Black & Decker Inc. v. Robert Bosch Tool Corp., No. 04 C 7955, 2006 WL 3883286 (N.D. Ill. Dec. 18, 2006) (St. Eve, J.).*
Judge St. Eve denied defendant’s motion for vacature of a lost profits award and for a new trial. First, defendant argued that the jury’s finding that it induced infringement could not stand because it shipped the product at issue with an AC power cord (non-infringing) and a battery (infringing), but plaintiff had not shown that each individual sale of a product resulted in an infringing use. Prior to trial defendant argued that plaintiff must show a one-to-one correspondence between each unit sold and a customer’s direct infringement citing Chiuminatta concrete Concepts, Inc. v. Cardinal Indus., Inc., 1 Fed. Appx. 879 (Fed. Cir. 2001) (unpublished op.). The Court denied that argument. In its post-trial motion, defendant argued that proof of sales is not sufficient for an award of induced infringement citing Golden Blount, Inc. v. Robert H. Peterson Co., 438 F.3d 1354 (Fed. Cir. 2006). But the Court distinguished Golden Blount because the issue in that case was that some product was returned to the alleged infringer before being assembled into an infringing product, which may or may not have been sold. There was no induced infringement because the product at issue may never have been sold. In the instant case, the Court held that the product with the infringing configuration had been sold and, therefore, upheld the jury’s finding of induced infringement.
Defendant also argued that the trial evidence overwhelmingly supported the conclusion that the product was "almost always" used in a non-infringing way (with an AC power cord instead of a battery) and that, therefore, the jury’s award should be vacated and a new trial ordered. But the Court held that its inquiry was whether the jury was presented with "a legally sufficient amount of evidence from which it could reasonably derive its verdict," not whether defendant’s conclusion was supported. The Court held that there was a legally sufficient amount of evidence. Each infringing product was shipped with an instruction manual and video demonstrating the infringing use.
*There is much more analysis of various opinions from this case in the Blog’s archives. Does anyone feel like this is becoming Black & Decker v. Robert Bosch week at the Blog? There is only one other opinion from the case in my queue and then we will be on to other cases.