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Jurors award more than $10M in patent infringement dispute

By: Cristina Janda//June 19, 2013//

Jurors award more than $10M in patent infringement dispute

By: Cristina Janda//June 19, 2013//

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VERDICT: $10,100,223

Case type: Intellectual property

Case name:
Rockwell Automation Inc. and Rockwell Automation Technologies Inc. v. WAGO Corp. and WAGO Kontakttechnik GmbH & Co. KG

Case number:

U.S. District Court, Western District of Wisconsin

Injuries claimed:
Patent infringement

Special damages:
Permanent injunction, damages for infringement no less than a reasonable royalty under 35 U.S.C. § 284 in an amount to be determined at trial, prejudgment and post-judgment interest, and other relief as the court deems just and equitable

Trial dates:
Oct. 11-15

Disposition date:
Oct. 15

Plaintiffs’ attorneys and firm:
Abbe David Lowell, Lisa Schapira and Paul Tanck of Chadbourne & Parke LLP, New York, N.Y.; Emily Abrahams and Scott Sonny Balber of Cooley LLP, New York, N.Y.; Jason Hintz of Haynes and Boone LLP, New York, N.Y.; and Kristin Graham Noel and Matthew Duchemin of Quarles & Brady LLP, Milwaukee

Defendants’ attorneys and firm:
David Lee De Bruin, Gilberto Eduardo Espinoza, John Scheller, Jolanda Krawczyk and Marshall John Schmitt of Michael Best & Friedrich LLP, Milwaukee; Jay Reed Campbell and Mark Cromwell Johnson of Renner Otto Boisselle & Sklar, Cleveland, Ohio; Andrew Clarkowski and Michael Modl of Axley Brynelson LLP, Madison; and Robert Cook, of Whitham Curtis Christofferson & Cook PC, Reston, Va.

Plaintiffs Rockwell Automation Inc., a Wisconsin corporation, and Rockwell Automation Technologies Inc., an Ohio corporation, filed a lawsuit Nov. 16, 2010, in federal court against defendants Germantown-based WAGO Corp. and its German parent company, WAGO Kontakttechnik GmbH & Co. KG.

The plaintiffs asserted the defendants were infringing six U.S. patents by making, using, offering for sale and selling within the United States or importing into the United States products or processes covered under patent.

Rockwell Technologies asserted it was the owner by assignment of the patents, and Rockwell was the exclusive licensee.

The defendants filed an answer and affirmative defenses in October 2011. WAGO stated it was organized under the laws of the state of Nevada, and not Wisconsin as the plaintiffs asserted in their complaint. The defendants also denied that the U.S. legal term “corporation” appropriately characterized the form of business organization of WAGO GmbH, which was organized under German law in a form that was, as they asserted, more accurately characterized as a limited partnership.

The defendants generally denied the remaining allegations of the plaintiffs’ complaint. Their affirmative defenses were patent invalidity, non-infringement, that plaintiffs failed to mark their products with patent notices in accordance with 35 U.S.C. § 287, the doctrines of laches, acquiescence, and unclean hands or other legal or equitable doctrines.

The defendants also argued that each of the patents in the lawsuit included at least one invalid claim that had not been disclaimed in accordance with 35 U.S.C. § 288 and therefore the plaintiffs were not eligible to recover of their costs in the action. They said the plaintiffs’ allegations of patent infringement were without merit and this was an exceptional case such that an award to the defendants of costs and attorney fees under 35 U.S.C. § 285 was warranted.

The lawsuit went to trial and on Oct. 15 jurors in U.S. District Court, Western District of Wisconsin, returned a verdict of $10,100,223 in favor of the plaintiffs. The jury first returned a special verdict on the issue of damages Oct. 11. The case was assigned to District Judge William Conley and referred to Magistrate Judge Stephen Crocker.

After trial, the plaintiffs filed a bill of costs Oct. 29 for $147,614.62, which consisted of $350 for fees of the clerk, $4,380 for service of summons and subpoena, $72,904.32 for printed or electronically recorded transcripts necessarily obtained for use in the case, $5,520.77 for witness fees, $60,251.03 as fees for exemplification and the costs of making copies of any materials, and $4,208.50 for compensation of interpreters and costs of special interpretation services under 28 U.S.C. § 1828.


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