Probatter Sports, LLC v. Sports Tutor, Inc.

Citation586 F.Supp.3d 80
Decision Date18 February 2022
Docket Number05-cv-1975
Parties PROBATTER SPORTS, LLC, Plaintiff, v. SPORTS TUTOR, INC., Defendant.
CourtU.S. District Court — District of Connecticut

586 F.Supp.3d 80

PROBATTER SPORTS, LLC, Plaintiff,
v.
SPORTS TUTOR, INC., Defendant.

No. 05-cv-1975

United States District Court, D. Connecticut.

Signed February 18, 2022


586 F.Supp.3d 85

Damian K. Gunningsmith, John R. Horvack, Jr., Fatima Lahnin, Carmody Torrance Sandak & Hennessey, LLP, New Haven, CT, Edmund J. Ferdinand, III, Ferdinand IP, LLC, Westport, CT, Thomas Joseph Fitzgerald, Lathrop & Gage, L.C., New York, NY, for Plaintiff.

Blake R. Hartz, Pro Hac Vice, John C. McNett, Pro Hac Vice, Woodard, Emhardt, Henry, Reeves & Wanger, LLP, Quentin G. Cantrell, Pro Hac Vice, Woodard, Emhardt, Moriarty, McNett & Henry, LLP, Stephen E. Zlatos, Pro Hac Vice, Woodard, Emhardt, Naughton et al., Indianapolis, IN, Lee A. Duval, Patrick M. Fahey, Shipman & Goodwin LLP, Hartford, CT, for Defendant.

DAMAGES AWARD

Vanessa L. Bryant, United States District Judge

This is a patent infringement case. In earlier decisions, the Court found that the patents-in-suit owned by Probatter Sports, LLC ("Probatter" or "patent holder" or "patentee") were valid and that Sports Tutor, Inc. ("Sports Tutor" or "infringer") infringed on those patents. Part. Summ. J. Dec., Dkt. 439; Validity Dec., Dkt. 439; Infringement Dec., Dkt. 468. The Court now determines what damages are adequate to compensate for the infringement pursuant to 35 U.S.C. § 284. After careful review of the record, which spans over fourteen years, including evidence presented over seven days of trial, the Court makes the following factual findings and legal conclusions.

I. BACKGROUND AND PROCEDURAL HISTORY

This is a long-running patent infringement case filed in December 2005. Compl., Dkt. 1. The Court has delineated the facts and procedural history of this case in many prior decisions and assumes the parties’ familiarity therewith.

After multiple stays for Patent and Trademark Office proceedings, the Court found the patents valid and conducted a trial and issued a written decision finding and articulating its reasons for finding Defendant infringed Plaintiff's patent. Part. Summ. J. Dec., Dkt. 439; Validity Dec., Dkt. 439; Infringement Dec., Dkt. 468. That decision was appealed and affirmed. In this decision the Court resolves the sole remaining issue, damages, delineating only the facts and procedural history necessary to articulate the reasoning for its calculation and award of damages.

Probatter designs, manufactures, sells, installs and services a line of baseball pitching machines. Probatter designed and manufactured a three-wheeled pitching machine, which contained patented features such as regenerative braking, a programmable controller, and horizontal and vertical linear actuators. The two patents at issue are United States Patent Number 6,182,649 (the "’649 Patent") and United States Patent Number 6,546,924 (the "’924 Patent") (collectively hereinafter, the "Patents-in-Suit"). The patented feature at issue here is dynamic braking, a feature that causes the rapid deceleration of the wheels inside the ball throwing machine. With rapid deceleration, the machine can rapidly eject a variety of unpredictable pitches, allowing the user to experience a real at-the-bat experience. Probatter's more commercially

586 F.Supp.3d 86

successful patented invention is a video system which when integrated with dynamic braking creates a life-like batting experience.

On July 15, 2015, the Court granted partial summary judgment in favor of Probatter against Sports Tutor. The Court found Probatter established Sports Tutor infringed upon the Patents-in-Suit by incorporating dynamic braking in its ball-throwing machine without a license to do so beginning in March 2003. Part. Summ. J. Dec. Dkt. 439. That same month, a five-day bench trial was held on issues relating to the validity of the infringement claims, willfulness of the infringement, damages, and prejudgment interest. Tr. 7/13/2015, Dkt. 455; Tr. 7/14/2015, Dkt. 456; Tr. 7/15/2015, Dkt. 452; Tr. 7/16/2015, Dkt. 453; Tr. 7/21/2015, Dkt. 454. On March 23, 2016, the Court entered judgment in favor of Probatter on the issue of validity and enjoined Sports Tutor from making, using, offering for sale, or selling HomePlate machines (the "infringing machine"). Validity Dec. Dkt. 468. Approximately thirteen years passed between when the infringement began and when Sports Tutor was enjoined.

