Crane Sec. Techs., Inc. v. Ab

337 F. Supp. 3d 48
CourtDistrict Court, District of Columbia
DecidedAugust 23, 2018
DocketCivil Action No. 14-12428-LTS
StatusPublished
Cited by3 cases

This text of 337 F. Supp. 3d 48 (Crane Sec. Techs., Inc. v. Ab) is published on Counsel Stack Legal Research, covering District Court, District of Columbia primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Crane Sec. Techs., Inc. v. Ab, 337 F. Supp. 3d 48 (D.D.C. 2018).

Opinion

Leo T. Sorokin, United States District Judge

In this intellectual property dispute, Plaintiffs Crane Security Technologies, Inc. and Visual Physics, LLC (together, "Crane") alleged that Defendant Rolling Optics AB ("RO") infringed five of Crane's patents. RO moved to dismiss for lack of personal jurisdiction, and the Court denied that motion. Doc. No. 34. RO then asserted defenses and counterclaims for declaratory judgment of invalidity and non-infringement. The Court held a hearing pursuant to Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), and issued an order construing five claim terms. See Crane Sec. Techs. Inc. v. Rolling Optics AB, 166 F.Supp.3d 76 (D. Mass. 2016) (the "Markman Order"). The parties subsequently filed motions for summary judgment. The Court entered summary judgment in favor of Crane as to infringement of Crane's patents by certain RO products made with technology retired in 2013 (the "old technology") and with technology in place since 2013 (the "new technology"),1 as well as to *51the validity of certain claim terms. See Crane Sec. Techs. Inc. v. Rolling Optics AB, 2018 WL 575697 (D. Mass. Jan. 26, 2018) (the "Summary Judgment Order"). The facts of this case are described in detail in the Markman Order and the Summary Judgment Order.

Following a trial, the jury returned a verdict on May 9, 2018 in favor of Crane, finding that RO actively induced infringement by third parties, that Crane was entitled to damages for the direct and induced infringement in the amount of $119,186, and that RO's infringement was willful. The jury also rejected RO's two remaining invalidity defenses. Doc. No. 475. Pending before the Court are RO's renewed motion for judgment as a matter of law, Doc. No. 495, Crane's motion for a permanent injunction, Doc. No. 497, and Crane's motion for enhanced damages and attorneys' fees, Doc. No. 491. For the reasons that follow, the Court ALLOWS in part and DENIES in part RO's motion for judgment as a matter of law and ALLOWS in part and DENIES in part Crane's motions for injunctive relief, enhanced damages, and attorneys' fees. The Court enjoins RO from future infringement of Crane's patents to the extent outlined herein and orders RO to pay Crane enhanced damages of $326,244.

I. RENEWED MOTION FOR JUDGMENT AS A MATTER OF LAW (DOC. NO. 495)

RO renews its motion for judgment as a matter of law in its favor on the issues of active inducement, actual notice of infringement, and anticipation of Claims 62 and 63 of the '360 patent by the Matsumoto patent application ("Matsumoto").

A court may grant judgment as a matter of law after conclusion of a jury trial when the evidence "points so strongly and overwhelmingly in favor of the moving party that no reasonable jury could have returned a verdict adverse to that party." Monteagudo v. Asociacion de Empleados del Estado Libre Asociado de Puerto Rico, 554 F.3d 164, 170 (1st Cir. 2009) (citations omitted). The Court examines "the evidence presented to the jury, and all reasonable inferences that may be drawn from such evidence, in the light most favorable to the jury verdict." Cigna Ins. Co. v. Oy Saunatec, Ltd., 241 F.3d 1, 8 (1st Cir. 2001) (citations omitted).

A. Active Inducement

RO first contends that Crane failed to introduce evidence at trial sufficient to support a verdict that RO actively induced infringement with respect to each of the following products imported into the United States by third parties: (1) the Blu Giovello products, (2) the Luna di Luna products, (3) the Taittinger products, (4) the Hennessy products, (5) the UGG products, or (6) the Pierce Atwood business cards. The Court instructed the jury that, to prove active inducement of infringement, Crane was required to show (i) that RO aided, instructed, or otherwise acted with the intent to cause another party to import its foils or labels into the United States; (ii) that RO knew of, or showed willful blindness to the existence of, Crane's patents; and (iii) that RO knew, or showed willful blindness to the fact, that the induced acts constituted patent infringement.2 Doc. No. 473. RO does not *52object to the instruction delivered and does not contend that it was unaware of Crane's patents.

As to the Blu Giovello, Taittinger, and Luna di Luna labels, Crane does not oppose RO's motion for judgment as a matter of law and does not oppose a corresponding reduction in the jury's damages award by $10,438. Doc. No. 509 at 2 n. 2. The Court therefore ALLOWS RO's motion with respect to these products.3

With respect to the Hennessy labels and the UGG labels sent to CMR, the Court finds that the evidence, viewed in the light most favorable to the verdict, supports a reasonable jury determination of active inducement of infringement. First, the trial evidence sufficiently supports the conclusion that RO understood, or at least was willfully blind, to the fact that the importation and use of its products in the United States infringed Crane's patents. RO's co-founder, Axel Lundvall, had extensive knowledge of Crane's patents throughout the development of RO's technology. He took note of the debut of Crane's technology on the Swedish kroner in 2006. See Doc. No. 481 at 54-55. He learned of the application for the parent patent to Crane's patents-in-suit in 2007, upon the rejection in Sweden of Lundvall's own patent application. Id. at 55-56. Lundvall testified at trial that, after that 2007 rejection, he reviewed Crane's parent patent application and concluded that "so long as we could stay over 50 microns, we didn't have to mind-or bother about that patent." Id. at 58 (referring to the diameter of the lenses in the micro-optic system). The record contains no particular support for that distinction. Lundvall also became aware of the '842 patent by 2009.

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Bluebook (online)
337 F. Supp. 3d 48, Counsel Stack Legal Research, https://law.counselstack.com/opinion/crane-sec-techs-inc-v-ab-dcd-2018.