Douglas Dynamics, LLC v. Buyers Products Company

Filing 805

ORDER granting in part and denying in part plaintiff Douglas Dynamics, LLC's 749 motion to alter or amend judgment; denying defendant Buyers Products Company's 755 motion to alter or amend judgment; denying defendant's 757 moti on for judgment as a matter of law; granting defendant's 770 motion for leave to file a supplemental brief in support of its motion to alter or amend. The clerk of court shall enter judgment in favor of Douglas Dynamics in the amount of $9,935,983. Signed by District Judge William M. Conley on 12/31/2014. (nln)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF WISCONSIN

DOUGLAS DYNAMICS, LLC,
Plaintiff,

OPINION & ORDER

v.
09-cv-261-wmc
BUYERS PRODUCTS COMPANY,
Defendant.

On appeal from this court’s original summary judgment decision, the Federal Circuit
determined as a matter of law that defendant Buyers Products Company, via its SnowDogg
snowplow assemblies, infringed independent claim 45 of plaintiff Douglas Dynamics, LLC’s
U.S. Patent No. Re. 35,700 “Removable Snowplow Assembly with Pivotable Lift Stand.”
Accordingly, the court remanded this case for a determination of: (1) infringement of
dependent claims; (2) invalidity; and (3) if necessary, damages. See Douglas Dynamics, LLC
v. Buyers Prods. Co., 717 F.3d 1336 (Fed. Cir. 2013). After reviewing the parties’ previous
briefing on the question of invalidity, this court held that no reasonable jury could find the
‘700 patent invalid on the record provided. (Mar. 13, 2014 Opinion & Order (dkt. #611).)
A jury subsequently awarded Douglas $9,750,000 in damages. (Dkt. #730.) This opinion
and order addresses various post-trial motions1 and directs entry of an amended final
judgment in favor of Douglas Dynamics in the amount of $9,935,983.2

This opinion assumes the reader’s knowledge of the background, factual determinations and rulings
of law made by this court and the Federal Circuit, which will not be repeated here.
2
As discussed further below, this award is comprised of the $9,750,000 jury verdict; an award of
post-judgment interest on the first verdict of $916; an award of post-verdict royalties totaling
$134,400; an award of prejudgment interest on the first verdict of $3,626; and an award of
prejudgment interest on the second verdict of $47,041.
1

OPINION
I. Buyers’ Motion for Reconsideration of the Court’s Summary Judgment Order
A. Construction of “Support Frame”
Buyers first asks the court to reconsider its ruling on invalidity by revisiting its
construction of the term “support frame.” Specifically, Buyers contends alternatively that:
(1) the court improperly gave the term two, materially different constructions, necessitating
a finding that the ‘700 patent is indefinite; (2) applying just the court’s first construction
and the Supreme Court’s recent ruling in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct.
2120 (2014), the ‘700 patent is invalid as indefinite;3 and (3) the court’s second
construction improperly imports limitations from the specification into the claims.
With respect to the first argument, Buyers contends that the court initially adopted a
broad construction of the “support frame” element, defining it as a broader category of “lift
frame” capable of supporting other components of a blade assembly, but then narrowed its
construction to require that the support frame remain fixed relative to the vehicle in
analyzing Buyers’ anticipation argument.

The court does not agree.

On summary

judgment, this court noted that, contrary to Buyers’ argument, the term “support frame”
was not insolubly ambiguous (the test at the time for determining indefiniteness). Rather,
the court found that the construction Douglas proposed appeared to be “reasonably certain
and accurate,” given the context of the remainder of the patent.

The court did not,

however, adopt that construction.

Buyers has moved to file a supplemental brief in support of its motion to alter or amend (dkt.
#770), based on the Supreme Court’s decision in Nautilus. That motion will be granted, and Buyers’
supplemental brief (dkt. #770-1) has been considered for purposes of this opinion.
3

2

Upon further analysis of the intrinsic evidence, including the context of the
specification, for purposes of an indefiniteness determination, the court ultimately
concluded that a reasonable person of ordinary skill in the art would construe a “support
frame” to support various components of the snowplow in a fixed position relative to the
vehicle.4

Thus, the court disagrees with Buyers’ contention that it construed “support

frame” in multiple, much less inconsistent, ways.
In its second, closely related argument, Buyers contends that because both the
“broader” and “narrower” constructions are reasonable, the “support frame” element must
be found indefinite under the interpretation of 35 U.S.C. § 112, ¶ 2 as articulated by the
Supreme Court in Nautilus. Previously, in analyzing § 112’s definiteness requirement, the
Federal Circuit had held that claims are indefinite only if they are “insolubly ambiguous.”
Nautilus, 134 S. Ct. at 2130. In rejecting that formulation of the test, the Supreme Court
explained in Nautilus that “[t]o tolerate imprecision just short of that rendering a claim
‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function
and foster the innovation-discouraging ‘zone of uncertainty,’ . . . against which this Court
has warned.” Id. (internal citation omitted). Instead, the Court held § 112, ¶ 2 requires
“that a patent’s claims, viewed in light of the specification and prosecution history, inform
those skilled in the art about the scope of the invention with reasonable certainty.” Id. at
2129.

Buyers contends that neither party ever advanced this construction but admits that Douglas at least
articulated the essence of this argument in opposing summary judgment by asserting that the bell
crank assembly of the Blau prior art was not a support frame “in accordance with the claims of the
700 patent” because it could not support components that needed to remain stationary during plow
operation.
4

3

Whether or not the new standard articulated in Nautilus proves to be a stricter one in
practice,5 the “support frame” element of the ‘700 patent meets that standard.

