Following a jury trial in E.I. Dupont de Nemours and Company v. Unifrax I LLC, C.A. No. 14-1250-RGA, in which Defendant’s product was found to infringe the asserted patent, Judge Richard G. Andrews ruled on: (1) Defendant’s renewed motions for judgment as a matter of law and request for a new trial; and (2) Plaintiff’s Motion for a Permanent Injunction, Supplemental Damages and Interest (D. Del. Sept. 12, 2017).
The Court denied Defendant’s motions. As to JMOL, the Court found that there was sufficient evidence to support the jury’s findings on infringement and no invalidity. Notably, the Court rejected Defendant’s attempt to make a new claim construction argument not presented in its Markman briefing, noting that it has “numerous opportunities to raise this specific issue prior to trial,” including during summary judgment, and had waived the argument. Id. at 3-4. The Court also rejected the request for a new trial for the same reasons that the JMOL motion was denied. The Court also rejected Defendant’s arguments that certain of Plaintiff’s cross-examination mislead the jury, and disagreed that the jury had been improperly instructed on conception. Id. at 5-6.
In a separate opinion addressing Plaintiff’s motion, the Court granted a permanent injunction. Irreparable harm existed where Plaintiff had shown a causal connection between Defendant’s sales and harm to Plaintiff, and where Plaintiff and Defendant were the only competitors in the relevant market: “Defendant’s predecessor . . . product was dissatisfactory to Boeing. There is evidence that the predecessor product would not have qualified under Boeing’s new specification. Defendant’s . . . product uses Plaintiffs patented flame barrier laminate design to qualify for this specification and compete in this market. Defendant is Plaintiffs only competitor in Boeing’s flame barrier laminate market. Plaintiff projected that its Nomex XF would have sales of $32 million in 2013 to 2015. Defendant’s presence in the market directly reduced Plaintiffs sales.” Id. at 3. Money damages were inadequate where Plaintiff “would be forced to compete against a rival gaining market share with Plaintiff’s technology” and where Plaintiff never agreed to royalty payments to license its technology, and similarly, the balance of hardships weighed in Plaintiff’s favor where the absence of an injunction would require Plaintiff to compete against its patented invention. Id. at 4. Finally, the Court ruled an injunction would not harm the public interest. “Defendant argue[d] that an injunction would harm the public interest because the public is better off with a multiple-supplier market for products affecting public safety,” but the Court was persuaded by Plaintiff’s evidence that no such public safety concern was present and the Court “was not concerned with Plaintiff’s ability to supply its product.” Further, “copies of patented inventions have the effect of inhibiting innovation and incentive. Guarding against such copies could foster the development of more technologies aimed at enhancing public safety.” Id. at 5 (citations and internal quotation marks omitted).
The Court also issued the injunction on the broader terms proposed by Plaintiff, i.e., an injunction barring Defendant “from selling the infringing [product] or any substantially similar products” rather than just the specific accused product as proposed by Defendant. Id. at 5. The Court explained that Defendant’s proposal was unreasonably narrow. Id. at 6. The Court also rejected Defendant’s proposals, many of which are used in preliminary injunctions, to require Plaintiff to post a bond, to have Plaintiff file an “‘undertaking’ providing that the amount of damages for which Plaintiff might be liable will not be limited or negated . . . as a result of a wrongful issuance of the injunction,” and to provide that the injunction would automatically dissolve if the Court’s judgment was vacated or reversed, if the patent was found invalid or unenforceable or expires, or if third parties “develop[ed] a need for the enjoined product in the interests of public safety.” Id at 6-7.
As to Plaintiff’s request for supplemental damages, Defendant argued that the jury award fully compensated Plaintiff, even though Defendant sold products after the jury verdict issued, based on its analysis of how the jury arrived at its damages award and its improper use of certain sales. See id. at 7-8. The Court rejected Defendant’s rationale, finding it “require[d] too much guesswork,” and awarded supplemental damages to Plaintiff based on the royalty rate proposed by Plaintiff instead, which simply divided the jury award by the jury’s royalty base. Id. at 8. The Court granted Plaintiff’s request for pre-judgment interest. Id. at 9. Finally, the Court resolved the parties’ dispute as to the proper rate to apply in calculating post-judgment interest. Id. at 9-10.
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