first, the court found that Baden is entitled to “a limited permanent injunction, … narrowly tailor(ing) its injunction so as not to place unnecessary restraints on Molten’s lawful foreign business activity.
“Given the complexities of online advertising, and the evidence presented at trial regarding Molten’s internet advertising of its ‘dual cushion’ technology, the Court enjoins, not only false advertising within the United States, but false advertising directed at United States consumers.”
Next, the court turned to the plaintiff’s argument for enhanced damages.
It wrote that the Federal Circuit has outlined nine factors to consider when making such a determination:
“(1) whether the infringer deliberately copied the ideas or 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) the infringer’s size and financial condition;
(5) the closeness of the case;
(6) the duration of the infringer’s misconduct;
(7) any remedial action by the infringer;
(8) the infringer’s motivation for harm; and
(9) whether the infringer attempted to conceal its misconduct.
“Johns Hopkins Univ. v. CellPro, Inc., 152 F.3d 1342, 1352 n.16 (Fed. Cir. 1998) (citing Read Corp. v. Portec, Inc., 970 F.2d 816, 827 (Fed. Cir. 1992)). In both the enhanced damages and attorneys’ fees contexts, in a case, like this one, where the jury has found willful infringement, a trial court ‘should provide reasons for not increasing a damages award or for not finding a case exceptional for the purpose of awarding attorneys fees.’ Jurgens, 80 F.3d at 1572.
“Baden argues that the jury’s finding of willful infringement, coupled with Molten’s litigation misconduct, warrants a trebling of the patent damages. The Court considers Baden’s request in light of the nine Read factors.”
The court concluded that “although the jury found that Molten ‘willfully infringed’ Baden’s patent, analyzing the case through the lens of the Read factors, Baden has not shown that Molten acted in bad faith. The Court will not enhance the patent damages, particularly because Baden did not prove that Molten purposely copied Baden’s design, because Molten changed its design, and because the litigation difficulties resulted from poor lawyering, not malicious intent.”
Baden Sports, Inc v. Kabushiki Kaisha Molten et al; W.D. Wash..; No. C06-210MJP; Wash LEXIS 70776; 9/25/07
Attorneys or Record: (for plaintiff): Bruce A. Kaser, LEAD ATTORNEY, VANTAGE LAW, ISSAQUAH, WA; James L Phillips, LEAD ATTORNEY, Aubrey Anne Seffernick, MILLER NASH LLP (SEA), SEATTLE, WA. (for defendants) Arthur S Beeman, Margaret Elizabeth Day, Robert Buergi, LEAD ATTORNEYS, DLA PIPER US LLP, EAST PALO ALTO, CA; Gi-In An, LEAD ATTORNEY, EDWARDS ANGELL PALMER & DODGE LLP, WASHINGTON, DC; Richard Lewis Goff, LEAD ATTORNEY, SEATTLE, WA. Bruce A. Kaser, LEAD ATTORNEY, VANTAGE LAW, ISSAQUAH, WA; James L Phillips, LEAD ATTORNEY, MILLER NASH LLP, SEATTLE, WA.