In

particular, the specification contemplates a lift frame, and thus the comparable support
frame, that remains fixed to the vehicle during plowing and may support other components
of the assembly in addition to the lift load. (See, e.g., U.S. Patent No. Re. 35,700 col.3
ls.24-29 (“While the lift frame remains pivotable relative to the A-frame, the lift frame,
during plowing, is fixed to the vehicle so that lights and other accessories which may be
mounted on the lift frame remain fixed relative to the vehicle during plowing and during
stacking of snow.”) (filed Dec. 1, 1995).) This is enough to inform a person skilled in the
art of the scope of the snowplow assembly with reasonable certainty as described in the ‘700
patent and the context of the specification.
Finally, Buyers argues that the court’s construction of “support frame” improperly
imported limitations from the specification into the claims by requiring that a support frame
remain fixed to the vehicle. The court again disagrees. While “there is sometimes a fine
line between reading a claim in light of the specification, and reading a limitation into the
claim from the specification,” Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186
(Fed. Cir. 1998), this court was not “limiting the claimed invention to preferred
embodiments or specific examples in the specification.” Tex. Instruments, Inc. v. U.S. Int’l
Trade Comm’n, 805 F.2d 1558, 1563 (Fed. Cir. 1986)). Instead, the court looked to the
summary of the invention itself in order to ascertain the characteristics of a “support frame”

The Supreme Court noted in Nautilus that “[t]he Federal Circuit’s fuller explications of the term
‘insolubly ambiguous,’ . . . may come closer to tracking the statutory prescription.” Nautilus, 134 S.
Ct. at 2130. Thus, it is unclear at present whether the substance of the law will change in light of
the Court’s apparent reformulation of the inquiry.
5

4

in the context of the ‘700 patent. “It is entirely proper to use the specification to interpret
what the patentee meant by a word or phrase in the claim.” E.I. du Pont de Nemours & Co. v.
Phillips Petroleum Co., 849 F.2d 1430, 1433 (Fed. Cir. 1988) (emphasis added).
To the extent the court also cited to the description of the preferred embodiment as
support for its construction, which if done in isolation would be problematic, see SRI Int’l v.
Matsushita Elec. Corp., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc) (plurality opinion),
the description of the preferred embodiment merely reaffirms the general description of the
invention as a whole found earlier in the patent. Similarly, the citation to dependent claim
48, which actually includes a headlamp connected to the support frame, did not import that
limitation into claim 45. Nor, as Doulas notes, does any dependent claim specify that the
support frame must remain fixed to the vehicle.

Rather than improperly importing

limitations into the claims, therefore, the court’s construction relied upon the context of the
‘700 patent as a whole in discerning what a person of ordinary skill in the art would
understand a “support frame” to be. Accordingly, the court reaffirms that construction and
will deny the motion to alter or amend on this point.
B. Consideration of the Cicula and Miller References
Buyers again asks the court to reconsider its rulings on summary judgment in light of
prior art not presented in its original summary judgment briefing. The court has addressed
this argument at least twice before and has rejected it each time. (See Nov. 4, 2013 Opinion
& Order (dkt. #589) 2-4 (holding that summary judgment would be decided on existing
briefing); Feb. 13, 2014 Opinion & Order (dkt. #609) 4-5 (denying reconsideration).) The
function of a motion to alter or amend is not to serve as a vehicle to re-litigate previously

5

argued matters. Caisse Nationale de Credit Agricole v. CBI Indus., Inc., 90 F.3d 1264, 1270
(7th Cir. 1996). Buyers’ motion, at least as regards this point, does just that. Accordingly,
the court declines to revisit its previous rulings on this question and will deny Buyers’
motion for reconsideration.
II. Buyers’ Motion for Judgment as a Matter of Law or for a New Trial
A. Judgment as a Matter of Law
When reviewing a motion for judgment as a matter of law in patent cases, the trial
court is to apply the law of its regional circuit. Summit Tech., Inc. v. Nidek Co., Ltd., 363 F.3d
1219, 1223 (Fed. Cir. 2004). In resolving a Rule 50(b) motion for judgment as a matter of
law, this court must determine whether the jury had a legally sufficient evidentiary basis for
the verdict it reached. See May v. Chrysler Grp., LLC, 716 F.3d 963, 971 (7th Cir. 2012).
In doing so, this court must also “construe the facts strictly in favor of the party that
prevailed at trial,” id. (quoting Schandelmeier-Bartels v. Chi. Park Dist., 634 F.3d 372, 376
(7th Cir. 2011), including by “drawing all reasonable inferences in that party’s favor and
disregarding all evidence favorable to the moving party that the jury is not required to
believe.” Id. Under this standard, Buyers’ challenges to the judgment all fall short.
i.

Lost Profits

As a preliminary matter, Buyers argues that the utter lack of evidence supporting
Douglas’s lost profits theory meant that those damages were unavailable as a matter of law.
In support, Buyers cites to the Federal Circuit’s decision in Wechsler v. Macke International
Trade, Inc., 486 F.3d 1286 (Fed. Cir. 2007), which reversed the denial of a motion for
judgment as a matter of law based on the legal unavailability of lost profits. Certainly,
6

Buyers is correct to the extent that the availability of lost profits is indeed a question of law.
Rite-Hite Corp. v. Kelley Co., Inc., 56 F.3d 1538, 1544 (Fed. Cir. 1995) (en banc).
Unfortunately for Buyers, however, lost sales of a competing product are legally
compensable under 35 U.S.C. § 284. Id.at 1546. Moreover, in its reply brief, Buyers admits
that the parties compete with one another. (See Def.’s Reply Br. (dkt. #793) 17.) Although
Buyers attacks Douglas’s evidence on a number of fronts, that is not a reason to preclude the
jury from considering lost profits altogether.6 Thus, whatever criticisms Buyers may have of
Douglas’s evidence and methods of proof, it has not shown that lost profits were unavailable
as a matter of law.
To recover lost profits, the patentee must establish that but for the infringement, it
would have made additional profits. Wechsler, 486 F.3d at 1293. One way for a patentee to
prove the requisite but-for causation (though not the only way) is by satisfying the fourfactor test articulated in Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 1152 (6th
Cir. 1978): (1) demand for the patented product; (2) absence of non-infringing substitutes;
(3) manufacturing and marketing capability to support the demand; and (4) the amount of
profit it would have made. See Rite-Hite, 56 F.3d at 1545. By satisfying this test, the
patentee sustains its burden of proving entitlement to lost profits, and “[t]he burden then
shifts to the infringer to show that the inference is unreasonable for some or all of the lost
sales.” BIC Leisure Prods., Inc. v. Windsurfing Int’l, Inc., 1 F.3d 1214, 1219 (Fed. Cir. 1993).

