Ernster v. Ralston Purina Co.
| Citation | 757 F. Supp. 1030 |
| Decision Date | 28 February 1991 |
| Docket Number | No. 87-1662C(6).,87-1662C(6). |
| Parties | John H. ERNSTER and Excelpro, Inc., Plaintiffs, v. RALSTON PURINA COMPANY, Van Camp Seafood Company, Inc., and Deltown Chemurgic Corporation, Defendants. |
| Court | U.S. District Court — Eastern District of Missouri |
David Helfrey, Gino Battisti, Patricia N. McCloskey, Guilfoil, Petzall and Shoemake, St. Louis, Mo., for John H. Ernster.
Paul M. Denk, St. Louis, Mo., for plaintiffs.
Randall G. Litton, Richard C. Cooper, Price, Heneveld, Cooper, DeWitt & Litton, Grand Rapids, Mich., Alan S. Boston, Lewis & Rice, St. Louis, Mo., for Ralston Purina Co. and Van Camp Seafood, Inc. Thomas C. Walsh, Bruce C. Oetter, Bryan, Cave McPheeters & McRoberts, St. Louis, Mo., for Deltown Chemurgic Corp.
This matter is before the Court on the following motions: plaintiffs' motion and supplemental motion to alter or amend judgment, defendants' motions for judgment notwithstanding the verdict and for new trial, and a Rule 59 motion for a new trial or remittitur filed by defendants Ralston and Van Camp.
In this motion, plaintiffs seek to have the judgment altered or amended in several respects. First, plaintiffs claim the right to enhanced, or treble damages, pursuant to 35 U.S.C. § 284, due to the jury's finding of willfulness. Second, plaintiffs seek attorney's fees, urging the Court to find that this is an "exceptional" case within the meaning of 35 U.S.C. § 285. Third, plaintiffs request an award of prejudgment interest, compounded, from the date of infringement, at the prevailing Missouri rate of 9 percent. Finally, plaintiffs seek a permanent injunction to guard against future infringement of the patents.
According to 35 U.S.C. § 284, "the court may increase the damages up to three times the amount found or assessed." According to case law, increased damages are not mandatory upon a finding of willfulness, but rather, are within the court's discretion. Modine Manufacturing Co. v. The Allen Group, 917 F.2d 538, 543 (Fed. Cir.1990); Fromson v. Western Litho Plate and Supply Co., 13 USPQ2d 1856, 1862, 1989 WL 149268 (E.D.Mo.1989). In this particular case, this Court finds that even though the jury rendered a verdict of willful infringement, the circumstances surrounding this case do not justify such remedies. The Court finds no evidence of bad faith or unconscionable conduct by either party and considers increased damages inappropriate here.
Fromson, supra, 13 USPQ2d at 1862 (emphasis added).
In this particular case, the Court does not consider the jury's finding of willfulness as sufficient to support a finding that this case is exceptional. In addition, plaintiffs have not proven to the Court, by clear and convincing evidence, that the circumstances of this case warrant the case exceptional. The question of infringement was definitely a close one. Except for the jury's willfulness finding, the Court finds no specific evidence of any factors such as misconduct, frivolity, or vexatious or unjustified litigation, which would support a finding of exceptional. Defendants should not be penalized for defending the charges in this case, and their conduct was not such to warrant the award of attorney's fees.
Plaintiffs next seek an award of prejudgment interest on most of the damages awarded.1 Plaintiffs seek interest, compounded, from the date of infringement, at the prevailing Missouri rate of 9 percent. While defendants do oppose some aspects of the award, they indicate that prejudgment interest is appropriate in certain respects. However, defendants seek to restrict such an award to the damages awarded for the infringement claims only, and oppose an award as to any other claims for which they were found liable. In addition, defendants state that the interest should not be compounded, and should be calculated at the treasury rate prevailing at the time of infringement, or at the time defendant Ralston purchased the product from defendant Deltown.
Prejudgment interest should ordinarily be awarded, pursuant to 35 U.S.C. § 284, absent some justification. General Motors Corp. v. Devex Corp., 461 U.S. 648, 654, 103 S.Ct. 2058, 2061, 76 L.Ed.2d 211 (1983). The purpose of prejudgment interest is to compensate the patent owner for the loss of the money to which the owner had a right, as a result of the infringement. Fromson, supra, 13 USPQ2d at 1862. The rate at which such interest should be calculated, and the decision whether it should be simple or compounded, are within the discretion of the trial court. Bio-Rad Laboratories v. Nicolet Instrument Corp., 807 F.2d 964, 969 (Fed.Cir.1986).
With respect to the damages awarded pursuant to the infringement claims, this Court finds that plaintiffs are entitled to prejudgment interest, compounded, from the date of the infringement, February 1, 1987, to the date of judgment, October 19, 1990. An award of compound rather than simple interest assures that the patent owner is fully compensated. Fromson, supra, 13 USPQ2d at 1862. The Court finds that the interest should be calculated at the treasury bill rates applicable during the above-mentioned time period.
The Court also finds that prejudgment interest should not be awarded as to any of the other counts on which plaintiffs prevailed. Such is not recoverable in tort actions, and thus, not on the misappropriation and fraud claims. C & H Sugar Co. v. Kansas City Terminal Warehouse Co., 602 F.Supp. 183, 190 (W.D.Mo.1985). In addition, damages as to the contract and unjust enrichment claims are of the nature as not being readily ascertainable, and therefore, prejudgment interest on those amounts is inappropriate. C & H Sugar, supra, at 183.
The general rule is that an injunction issues when infringement is adjudged, absent a sound reason. Such is authorized by 35 U.S.C. § 283. Even the fact that a defendant has stopped infringing is usually not considered a reason to deny a request for injunction, unless the evidence is very persuasive that further infringement will not take place. Laitram Corp. v. Cambridge Wire Cloth Co., 785 F.2d 292, 195-6 (Fed.Cir.1986).
In this case, defendants claim that the infringed product is no longer manufactured or sold and that no evidence exists that they would re-enter the market with that product. However, the Court finds that issuance of the injunction will not harm defendants and will assure plaintiffs of no further infringement. Therefore, the Court will grant the plaintiffs' request.
In this motion, plaintiffs seek to alter or amend the Court's judgment to include a finding of joint and several liability by the defendants as to all claims adjudged against them. Plaintiffs state that since the jury found that the defendants conspired to infringe, that the defendants ultimately are jointly and severally liable for all damage which resulted from that conspiracy. While conceding that joint and several liability is applicable to the conspiracy count, defendants oppose such with respect to all other claims. Furthermore, defendants indicate that since joint and several liability applies to the conspiracy count, the...
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Transmatic, Inc. v. Gulton Industries, Inc., 90-70987.
... ... denied, ___ U.S. ___, 111 S.Ct. 2017, 114 L.Ed.2d 103 (1991); Ernster v. Ralston Purina Co., 757 F.Supp. 1030 (E.D.Mo.1991) (choosing not to award increased damages ... ...