Integrated Cards, L.L.C. v. McKillip Indus., Inc. d/b/a USA/Docufinish, No. 06 C 2071 (N.D. Ill. Nov. 19, 2009) (Kendall, J.).
Judge Kendall, following a bench trial, held that pre-suit damages were barred by laches, but that the claims were not barred by equitable estoppel, in this patent case involving integrated labels. Laches was presumed because plaintiff and its founder/predecessor entities were aware of defendant’s alleged infringement for more than six years before filing. And defendant was prejudiced by plaintiff’s delay because defendant purchased more than $1M in machines for producing the allegedly infringing integrated labels. Laches, therefore, barred pre-suit damages.
Equitable estoppel, however, did not apply and bar all damages because plaintiff never suggested to defendant that plaintiff would not sue. There was no evidence that plaintiff or its predecessors ever threatened litigation or otherwise misled defendant into believing it would not get sued. And when litigation has not been threatened, courts typically will not estop patentee’s suit. Plaintiff’s suit, therefore, was not equitably estopped.
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