In contrast, the Federal Circuit in Wechsler concluded that lost profits were unavailable as a matter
of law because Wechsler did not produce a product until one year after the infringement period
ended, lacked the capacity to do so, and presented no evidence that the infringing sales preempted
subsequent sales or eroded the market price once he finally did enter the market. See Wechsler, 486
F.3d at 1293-94.
6

7

Only the second Panduit element, is really at issue here. While Douglas conceded
that it could not prove the traditional second Panduit element, the Federal Circuit has held
that “a patent owner may satisfy the second Panduit element by substituting proof of its
market share for proof of the absence of acceptable substitutes,” as Douglas did at trial.
BIC Leisure Prods., 1 F.3d at 1219. Nevertheless, Buyers contends that Douglas did not
offer “sound economic proof of the nature of the market and likely outcomes with
infringement factored out of the economic picture.” Grain Processing Corp. v. Am. MaizeProds. Co., 185 F.3d 1341, 1350 (Fed. Cir. 1999). Specifically, Buyers argues that Douglas’s
construction of the hypothetical but-for world ignored:
(1) the inapplicability of Douglas’ historic market share; (2) the
impact of market segmentation; (3) the effect of price sensitivity
on demand; and (4) the market power of Douglas’ reputation
and brand loyalty.
(Def.’s Br. Supp. (dkt. #758) 19.)

These failures, in Buyers’ view, wholly undermine

Douglas’s case, such that the jury had no evidentiary basis to award lost profits.
In response, Douglas points out that the jury had substantial evidence on which to
base its award of lost profits, including: Douglas’s operating plans; testimony from James
Janik and Gary Watson; and the analysis and testimony of its damage expert, Richard Bero.
Douglas also points to extensive evidence of product competition and the operation of the
market. Coupled with the highly deferential standard due a jury verdict in the face of a
Rule 50(b) motion, the court agrees with Douglas that a reasonable jury had ample proof to
find Douglas was entitled to lost profits.
Indeed, the claimed errors on which Buyers now focuses were all points it had the
opportunity to challenge before the jury by offering testimony and argument of its own. For
8

example, Buyers was free to attempt to prove and argue that its own products occupied a
separate market from Douglas’s plows due to the price differential (and the related price
sensitivity of consumers), just as it was free to prove and argue that Douglas and Buyers
competed in separate segments of a market divided between business/homeowner and
commercial purchasers. The jury, however, plainly rejected those arguments, as it did the
competing damages theory offered by Buyers’ own damage expert, Andrew Finger.
On the issue, the Federal Circuit’s decision in Ericsson, Inc. v. Harris Corp., 352 F.3d
1369 (Fed. Cir. 2003), is instructive:
[F]ailure to present all of the economic evidence that Harris now
identifies does not mean that Ericsson failed to present sound
economic evidence. Harris was entitled to present its own
damages theory regarding, for example, how cross-elasticity
calculations and second-sourcing would have affected the “but
for” market. It was ultimately up to the jury, however, to weigh
the credibility of the parties’ opposing theories and evidence. . . .
We will not overturn a jury’s determination as to the amount of
a damages award when, as in this case, that verdict was
supported by substantial evidence.
Id. at 1378.
Buyers also argues that Bero’s market share figure was entirely arbitrary, because he
performed no accounting to reduce the historical market share of 60% to the 50% figure he
ultimately employed. However, Bero testified that he made the downward adjustment to
recognize consumers’ price sensitivity in light of the higher prices of Douglas plows. While
Bero was unable to offer a quantitative analysis for reaching that figure, the jury could have
credited the adjustment he made, particularly in light of information Bero had gleaned from
his interviews with eight of the top ten Buyers dealers. Given the deference the court owes
to the jury, the court will not override its decision to credit Douglas’s not unreasonable, if
9

decidedly imperfect, lost profits analysis over Buyers’ claim of insufficient proof, especially
when it was Buyers’ wrongful infringement that created that uncertainty.

“The

determination of a damage award is not an exact science.” Del Mar Avionics, Inc. v. Quinton
Instrument Co., 836 F.2d 1320, 1327 (Fed. Cir. 1987). It is enough if the evidence “show[s]
the extent of the damages as a matter of just and reasonable inference, although the result
be only approximate.” Id. (quoting Story Parchment Co. v. Paterson Parchment Paper Co., 282
U.S. 555, 563 (1931)).
ii.

Direct and Indirect Infringement

Buyers also asks the court to enter judgment of zero dollars in damages based on its
contention that Douglas failed to prove indirect infringement at trial. This argument is
founded on the underlying premise that Buyers could not have directly infringed the ‘700
patent because all of its claims require a vehicle and Buyers does not sell vehicles.
Therefore, Buyers argues, Douglas could only prevail on an indirect infringement theory,
requiring it to prove knowledge of infringement -- recently redefined in the patent context as
either actual knowledge of infringement or willful blindness. See Global-Tech Appliances, Inc.
v. SEB S.A., 131 S. Ct. 2060, 2068-69 (2011). Since Douglas offered no such evidence to
support,7 Buyers contends that the court must enter an award of zero dollars and require a
new trial in which Douglas could attempt to prove indirect infringement and related
damages.
Buyers has raised this same argument no fewer than three times before: (1) a motion
for leave to file a supplemental brief regarding non-infringement (dkt. #594); (2) a motion

The evidence of damages offered at trial principally related to sales of Buyers’ snowplow assemblies
(that is, to direct infringement).
7

10

in limine seeking to exclude any damages theories regarding indirect infringement due to
non-disclosure (dkt. #622); and (3) proposed jury instructions on indirect infringement
(dkt. #629).

