Wbip, LLC v. Kohler Co.
829 F.3d 1317
| Fed. Cir. | 2016Background
- WBIP (assignee of Westerbeke patents) sued Kohler for infringing U.S. Pat. Nos. 7,314,044 and 7,832,196 on low–carbon monoxide marine generator systems; jury found infringement, validity, willfulness, and awarded damages (later remitted).
- Patents claim a marine engine combining a cooled catalyst intercepting exhaust, a downstream coolant injector, an exhaust sensor, and an engine controller that controls air/fuel ratio and governs engine speed.
- Westerbeke demonstrated its Safe-CO gen-set at a 2004 boat show; Kohler’s employees saw the demonstration and Kohler later released a competing low–CO gen-set. WBIP alleged Kohler copied features.
- Kohler defended on obviousness (primarily starting from Phipps and adding known marine coolant elements) and lack of written description; it also contested willfulness.
- The jury rejected Kohler’s invalidity defenses and found willful infringement; district court enhanced damages 50%, found the case exceptional, awarded fees, but denied a permanent injunction; both parties appealed.
Issues
| Issue | Plaintiff's Argument (WBIP) | Defendant's Argument (Kohler) | Held |
|---|---|---|---|
| Obviousness of asserted claims | Claimed combination (cooled catalyst + controller + sensor + injector) solved a long‑felt problem; objective indicia (commercial success, copying, praise, skepticism, long‑felt need) show non‑obviousness | Phipps + conventional marine coolant elements would have made the claims obvious; objective evidence cannot overcome a strong prima facie case and lacks nexus to the novel elements | Jury verdict that claims were not proven obvious is affirmed; substantial evidence supports jury’s findings including nexus and objective indicia |
| Written description adequacy | Patent and prosecution history and embodiments support adequate written description for claimed control scheme and combination | Specification/prosecution do not sufficiently describe the claimed compound control scheme; Kohler presented limited testimony asserting lack of detail | Jury verdict that Kohler failed to prove lack of written description is affirmed; Kohler offered only conclusory evidence and did not meet clear‑and‑convincing burden |
| Willful infringement / enhanced damages | Kohler had pre‑suit knowledge, copied the product, and its defenses were unreasonable; district court reasonably enhanced damages 50% | Kohler’s defenses were objectively reasonable; insufficient evidence that Kohler knew of the patents at the time of infringement; Seagate standard not met | Willfulness finding and 50% enhancement affirmed (post‑Halo analysis): substantial evidence of knowledge and culpability; district court did not abuse discretion in enhancement |
| Permanent injunction | Injunction appropriate to prevent ongoing harm and protect patent rights; WBIP can supply market demand | District court correctly denied injunction based on public‑interest concerns (having multiple manufacturers of life‑saving product); ongoing royalty preferable | Denial of injunction vacated and remanded: district court abused discretion by relying solely on a categorical public‑interest rationale without full eBay analysis |
Key Cases Cited
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (controls modern obviousness analysis emphasizing common sense and motivation to combine)
- Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966) (sets the four Graham factors for obviousness)
- Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983) (secondary considerations can be most probative evidence of non‑obviousness)
- Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir. 2013) (objective evidence may relate to the claimed combination as a whole; nexus principles)
- In re Cyclobenzaprine Hydrochloride Extended‑Release Capsule Patent Litig., 676 F.3d 1063 (Fed. Cir. 2012) (obviousness requires considering all Graham factors before concluding invalidity)
- In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007) (previous two‑part willfulness test requiring objective recklessness; discussed and superseded by Halo)
- Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016) (discretionary enhanced damages standard; subjective bad faith can warrant enhancement and Seagate’s rigid rule rejected)
- Read Corp. v. Portec, Inc., 970 F.2d 816 (Fed. Cir. 1992) (factors for determining enhancement of damages)