Layne Christensen Co. v. Bro-Tech Corp.
2012 U.S. Dist. LEXIS 67997
D. Kan.2012Background
- Over four days starting January 24, 2012, a jury trial pursued Layne Christensen Co. and Arup SenGupta's patent infringement claim against Purolite concerning U.S. Patent No. 7,291,578.
- The jury found Purolite infringed Claims 1, 7, 10, 11, 12, and 13, upheld enablement, awarded $229,171.42 in damages, and found willful infringement.
- Posttrial, Purolite moved for judgment as a matter of law (JMOL) on infringement and willfulness and moved to strike Dr. Clifford’s testimony; the court reserved ruling on the JMOL until after trial.
- The court denied JMOL on infringement but granted JMOL in Purolite’s favor on willfulness, ordering a judgment for Purolite on willfulness and denying an alternative new-trial remedy.
- Purolite’s motion for a new trial was denied except that it would be ordered if the willfulness JMOL were overturned.
- Plaintiffs moved for a permanent injunction; the court granted the injunction restricting Purolite from infringing the patent and from selling FerrIX A33E-making processes and products.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Infringement: sufficient evidence to support | Layne: FerrIX has iron oxide dispersed throughout the beads, satisfying 'throughout'. | Purolite: beads have core-shell structure; center lacks iron oxide; no literal infringement. | Infringement sustained; sufficient evidence to support the verdict |
| Willfulness: objective recklessness required | Layne contends Purolite ignored strong infringement/invalidity defenses; objective risk evident. | Purolite argues reasonable defenses; Seagate prong not met given substantial defenses and evidence. | JMOL granted for willfulness in Purolite's favor; no willfulness finding |
| Permanent injunction: four-factor test satisfied | Layne asserts irreparable harm, inadequate monetary relief, and balance of hardships favoring injunction; public interest supports it. | Purolite contends irreparable harm not shown and that royalties could suffice; public interest weighs against injunction. | Permanent injunction granted |
| Enhanced damages: precondition not met | Layne seeks triple damages for willful infringement under 35 U.S.C. § 284. | Willful infringement award not warranted due to lack of willfulness at JMOL stage. | Denied; enhanced damages not awarded |
| Attorney fees: exceptional case requirement under § 285 | Layne seeks fees as prevailing party in an exceptional case due to willful infringement and conduct. | Purolite argues conduct did not rise to exceptional level; local rule noncompliance taints request. | Fees denied; case not deemed exceptional; local-rule compliance issue noted |
Key Cases Cited
- In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007) (two-pronged Seagate test for willful infringement)
- Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011) (objective prong—reasonable no-infringement position defeats willfulness)
- Spine Solutions, Inc. v. Medtronic Sofamor Danek USA, Inc., 620 F.3d 1320 (Fed. Cir. 2010) (objective prong can be defeated where defenses are reasonable)
- DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314 (Fed. Cir. 2009) (close questions on validity/inequitable defenses undermine willfulness)
- MercExchange, L.L.C. v. eBay, Inc., 500 F. Supp. 2d 1123 (E.D. Va. 2007) (irreparable harm factors guiding permanent injunction inquiry (pre-eBay context discussed))