Each time, the court has rejected this argument on the grounds that the

Federal Circuit directed the entry of a judgment of infringement on independent claim 45. See
Douglas Dynamics, LLC v. Buyers Prods. Co., 717 F.3d 1336, 1343 (Fed. Cir. 2013) (holding
that “the accused products meet every limitation of claim 45 as properly construed”).
Buyers’ argument is, therefore, rejected for all the reasons previously articulated. See Caisse
Nationale, 90 F.3d at 1270 (reconsideration not an appropriate vehicle for rehash of old
arguments).
iii.

Foreign Sales

Buyers next asks the court to enter judgment excluding damages on any sales it made
to customers in Canada, because (1) generally, patents do not operate extraterritorially to
prohibit infringement abroad; and (2) Douglas never invoked 35 U.S.C. § 271(f), the
exception to that general rule, as a source of infringement.

Despite Douglas seeking

damages on the alleged sales since its original damage report served on September 24, 2010
(dkt. #295), Buyers failed to raise this issue during the first trial in 2010, nor did it raise
the issue in any of the pretrial proceedings on remand. It was not until midway through the
damages trial that Buyers first argued some of Douglas’s long-claimed sales could not
support a damages award in the United States, at a point when Douglas was in no position
to cure any defect. Assuming without deciding that Buyers may have had a viable argument
with respect to these sales, its delay in raising it is unreasonable and prejudicial to Douglas.
The court, therefore, declines to take it up now as part of a motion under Rule 50(a).

11

iv.

Willfulness

Finally, Buyers asks the court to enter judgment in its favor on Douglas’s claims of
willful infringement, arguing that it did not present evidence at trial to support a finding of
willfulness. As Douglas accurately points out, however, this is because Douglas abandoned its
claim for willful infringement well before trial. (See, e.g., Feb. 13, 2014 Opinion & Order
(dkt. #609) 6 (agreeing with Douglas that “additional briefing is unnecessary with respect
to willful infringement since that claim is no longer being pursued”).) While Douglas is
likely precluded from pursuing such a claim elsewhere, see Acumed LLC v. Stryker Corp., 525
F.3d 1319, 1323-26 (Fed. Cir. 2008) (discussing claim preclusion principles in patent
infringement litigation), it makes no sense to enter judgment in favor of Buyers on a claim
that was never formally adjudicated. Accordingly, Buyers’ motion for an express judgment
on willful infringement will be denied.
B. New Trial
Under Rule 59(a), a new trial may be granted “if the verdict is against the clear
weight of the evidence or the trial was unfair to the moving party.” Clarett v. Roberts, 657
F.3d 664, 674 (7th Cir. 2011) (quoting David v. Caterpillar, Inc., 324 F.3d 851, 863 (7th
Cir. 2003)). Buyers advances two distinct grounds for a new trial, which the court will
address in turn.
i.

Apportionment of Damages and Instructions

Buyers argues that the jury’s royalty award was against the clear weight of the
evidence because Douglas failed to present evidence apportioning its damages between the
patented features of Douglas’s snowplows and the unpatented features. In a closely related
12

argument, Buyers contends that this court erred in failing to instruct the jury on proper
apportionment, citing Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011), in
which the court held that a patentee “must in every case give evidence tending to separate
or apportion the defendant’s profits and the patentee’s damages between the patented
feature and the unpatented features.” Id. at 1318 (quoting Garretson v. Clark, 111 U.S. 120,
121 (1884)).8
An exception to the requirement of apportionment lies in the “entire market value
rule,” which “allows for the recovery of damages based on the value of an entire apparatus
containing several features, when the feature patented constitutes the basis for customer
demand.”

TWM Mfg. Co. v. Dura Corp., 789 F.2d 895, 901 (Fed. Cir. 1986); see also

LaserDynamics, 694 F.3d at 67 (entire market value rule is a “narrow exception” to general
rule requiring apportionment). Buyers argues that Douglas improperly claimed lost profits
not just on the linkage mechanism covered by the ‘700 patent, but on the snowplow
assembly as a whole, contrary to the general rule requiring apportionment. Furthermore,
Buyers argues, the jury could not properly have applied the entire market value rule,
because the evidence at trial established that the linkage mechanism of the ‘700 patent does
not drive customer demand for Buyers’ plows.9

Finally, Buyers argues that this court

prejudicially erred in failing to give instructions on apportionment or on the entire market
value rule, both of which Buyers proposed and the court rejected at trial.

The same holds true of royalties. See LaserDynamics, Inc. v. Quanta Comp., Inc., 694 F.3d 51, 67
(Fed. Cir. 2012) (“it is generally required that royalties be based not on the entire product, but
instead on the ‘smallest salable patent-practicing unit’”).
9
In particular, James Janik, President of Douglas Dynamics, testified that the hydraulic system is the
“heart” of the Douglas snowplow.
8

13

Thus, Buyers argues, the jury’s verdict improperly awarded Douglas damages for the
entire snowplow unit, over its objections and against the clear weight of the evidence,
requiring a new trial. This argument rises and falls on a single, central assumption: the
linkage mechanism was the only “patented feature” of the ‘700 patent. As Douglas points
out, however, the ‘700 patent is directed at the entire snowplow assembly, not just at the
linkage mechanism. (See U.S. Patent No. Re. 35,700 (dkt. #1-3).) In contrast, the patent
at issue in LaserDynamics was directed to a method of optical disc discrimination enabling an
optical disc drive to automatically identify the type of disc placed in the drive. 694 F.3d at
56. As a result, the patentee in LaserDynamics was not entitled to a running royalty on the
total sales of the infringer’s laptop computers. Id. at 60. Likewise, the patent in Uniloc was
directed to a software registration system to deter software copying, and the accused
product was the Product Activation feature of Microsoft’s Word XP, Word 2003, and
Windows XP programs. 632 F.3d at 1296-97. In that case, the patentee improperly based
its royalty calculation on Microsoft’s approximate total revenue for Microsoft Office and
Windows.

