Following the Court’s recent denial of Tyco Healthcare Group’s motion for judgment as a matter of law, Judge Sleet provides another blow to the defendant by granting plaintiff Becton Dickinson and Company’s motion for award of damages, prejudgment interest and a permanent injunction and denying the plaintiff’s motion to stay the injunction pending any appeal. Becton Dickinson and Company v. Tyco Healthcare Group LP, C.A. No. 02-1694-GMS, Memo. Order (D. Del. Oct. 29, 2008).
Becton Dickinson obtained an infringement verdict against the defendant in October 2004 along with an award of damages for a reasonable royalty and lost profits. The Court granted defendant’s motion for a new trial on infringement issues but denied their motions with respect to damages. The infringement case was re-tried in November 2007 and the parties entered a stipulation setting forth the manner in which damages should be calculated from January 2004 through the completion of the litigation. Id. at 1, 3. Tyco was again found to infringe plaintiff’s patent and plaintiff moved for an award of damages. In its opposition to plaintiff’s motion, Tyco contended that the lost profit numbers were not accurate based on the failure of plaintiff’s to have the capacity to manufacture the additional sales that were made during the relevant time period. The stipulation did not provide for damages to be effected because of lack of capacity. Judge Sleet refused to set aside the parties’ stipulation and adjust the damages where Tyco could have insisted that a provision be in the stipulation to cover such a situation, and awarded the plaintiff’s request for the reasonable royalty and lost profits damages. Id. at 4.
In agreement with Judge Robinson’s recent order in Cordis Corp. v. Medtronic Vascular Inc., C.A. No. 97-550-SLR, Order (D. Del. Sept. 15, 2008) (see post here), Judge Sleet found the applicable rate to be the prime rate, compounded quarterly as that rate “best represents the cost of borrowing money.” Id. at 5 (internal citations omitted).
Finally, in what has become a rare occurrence since the Federal Circuit’s decision in eBay, Inc. v. MercExchange, L.L.C., the Court granted plaintiff’s request for a permanent injunction. The parties in this case, are direct competitors, plaintiff established it lost 40% market share during the period of infringement, and although defendant’s business relationships may be harmed by the injunction “that is the risk Tyco took when it placed a potentially infringing product on the market and continued to make sales of that product.” Id. at 8.
And now a public service announcement…The Court in this matter denied the defendant’s request for a stay of the injunction pending their appeal where the request was only mentioned “in passing” and they failed to address all of the factors relevant to the analysis in its brief. Id. at 9-10. So make sure if you are going to move for some form of relief that you address all of the relevant factors required for the court to analyze your request.