The Court could not rule on the issue of damages when it rendered its decision on infringement because Probatter disclosed the method and measure of damages on the eve of trial. Damages Disc. Dec., Dkt. 469. Probatter initially disclosed that it would be seeking damages under the loss profits measure of damages. Id. at 1. However, after the close of discovery and shortly before trial, Probatter changed counsel and disclosed that it would be seeking damages under the reasonable royalty measure of damages, a method suggested in its earlier filings. Id. To fairly adjudicate damages on the merits, the Court reopened discovery on that issue alone, affording Sports Tutor two months to conduct discovery on Probatter's claim and affording Probatter one month to conduct rebuttal discovery on Sports Tutor's defenses. Id. at 21.

During the interim, Sports Tutor appealed the Court's infringement and validity decisions, which the Federal Circuit affirmed. Dkt. 471, 486. Thereupon the Court resumed consideration of the issue of damages and conducted an evidentiary hearing over two days, beginning on October 31, 2019 and ending November 1, 2019. Dkt. 539; Tr. 10/31/2019, Dkt. 562; Tr. 11/1/19, Dkt. 563. Briefing ensued and the Court conducted a final teleconference on April 12, 2021, resolving the final issue precedent to ruling on the issue of damages.

II. REASONABLE ROYALTY RATE

A. Legal Standard

Section 284 of Title 35 of the United States Code specifies the measure of damages for patent infringement. "Upon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court." Section 284 "is unequivocal that the district court must award damages in an amount no less than a reasonable royalty." Dow Chem. Co. v. Mee Indus., Inc. , 341 F.3d 1370, 1381 (Fed. Cir. 2003).

Though a court "must award damages in an amount no less than a reasonable royalty"; id. ; "[t]he burden of proving [the amount of] damages falls on the patentee." Lucent Techs., Inc. v. Gateway, Inc. , 580 F.3d 1301, 1324 (Fed. Cir. 2009). See also

586 F.Supp.3d 87

Lindemann Maschinenfabrik GmbH v. Am. Hoist & Derrick Co., Harris Press & Shear Div. , 895 F.2d 1403, 1406 (Fed. Cir. 1990) (hereinafter Lindemann ). These concepts are at cross purposes when a patentee has not met its burden of proving damages but the record suggests that a reasonable royalty would be more than $0.

There is little guidance on what a district court should do when a patentee fails to present evidence of a single comparable royalty from which a reasonable royalty can be discerned. Further, before the enactment of § 284 the Supreme Court suggested that an award of damages required at least a minimal showing of damages. Dowagiac Mfg. Co. v. Minnesota Moline Plow Co. , 235 U.S. 641, 35 S.Ct. 221, 59 L.Ed. 398 (1915). In Dowagiac , the Court also discussed the importance of not over-compensating a patentee that presents minimal evidence.

A patentee is only entitled to the reasonable royalty for its patented feature; and is not entitled to damages for the entire product when the product contains other non-infringing features. Id. at 646–47, 35 S.Ct. 221. The Court cited to the reasoning in Tilghman v. Proctor , 125 U.S. 136, 145, 8 S.Ct. 894, 31 L.Ed. 664 (1888) that

[i]t is inconsistent with the ordinary principles of practice of courts of chancery, either, on the one hand, to permit the wrongdoer to profit by his own wrong, or, on the other hand, to make no allowance for the cost and expense of conducting his business or to undertake to punish him by obliging him to pay more than a fair compensation to the person wronged.

Id. at 647, 35 S.Ct. 221. In applying these standards to the case before it, the Supreme Court held that "the evidence did not present sufficient data to justify an assessment of substantial damages" finding no evidence of an established royalty, the nature of the invention, the inventions utility and advantages, the extend of its use, or hurtful competition. Id. at 648–50, 35 S.Ct. 221. The Court reversed and remanded for further factual findings. Id. at 651, 35 S.Ct. 221.

How a patentee proves a reasonable royalty rate logically would vary from case to case. However, Federal Circuit case law has held unequivocally that a patentee is not required to set forth expert testimony in support of its claim of damages. See 35 U.S.C. § 284 ("The court may receive expert testimony as an aid to determination of damages or what royalty would be reasonable under the circumstances.") (emphasis added); Dow Chem. Co. , 341 F.3d at 1382 ("[S]ection 284 is clear that expert testimony is not necessary to the award of damages ....").

The trial court has broad discretion in deciding the reasonable royalty where the patentee introduced little or no credible evidence of a reasonable royalty. The Federal Circuit has declared that a district court's obligation to award some amount of damages "does not mean that a patentee who puts on little or no satisfactory evidence of a reasonable royalty can successfully appeal on the ground that the amount awarded by the court is not ‘reasonable’ and therefore contravenes section 284." Id. at 1382 (citing Lindemann, 895 F.2d at 1406 ).

Nor is exactitude required. "[A] finding that a royalty estimate may suffer from factual flaws does not, by itself, support the legal conclusion that zero is a reasonable royalty." Apple Inc. v. Motorola, Inc. , 757 F.3d 1286, 1327 (Fed. Cir. 2014), overruled on other grounds by...

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