Id. at 1318.

The Rite-Hite case similarly involved a patent for a device for

securing a vehicle to a loading dock to prevent the two from separating during loading and
unloading, 56 F.3d at 1542, while the accused products were dock levelers that were sold
with the restraints but did not “function together with the patented component in some
manner so as to produce a desired end product or result,” id. at 1550.
In its reply, Buyers argues that Douglas’s claim in the ‘700 patent to the entire
snowplow assembly does not change the apportionment analysis, because the crux of the
invention is the linkage mechanism. For example, in Dataquill Limited v. High Tech Computer
Corporation, 887 F. Supp. 2d 999 (S.D. Cal. 2011), the court considered patents directed at
14

handsets with particular features, such as the removal of “access capability” and “optional
features such as touch sensitive screens or integrated cameras.” Id.at 1003. Although the
patents ostensibly claimed the entire apparatus, the district court held that the accused
products had “multiple features that [were] clearly not claimed by the patents-in-suit, such
as the ability to make phone calls and the ability to send and receive text messages.” Id. at
1027. In fact, plaintiff later conceded that “the devices have both infringing features and
non-infringing features.” Id. Thus, even though the patents at issue in Dataquill technically
claimed the handheld data entry units themselves, see, e.g., U.S. Patent No. 7,139,591 (filed
Nov. 21, 2006), the court found the other features not covered by the patent required either
apportionment or application of the entire market value rule. See also In re Innovatio IP
Ventures, LLC Patent Litig., No. 11 C 9308, 2013 WL 5593609, at *13-14 (N.D. Ill. Oct. 3,
2013) (although claims read onto systems and devices beyond the Wi-Fi chip at issue, the
Wi-Fi chips themselves included all the instructions to those devices, meaning the chip was
the smallest patent-practicing unit).
This is something of a close question. On the one hand, the claims certainly cover
the entirety of the snowplow assembly, unlike the majority of cases that Buyers cites,
suggesting that it would be inappropriate to ignore the value of those claimed elements. See
ThinkOptics, Inc. v. Nintendo of Am., Inc., No. 6:11-CV-455, 2014 WL 2859578, at *2 (E.D.
Tex. Jun. 21, 2014) (“While it is sometimes necessary to apportion the smallest salable
patent practicing unit to remove the value of unclaimed elements, Nintendo has not cited
any precedent permitting the complete removal of the value of claimed elements.”)
(emphasis added). On the other hand, damages “should not turn on claim draftsmanship
such that the owner of an improvement patent may deliberately add dependent claims
15

directed to unimproved conventional devices to expand the royalty base.” Univ. of Pittsburgh
of Commonwealth Sys. of Higher Educ. v. Varian Med. Sys., Inc., 561 F. App’x 934, 947 (Fed.
Cir. 2014).
Ultimately, however, the court concludes that the ‘700 patent is distinguishable from
the patents involved in cases like Dataquill. Whether or not the linkage mechanism is the
“heart of the invention,” the ‘700 patent is not only directed at that mechanism. On the
contrary, the patent protects a snowplow assembly that is not only easy to attach and
detach, but also retains other desirable characteristics by virtue of the arrangement of its
other parts. For instance, the entirety of the assembly can be removed as a single unit,
leaving nothing behind on the vehicle, and the A-frame remains upwardly pivotable to allow
the user to stack snow. (See ‘700 patent, 1:16-2:27.) The linkage mechanism, combined with
the rest of the assembly in a particular way, creates an improved snowplow assembly -- and
it is Buyers’ improved snowplow assemblies, as a whole, that infringe the claims.
Thus, the invention of the ‘700 patent is more akin to the invention considered by
the Federal Circuit in University of Pittsburgh. In that case, the patent claimed an “RPM
System” adapted for use with a beam generator; one of the claims, claim 38, also included
the beam generator itself. Univ. of Pittsburgh, 561 F. App’x at 947. The Federal Circuit held
that apportionment was not required, because claim 38 did not merely include the beam
generator as an “accessory,” “it claim[ed] an apparatus where the beam generator and the
RPM System operate via a gating signal where one actuates the other. Indeed, the evidence
at trial show[ed] that Varian itself . . . acknowledged the value added by the function of the
combined apparatus.”

Id.; see also Rite-Hite, 56 F.3d at 1550 (requiring apportionment

16

where patented and unpatented features did not function together to create a particular
result).
To the extent that claim 38 still added an “unimproved conventional device” to the
royalty base, the Federal Circuit also concluded that many of the factors set forth in GeorgiaPacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970), directed the
jury to reward the inventor only for the value of the invention. Univ. of Pittsburgh, 561 F.
App’x at 947-48. Similarly, while the court recognizes that University of Pittsburgh is nonprecedential and is “fact- and record-specific,” id. at 950, Buyers has demonstrated neither
that it would be appropriate to exclude the claimed assembly from damages, nor that the
lack of instruction on apportionment was not ameliorated by the court’s Georgia-Pacific
instruction.
ii.

Exclusion of the Curtis Settlement Agreement

As it has before, Buyers also challenges the court’s exclusion of the Curtis settlement
agreement.

Specifically, Buyers objects to the court’s application of the LaserDynamics

decision, in which the Federal Circuit affirmed its “longstanding disapproval of relying on
settlement agreements to establish reasonable royalty damages,” except under “certain
limited circumstances.” 694 F.3d at 77 (citing ResQNet, 594 F.3d at 870-72). Unlike the
license in ResQNet, the Federal Circuit found the settlement in LaserDynamics was not
“uniquely relevant and reliable,” id. at 78, as did this court with respect to the Curtis
settlement agreement. While Buyers repeats the contention that this was the wrong “test,”
it offers no new evidence or argument persuading the court that the Curtis settlement
agreement should be admissible in light of the general disapproval of admitting such
17

settlement agreements to establish royalty damages.

