Judkins v. Ht Window Fashions Corp.

704 F.Supp.2d 470

Ren JUDKINS, Plaintiff,v.HT WINDOW FASHIONS CORP., Defendant.

Civil Action No. 07-0251.

United States District Court W.D. Pennsylvania.

March 31, 2010.

Opinion Modifying Permanent Injunction Pending Appeal July 8, 2010.

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Bryan H. Opalko, Lynn J. Alstadt, Ralph G. Fischer, Samuel W. Braver, Buchanan Ingersoll & Rooney PC, Pittsburgh, PA, for Plaintiff.

Arne M. Olson, Joseph M. Kuo, Matthew D. Kellam, Olson & Cepuritis, Chicago, IL, Timothy P. Ryan, Wendy West Feinstein, Eckert, Seamans, Cherin & Mellott, Pittsburgh, PA, for Defendant.

MEMORANDUM

GARY L. LANCASTER, Chief Judge.

This is an action in patent infringement. On November 12, 2009, a jury found that HT willfully infringed one of Judkins's patents and awarded him $154,776.04 in damages. The jury also found that HT would infringe another of Judkins's patents if it began selling a different product. The jury rejected HT's contentions that both of Judkins's patents were invalid and/or unenforceable.

Before the court are various post-trial motions:

(1) Judkins's Motion for a Permanent Injunction [doc. no. 220] and HT's Motion to Strike the Declarations that Judkins filed in support of that motion [doc. no. 234];

(2) Judkins's Motion for Prejudgment Interest [doc. no. 224];

(3) Judkins's Motion for Attorney Fees and Enhanced Damages [doc. no. 226];

(4) Judkins's Motion for Reconsideration of Decision Under Rule 50 that Claims 1 and 24 of the '634 Patent are Invalid [doc, no. 227]; and (5) HT's Motion for Judgment as a Matter of Law or for a New Trial [doc. no. 230].

I. FACTUAL BACKGROUND

The parties are familiar with the relevant facts. Previous opinions of this court contain detailed factual and technological summaries for readers in need of such background information [ see doc. nos. 28, 50, 55, 109, and 117]. Simply put, Judkins is an individual inventor who owns many patents in the field of window blinds. Two of his patents are at issue in this case. Judkins accused HT of infringing the '120 Patent by selling its Polaris brand double-celled honeycomb blind. Judkins also claimed that HT would infringe the '634 Patent if it began to sell its first generation Polaris brand single-celled honeycomb blind.

The jury found that HT's products infringed the '120 Patent and would infringe the '634 Patent. The jury also found that HT's infringement of the '120 Patent was willful. The jury rejected HT's contentions that both patents were invalid and unenforceable. The jury awarded Judkins more than $154,000.00 in damages.

II. POST-TRIAL MOTIONS

There are numerous post-trial motions pending. The court will address each below. However, to summarize, we find that a permanent injunction is warranted, but that the declarations filed in support of Judkins's motion should be stricken. We award prejudgment interest, but at a lower rate than that requested by Judkins. We deny Judkins's motions for attorney fees and enhanced damages and to reconsider the Rule 50 decision made during trial.

Finally, we find that there is insufficient evidence to support the jury's findings of infringement of both patents under the doctrine of equivalents, and of literal infringement of the '634 Patent. Therefore, we enter judgment as a matter of law on those issues. All other aspects of the jury's verdict are supported by sufficient evidence, are not against the great weight of the evidence, and do not result in a miscarriage of justice, and will remain undisturbed by the court.

A Judkins's Motion for a Permanent Injunction and HT's Motion to Strike the Supporting Declarations

Judkins seeks a permanent injunction enjoining HT's manufacture and sale of the Polaris double-celled product and the first generation Polaris single-celled product. Judkins contends that he has been irreparably harmed by HT's willful infringement of the '120 Patent and will continue to suffer such harm if HT is not enjoined. HT argues that Judkins has not established that he is entitled to such relief under the appropriate legal standard.

We conclude that Judkins is entitled to permanent injunctive relief. However, given the court's entry of judgment as a matter of law that the '634 Patent is not infringed, such relief shall apply only to the Polaris brand double-celled product.

