Metso Minerals, Inc. v. Powerscreen International Distribution Ltd.
2011 U.S. Dist. LEXIS 141854
E.D.N.Y2011Background
- Metso filed a patent infringement case against Powerscreen, Terex, PSNY, and Emerald seeking damages, interest, and fees.
- After a seven-week trial, the jury found willful infringement of Metso's '618 patent and awarded $15.8 million in damages.
- Metso sought four post-trial reliefs: treble damages, pre-/post-judgment interest, supplemental damages accounting, and attorneys’ fees/costs.
- Fact discovery closed October 1, 2007; Metso presented damages using a hypothetical 10% royalty base from 2000–Sept. 30, 2007.
- The court bifurcated damages and later granted supplemental damages for post-October 2007 infringements through July 25, 2011.
- The order addresses enhancement of damages, prejudgment/postjudgment interest, a post-verdict accounting, and costs/fees.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether enhanced damages (treble) are warranted | Metso contends willful infringement justifies doubling under Read/Portec factors. | Powerscreen/Terex contend no automatic treble damages despite willfulness and challenge some Read factors. | Enhancement granted: damages doubled from 15.8M to 31.6M. |
| Whether pre- and post-judgment interest should be awarded | Metso seeks prejudgment interest on pre-judgment damages and post-judgment interest on all amounts. | Defendants oppose or limit rates and compounding; dispute applicability to enhanced amounts. | Both prejudgment and post-judgment interest awarded; prejudgment interest calculated with a stated Treasury-rate-based formula and compounded; post-judgment interest awarded under 28 U.S.C. § 1961. |
| Whether an accounting for supplemental damages pre- and post-verdict is warranted | Metso seeks supplemental damages for post-October 2007 infringing sales not considered by the jury. | Defendants argue waiver, lack of proof, and that the jury's verdict precludes further accounting. | Supplemental accounting granted for post-October 2007 period through July 25, 2011 at a 10% royalty; pre-verdict supplemental damages awarded after evaluating waiver issues. |
| Whether attorneys’ fees should be awarded under 35 U.S.C. § 285 | Metso asserts exceptional-case status due to willfulness and conduct warrants fees. | Defendants argue no exceptional case and no basis for fees given lack of egregious conduct. | Attorneys’ fees denied; no exceptional-case finding. |
| Whether costs should be awarded | Metso seeks taxable costs under Rule 54 and § 285 principles for prevailing party. | Defendants dispute many claimed costs as not allowable. | Costs award authorized; plaintiff must file bill of costs with an affidavit; objections allowed within 5 days. |
Key Cases Cited
- Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed.Cir.1992) (guides factors for enhanced damages and incendiary conduct)
- i4i Ltd. Partnership v. Microsoft Corp., 598 F.3d 831 (Fed.Cir.2010) (scope of enhancement factors and culpability)
- General Motors Corp. v. Devex Corp., 461 U.S. 648 (U.S. 1983) (prejudgment interest should be awarded absent justification to withhold)
- TiVo, Inc. v. EchoStar Commc’ns Corp., 2006 U.S. Dist. LEXIS 64291 (N.D. Tex. 2006) (discretion in setting prejudgment interest rate)
- Stryker Corp. v. Intermedies Orthopedics, Inc., 891 F. Supp. 751 (W.D. Mo. 1995) (prejudgment interest compounding and willfulness considerations)
- Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197 (Fed.Cir.2010) (supplemental damages post-verdict in patent cases)
- Mikohn Gaming Corp. v. Acres Gaming, Inc., 2001 U.S. Dist. LEXIS 23416 (D. Nev. 2001) (standard for post-verdict accounting)
- E.G.L. Gem Lab Ltd. v. Gem Quality Institute, Inc., 90 F. Supp. 2d 277 (S.D.N.Y. 2000) (trademark context; not analogous to patent damages)