The mere fact that it is the only

example of a “license” available does not make it “admissible and probative.”
III.Douglas’s Motion to Alter or Amend
Next, Douglas seeks to alter the judgment to include the following additional
amounts:10
Prejudgment interest on the 2014 verdict
regarding the ‘700 patent

$1,526,100.00

Prejudgment interest on the 2011 verdict
regarding the ‘978 and ‘530 patents

$71,936.00

Post-judgment interest on the 2011 verdict
regarding the ‘978 and ‘530 patents

$916.00

Post-verdict royalties for units sold after the
2011 trial

$482,400.00

Attorney’s fees relating to the 2011 trial

$463,733.00

Attorney’s fees relating to the 2014 trial

$91,794.00

Total

$2,636,879.00

Buyers does not object to the calculation of post-judgment interest on the 2011 jury
verdict (by far the smallest sum), but does object to Douglas’s request for prejudgment
interest, post-verdict royalties and attorney’s fees, each of which the court takes up below.
A. Prejudgment Interest
“In the typical case an award of prejudgment interest is necessary to ensure that the
patent owner is placed in as good a position as he would have been in had the infringer
Buyers also includes the court costs in its chart of amounts that Douglas seeks to add, but those
are properly discussed in the context of the bill of costs, not the motion to alter or amend.
10

18

entered into a reasonable royalty agreement.” Gen. Motors Corp. v. Devex Corp., 461 U.S.
648, 655 (1983). The award of prejudgment interest in patent cases is governed by 35
U.S.C. § 284.

Since the overriding purpose of that statute is to afford patent owners

complete compensation, the Supreme Court explained in Devex “that prejudgment interest
should ordinarily be awarded.” Id. Thus, “prejudgment interest should be awarded under
§ 284 absent some justification for withholding such an award.” Id. at 657.
Buyersargues that prejudgment interest is not warranted in this case because Douglas
unduly delayed filing this lawsuit. While the Supreme Court specifically noted that delay
can justify the denial of an award of prejudgment interest, see Devex, 461 U.S. at 657, the
Federal Circuit has since advised that withholding of prejudgment interest based on delay is
also the exception, “not the rule,” and that “the discretion of the district court is not
unlimited” in this respect. Lummus Indus., Inc. v. D.M. & E. Corp., 862 F.2d 267, 275 (Fed.
Cir. 1988). Only where the delay has actually prejudiced the defendant may the court deny
prejudgment interest on those grounds. Crystal Semiconductor Corp. v. TriTech Microelectronics
Int’l, Inc., 246 F.3d 1336, 1361-62 (Fed. Cir. 2001).
In this case, Douglas first acquired and inspected one of Buyers’ snowplows in or
around the fall of 2007. At that time, Douglas claims it performed testing on the plow’s
mechanical aspects, not on the hydraulic or electric systems, nor did it analyze the plow in
relation to its patents. Even so, Buyers points out that sometime in 2007, Douglas received
“verbal information” from its counsel, asking the court to infer that Douglas likely could
have sued Buyers at that point, but chose not to do so. In 2008, Buyers expanded its
product line from its single HD/Ex model, adding the MD and VX models, which Douglas
claims prompted it to perform additional testing and to investigate the intellectual property
19

issues surrounding those plows. After what Douglas describes as a “thorough investigation,”
it filed suit in April of 2009, alleging infringement of five of its patents. Even then, Buyers
contends that Douglas waited until after Buyers had concluded pre-season sales event before
serving the complaint.11
Buyers claims prejudice by Douglas’s decision to delay asserting its intellectual
property rights for a full year and a half after the first Buyers plow was made available
through distributors.

Because Douglas waited to file suit, Buyers specifically claims it

invested substantially in building up its snowplow business and establishing a place for itself
in the market. According to Buyers, Douglas finally filed suit only after Buyers made these
investments, despite having known all along that it had a viable case for patent
infringement.
Assuming this timing to be accurate, the court is not persuaded that a delay of a year
and a half is “undue” on the facts of this case.

Indeed, given the stakes, it was not

unreasonable for Douglas to have spent a year and a half investigating Buyers’ products and
comparing them to its various patents in order to determine which patents, if any, Buyers’
plows infringed. In any case, Buyers has presented no evidence that this initial delay was
due to more than diligent investigation in light of the large number of patents Douglas has
held over the years and the need to ensure its suit was warranted under Federal Rule of Civil
Procedure 11.
The fact that Douglas filed suit in April but did not serve Buyers until June has no
bearing on this analysis, since Buyers admits Douglas did inform it of its intent to enforce its

There is no dispute that Douglas had sent a letter informing Buyers of the potential infringement
on April 30, 2009.
11

20

intellectual property rights in the letter of April 30, 2009, around the time Buyers filed suit.
Moreover, Buyers was aware of Douglas’s products and their presence in the market even
before that, given that Douglas was one of its principal competitors.

“Generally,

prejudgment interest should be awarded from the date of infringement to the date of
judgment.”