1. Motion to Strike Declarations

As an initial matter, we must resolve HT's motion to strike the declarations that Judkins attached to his motion for a permanent injunction. HT claims that these declarations should be stricken because they introduce new evidence that was not disclosed during discovery, nor admitted into evidence at trial. The declarations contain statements regarding the potential for harm to Mr. Judkins's reputation and licensing business in the absence of a permanent injunction. They also refer to Mr. Judkins's alleged oral promises to refrain from licensing his patented technology to HT.

Judkins did not respond to HT's objection that the declarations contradict, or improperly supplement, the trial record by adding reputational harms to the list of injuries suffered by Judkins as a result of HT's infringement. Instead, Judkins argues only that the declarations are proper because they do no more than explain and expand upon the terms of Judkins's licensing agreement with Nien Made, According to Judkins, because this agreement is complicated, with many amendments spanning a period of several years, further explanation is required. While we agree that the terms of the Nien Made licensing agreement are critical to determining whether to enter a permanent injunction, we find nothing so complex about its structure or terms that testimony, by way of post-trial declarations, is needed in order to proceed.

The court will not consider newly disclosed testimony regarding how certain terms of the agreement were arrived at, or understood, by the parties. To do so is both unnecessary, because the agreement speaks for itself, and unfair because Judkins had the opportunity to develop and disclose that evidence prior to trial, but failed to do so. It would be similarly unfair for the court to consider Judkins's newly disclosed evidence regarding the alleged harms to his reputation and business interests in deciding whether to grant a permanent injunction.

HT's motion to strike [doc. no. 234] is granted.

2. Motion for a Permanent Injunction

Without considering Judkins's now stricken declarations, we must determine whether a permanent injunction is warranted in this case. We conclude that it is.

In a patent case a district court must determine, in accordance with traditional equitable considerations, whether permanent injunctive relief is appropriate based on the particular facts and circumstances of the case before it. eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 390-94, 126 S.Ct. 1837, 164 L.Ed.2d 641 (2006). In doing so, a district court must not categorically grant, nor categorically deny, injunctive relief simply because there has been a finding of patent infringement. Id. at 392-93, 126 S.Ct. 1837. Rather, the court must apply the well-established four-factor test to requests for injunctive relief in patent cases, just as in all other types of cases. Id. at 391, 126 S.Ct. 1837.

Under that test, in order to be awarded injunctive relief, Judkins must demonstrate: (1) that he has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between Judkins and HT, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. Id. Upon application of those factors to the facts and circumstances of this case, we conclude that permanent injunctive relief is warranted in this case.

a. Irreparable Harm and Inadequate Remedy at Law

Judkins alleges that he has suffered irreparable harm due to HT's infringement in two ways: (1) by effectively requiring a compulsory license on unfavorable terms; and (2) by harming his reputation and future licensing activities in the window coverings industry. Judkins claims that these harms cannot be adequately remedied with monetary damages.

According to HT, infringement of Judkins's right to exclude is not irreparable harm under controlling precedent and any allegations of harm to reputation are speculative and now unsupported because we have stricken Judkins's declarations. HT also contends that even if Judkins could establish those harms, Judkins can be made whole with monetary damages, making a permanent injunction unnecessary.

We find that Judkins has established irreparable injury in this case and that monetary damages are inadequate to compensate him for that injury. In doing so we do not conclude that irreparable harm must always follow a finding of willful patent infringement. Rather, we have considered the facts and circumstances of this case.

According to the plain terms of the Nien Made license agreement,¹ Judkins promised that he would not license the technology at issue to any other third party. Failure to enter a permanent injunction in this case would result in Judkins's unwilling violation of that promise, which would have an unavoidable and undeniable effect on Judkins's future licensing negotiations. If a licensee specifically negotiates for exclusivity and Judkins cannot deliver it, Judkins's bargaining power and standing in the industry will be diminished. This is not speculation. It is logic. The court finds that in this case, where Judkins specifically promised that he would not further license the technology, failure to grant a permanent injunction will result in irreparable harm.

We also find that monetary damages would not fully compensate Judkins for this harm. Although one could describe Judkins's only commodity as patents and his only concern as being paid royalties for their use, that focus is too narrow. Judkins...