United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
GILSTRAP UNITED STATES DISTRICT JUDGE.
the Court is Whirlpool Corporation's
(“Whirlpool”) Motion for Judgment, for an Order
Designating Whirlpool the Prevailing Party, for Enhanced
Damages, for an Exceptional Case Finding, and for an Order
Awarding Pre- and Post-judgment Interest (Dkt. No. 175).
Having considered the Motion, the Court is of the opinion the
Motion should be and hereby is
DENIED-IN-PART, as set forth herein.
Whirlpool is Entitled to Judgment in Its Favor and a
Declaration That It Is the Prevailing
Water, LLC (“TST”) does not dispute this portion
of Whirlpool's Motion. (See generally Dkt. No.
178; id. at 1 (“That Whirlpool . . . prevailed
overall, is hardly noteworthy.”)). Under Rule 54(c) of
the Federal Rules of Civil Procedure, the Court's
judgment should “grant the relief to which each party
is entitled.” Accordingly, and consistent with the
jury's verdict (Dkt. No. 148), Whirlpool is entitled to a
(i) TST infringed claims 1, 4, 10, 15, 17, 20, and 27;
(ii) those claims are not invalid;
(iii) TST's infringement was willful; and
(iv) Whirlpool's damages through the verdict's date
(excluding interest, any enhancement, and any attorney's
fees award) are $7.6 million.
prevailing party must have “received at least some
relief on the merits, ” and “[t]hat relief must
materially alter the legal relationship between the parties
by modifying one party's behavior in a way that
‘directly benefits' the opposing party.”
Shum v. Intel Corp., 629 F.3d 1360, 1367 (Fed. Cir.
2010) (citations omitted). Here, Whirlpool has
“received at least some relief on the merits”
which “modifie[s]” TST's behavior and
“directly benefits” Whirlpool. Accordingly,
Whirlpool is properly designated the prevailing party for
purposes of Rule 54(d).
prevailing party, Whirlpool is entitled to costs under Rule
54(d), 28 U.S.C. §1920, Local Rule CV-54, and this
Court's Standing Order Regarding Bill of Costs. The
Parties are ORDERED to meet and confer to
resolve any disputes regarding Whirlpool's taxable costs
and submit any unresolved disputes to the Court as necessary.
For the reasons set forth above, Whirlpool's Motion is
hereby GRANTED with respect to prevailing
party status. (Dkt. No. 175 at 2).
jury found that TST's infringement of the asserted claims
was willful. (Dkt. No. 148, Jury Verdict at 4). Such a
finding “invites the Court to exercise its discretion
to determine whether enhanced damages are appropriate under
35 U.S.C. § 284.” Core Wireless Licensing
S.A.R.L. v. LG Elecs., Inc., No. 14-cv-912-JRG, Final
Judgment Order, Dkt. No. 47 at 1 (E.D. Tex. Nov. 1, 2016). In
addition to determining whether to award enhanced damages,
courts also have discretion as to the amount of damages to be
awarded. Halo Elecs., Inc. v. Pulse Elecs., Inc.,
136 S.Ct. 1923, 1932 (2016) (“District courts enjoy
discretion in deciding whether to award enhanced damages, and
in what amount.”); see also id. at 1926
(“§ 284 allows district courts to punish the full
range of culpable behavior.”). The Court may increase
damages up to three times the damages assessed by the Jury.
See Jurgens v. CBK, Ltd., 80 F.3d 1566, 1570 (Fed.
Cir. 1996). To determine whether and how much to enhance
damages, courts consider the “Read
(1) “whether the infringer deliberately copied the
ideas or design of another”;
(2) “whether the infringer, when he knew of the
other's patent protection, investigated the scope of the
patent and formed a good-faith belief that it was invalid or
that it was not infringed”;
(3) “the infringer's behavior as a party to the
(4) “[d]efendant's size and financial
(5) “[c]loseness of the case, ”
(6) “[d]uration of defendant's misconduct”;
(7) “[r]emedial action by the defendant”;
(8) “[d]efendant's motivation for harm”; and
(9) “[w]hether defendant attempted to conceal its
Read Corp. v. Portec Inc., 970 F.2d 816, 826-27
(Fed. Cir. 1992), abrogated in part on other grounds by
Markman v. Westview Instr. Inc., 52 F.3d 967 (Fed. Cir.
1995) (en banc). The Court addresses each factor in turn.
A. Copying [Read Factor 1]
submits that “direct evidence shows TST deliberately
copied Whirlpool's patented design.” (Dkt. No. 175
at 3). Specifically, Whirlpool points to the following:
• TST's President, Michael Baird, was aware of the
'894 patent as early as 2010 and studied it. (Dkt. No.
162, Mar. 8, 2017 A.M. Tr. at 69:3-13);
• TST knew that Whirlpool's patented Filter 3 was
one of the “best selling replacement filters in the
market.” (Id. at 74:25-75:2; Dkt. No. 175, Ex.
9 at 58258 (TST noting Filter 3 is “one of the
highest-sellers for everyone in retail”));
• TST bought more than 150 Filter 3 filters and several
of their corresponding head assemblies. (Dkt. No. 163, Mar.
8, 2017 P.M. Tr. at 36:9-14);
• TST's internal design files for the W-5 and its
computer-aided design (“CAD”) files contained:
o Whirlpool website printouts relating to the Filter 3 (Dkt.
No. 175, Ex. 10 at 3711-12);
o Schematic renderings of the Filter 3 (id. at
3708-10; Dkt. No. 163 Mar. 8, 2017 P.M. Tr. at 49:4-12,
133:9-13 (admissions re: Filter 3 rendering and CAD files));
o Schematic renderings of the Filter 3 specifically of the
head assembly (id. at 3633-39).
(Dkt. No. 175 at 3-4). Whirlpool argues that “TST 
made cosmetic changes to Whirlpool's Filter 3 design to
arrive at the W-5. As Whirlpool's expert, Joseph Beaman,
explained, TST effectively ‘carved away' portions
of Filter 3's dome to make it appear ‘sunk
down.'” (Id. at 4 (quoting Dkt. No. 159,
Mar. 7, 2017 A.M. Tr. at 27:5-28:1, 28:16-21)). “TST
even ‘superimposed' the end piece of
Whirlpool's Filter 3 onto its own W-5 product to ensure
its compatibility:” (Image Omitted.) (Id. at 5
citing Dkt. No. 175, Ex. 10 at 3642; see also id. at
3643-44; Dkt. No. 163, Mar. 8, 2017 P.M. Tr. at 49:13-50:5
(Baird explaining that a TST employee “superimposed the
Whirlpool product on top of [his] design” to
“understand whether he got it right on those areas that
needed to be compatible”)). In addition, “no
witness testified that TST independently developed its
design.” (Dkt. No. 175 at 6).
response, TST argues that “There was no evidence at
trial that TST simply copied the Filter 3, as did so many
others. Rather . . . TST presented abundant evidence that 
Mr. Baird spent years and tens of thousands of dollars
carefully studying the '894 patent and developing a
different, noninfringing design.” (Dkt. No. 178 at 20).
TST also points to “Mr. Baird [being] so confident that
his design was different and an improvement over
Whirlpool's that he filed multiple patent applications
describing his improvements.” (Id.) Further,
“TST refused Home Depot's request to sell a
replacement for the Filter 3 in 2014 because Mr. Baird was
not completely satisfied that the then-existing design would