Nickson Indus., Inc. v. Rol Mfg. Co., 847 F.2d 795, 800 (Fed. Cir. 1988)

(emphasis added). That Douglas sent a letter asserting its intellectual property rights in
April of 2009, but did not mention having already filed suit, has no particular bearing on
the prejudgment interest period.
Having decided to award Douglas prejudgment interest, the court must now
determine how to measure that award. Douglas’s damages expert Richard Bero calculated
prejudgment interest using the prime rate, compounded monthly, for a total award of
$1,598,036. Buyers objects to this method, arguing that it does not put Douglas in the
position it would have been in absent the infringement, which is the purpose of awarding
interest under § 284. See Gen. Motors, 461 U.S. at 655; Crystal Semiconductor, 246 F.3d at
1361 (“An award of prejudgment interest serves to make the patentee whole because the
patentee also lost the use of its money due to infringement.”). Instead, it asks the court to
award interest at the Treasury bill rate, compounded annually, to more accurately reflect
what Douglas would actually have earned on any royalties and profits it received. The court
agrees with Buyers’ approach and will, therefore, award prejudgment interest in the amount
of $3,626 on the first award and $47,041 on the second award.12

The court takes these figures from the declaration of Andrew Finger, who calculated interest at the
Treasury bill rate, compounded annually. (See Andrew Finger Decl. (dkt. #783) ¶ 13 n.13, ¶ 18
n.20.) The court declines to adopt Buyers’ recommendation that interest be calculated as if Douglas
would have received a reasonable royalty on a deferred payment plan as unnecessary, both because it
12

21

B. Post-Verdict Royalties
Douglas also seeks an award of royalties based on Buyers’ infringement of Douglas’s
U.S. patent nos. 5,353,530 and 6,944,978. After the first trial, the court denied Douglas’s
motion for a permanent injunction, and instead set an ongoing, reasonable royalty. The
Federal Circuit reversed the denial of the injunction, and vacated and remanded the
determination of the royalty rate for post-trial sales based in part on reliance on the nowdiscredited 25% rule. Douglas Dynamics, LLC v. Buyers Prods. Co., 717 F.3d 1336, 1343-46
(Fed. Cir. 2013). Meanwhile, Buyers apparently sold off the remainder of its infringing
inventory, totaling 1,206 units sold post-verdict.
Douglas now asks the court to award a royalty rate of $400 for each unit sold postverdict, or about 14% of Buyers’ average unit sales price over this period. Douglas contends
that this rate is reasonable because Buyers knew full well that these units infringed but
elected to sell them anyway, rather than designing a non-infringing alternative.

At a

minimum, Douglas argues, this makes Buyers’ post-verdict sales willful, justifying
enhancement of any hypothetically negotiated royalty to $400/unit.

See SynQor, Inc. v.

Artesyn Techs., Inc., 709 F.3d 1365, 1385 (Fed. Cir. 2013) (affirming district court’s decision
to award enhanced damages for willful post-verdict sales even where plaintiff did not pursue
a willfulness claim at trial).
Buyers argues that because the jury made its own determination of a reasonable
royalty rate in awarding damages on the ‘530 and ‘978 patents, the court must employ the

is not a typical term to a negotiation and overly complicates the calculation of a relatively small
interest payment compounded annually.

22

same rate in calculating any post-verdict royalties. The Federal Circuit “easily dispose[d]”
of that very argument in Amado v. Microsoft Corp., 517 F.3d 1353 (Fed. Cir. 2008).
On the other side of the dispute, Microsoft argues that the
district court was entitled to award Amado no more than $0.04
per infringing unit, the amount the jury found to be a
reasonable royalty. We easily dispose of this argument as well.
The jury’s award of $0.04 per unit was based on Microsoft’s
infringing conduct that took place prior to the verdict. There is a
fundamental difference, however, between a reasonable royalty
for pre-verdict infringement and damages for post-verdict
infringement. Cf. Paice LLC v. Toyota Motor Corp., 504 F.3d
1293, 1317 (Fed. Cir. 2007) (“[P]re-suit and post-judgment acts
of infringement are distinct, and may warrant different royalty
rates given the change in the parties’ legal relationship and other
factors.”) (Rader, J., concurring). Prior to judgment, liability for
infringement, as well as the validity of the patent, is uncertain,
and damages are determined in the context of that uncertainty.
Once a judgment of validity and infringement has been entered,
however, the calculus is markedly different because different
economic factors are involved.
Id. at 1361-62 (emphasis added).
Buyers alternatively argues that Douglas’s suggested royalty is founded on the faulty
premise that infringement occurred post-verdict, when in fact that linkage was “already
made” at the time the verdict issued. See 35 U.S.C. § 271(a) (“whoever without authority
makes . . . any patented invention . . . infringes the patent”). In particular, Buyers argues
that it was reasonable to assume that already-manufactured units would be subject to the
same royalty rate as the earlier sales, pointing to various district courts that have awarded
supplemental damages at the jury rate for other periods of infringement. See, e.g., Metso
Minerals, Inc. v. Powerscreen Int’l Distribution Ltd., 833 F. Supp. 2d 333, 347 (E.D.N.Y. 2011)
(“Courts routinely grant motions for a further accounting where the jury did not consider
certain periods of infringing activity post-verdict.”).
23

The Metso court cites other cases

holding similarly, but none supports Buyers’ argument that the “further accounting” should
adopt the same royalty rate as applied by the jury to pre-verdict sales. Id. Indeed, the Metso
court itself noted that the “reasonable royalty rate to be applied to the Defendants’ postverdict sales is not necessarily the same as the reasonable royalty that was applied to the
Defendants’ pre-verdict sales” and set a briefing schedule to determine the appropriate postverdict royalty rate. Id. at 348 (citing Amado, 517 F.3d at 1361).
The only other case Buyers cites that arguably supports applying a jury’s pre-verdict
royalty to post-verdict sales is Hynix Semiconductor Inc. v. Rambus Inc., 609 F. Supp. 2d 951
(N.D. Cal. 2009). Even in that case, however, the court recognized that “a royalty rate
should evolve to track the change in the relationship between the parties caused by the
progress of the litigation.” Id. at 965 (citing Amado, 517 F.3d at 1362). Thus, Buyers’
argument that an award of post-verdict royalties must be limited to the jury’s determination
of a reasonable, pre-verdict royalty rate has no merit.
More persuasive is Buyers’ argument that Douglas’s royalty calculation includes
double-counting, because Douglas was likely granted lost profits by the jury on half of the
old-design units in its inventory by virtue of the jury’s damage award in the second trial
through April 15, 2011.

Douglas objects that Buyers improperly speculates as to the

composition of the jury’s verdict, pointing out that the jury returned a general verdict
without apportioning damages between lost profits and royalties, although Buyers’
breakdown of the jury’s likely calculations of lost profits and royalties is far more persuasive.
(Compare Declaration of Andrew D. Finger (dkt. #783), ¶¶ 34-38, with Reply Brief In
Support of Douglas’s Motion to Amend (dkt. #790) p. 20 & n.8.)

Indeed, Douglas’s

request at trial for lost profits on 50% of Buyers’ infringing sales and its more detailed
24

defense of the jury’s damage award in response to Buyers’ renewed motion for judgment or
new trial, strongly support Buyers’ reading of the award’s composition. (Dkt. #775, pp. 813.)
Moreover, the court adopted a general damage verdict that was almost verbatim what
Douglas and Buyers both proposed. (Compare dkts. ##630 & 635 with dkt. #730.) To the
extent that Douglas sought a lost profits award for 50% of the units sold, it cannot now seek
to add to that amount a royalty award on those same units without subjecting Buyers to a
substantial risk of double counting. Accordingly, all units sold through April 15, 2011, and
claimed for lost profits at trial fall outside the court’s award for post-verdict royalties.
Douglas does not dispute Buyers’ assertion that this would leave 672 units eligible for
enhanced royalties.
Finally, Buyers objects to the calculation of Douglas’s proposed royalty rate.

In

support, Buyers rehashes its “smallest salable infringing unit” argument in hopes of
narrowing the appropriate royalty base, an argument that the court has considered and
rejected on multiple occasions, including earlier in this opinion. Buyers also contends that
any royalty rate should be limited to its cost of altering the manufactured lift frames to
include a non-infringing linkage mechanism, since Buyers would not rationally negotiate a
royalty that exceeds the $100-per-assembly cost to Buyers of retrofitting its alreadymanufactured assemblies, much less a royalty rate of $400 per assembly sought by Douglas.
Accordingly, Buyers asks the court to consider this practical constraint on any royalty
negotiation as an “additional economic factor[] arising out of the imposition of an ongoing
royalty.” Paice, 504 F.3d at 1315.

25

In something of a non sequitur, Douglas attempts to bolster its argument that
Buyers’ alleged replacement cost is irrelevant by quoting the Federal Circuit’s statement on
appeal that the reasonable royalty rate is intended to “compensate the patentee for the use
of its technology.” Douglas Dynamics, 717 F.3d at 1346. Of course, the cost of replacing an
infringing unit with a non-infringing alternative can be an important factor in arriving at a
reasonable royalty. See Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359, 1372-73 (Fed. Cir.
2008) (district court did not err in reducing royal rate to reflect that infringer probably
could have designed an acceptable alternative), mandate recalled and amended on other grounds,
557 F.3d 1377 (Fed. Cir. 2009).

More persuasive is Douglas’s argument that the

willfulness of the post-verdict sales justifies enhancing a hypothetically-negotiated rate. See
35 U.S.C. § 284. Even granting Douglas the benefit of that enhancement, however, the
court agrees that a royalty of $400 per unit is unreasonable. Instead, after considering all
factors leading the parties to negotiate a reasonable royalty -- including the certainty of
selling a non-infringing product under a valid license and Douglas’s strong incentive to deny
a competitor a license at any price -- the negotiated, post-verdict royalty rate would be $200
per unit. This leaves a total royalty award on 672 units of $134,400.
C. Attorney’s Fees
Finally, Douglas requests an award of additional attorney’s fees for: (1) establishing
infringement of the ‘530 and ‘978 patents; and (2) responding to Buyers’ repeated, postappeal attempts to re-litigate liability with respect to the ‘700 patent. Under 35 U.S.C.
§ 285, “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing

26

party.”13 While this standard used to require “material [and] inappropriate conduct related
to the matter in litigation,” Brooks Furniture Mfg., Inc. v. Dutailer Int’l, Inc., 393 F.3d 1378,
1381 (2005), the Supreme Court recently held in Octane Fitness, LLC v. ICON Health &
Fitness, Inc., 134 S. Ct. 1749 (2014) that “an ‘exceptional’ case is simply one that stands out
from others with respect to the substantive strength of a party’s litigating position
(considering both the governing law and the facts of the case) or the unreasonable manner
in which the case was litigated.” Id. at 1756. In formulating this standard, the Supreme
Court expressly rejected the Federal Circuit’s standard as “overly rigid” and “inherently
inflexible,” and concluded that district courts could award fees even where unreasonable
conduct was “not necessarily independently sanctionable.” Id. at 1756-57. Accordingly, the
court briefly considers each of Douglas’s fee requests applying the Octane Fitness standard.
i.

Infringement of the ‘530 and ‘978 Patents

Douglas first asks for fees related to establishing infringement of the ‘530 and ‘978
patents, arguing that neither was reasonably debatable. As a preliminary matter, Buyers
objects wholesale to this request on the grounds that Douglas purportedly released its claim
for fees in exchange for an early payment of the judgment. In particular, Buyer relies upon
the following letter from George Solveson, one of Douglas’s attorneys, addressed to one of
Buyers’ counsel, Todd Tucker , leading up to that payment.
Pursuant to your recent e-mail, Buyers has decided to pay
Douglas the $1+ million relating to the ‘530 and ‘978 patents
in exchange for a release from Douglas. This is agreeable with
Douglas with the reservation that pre-judgment and postjudgment interest and post-verdict royalty will be resolved and
While Douglas did not succeed on all its infringement claims, Buyers concedes by its silence, as it
must, that Douglas is the “prevailing party” in this matter, having prevailed on infringement and
validity for three of its five patents.
13

27

paid at a later time, and provided that the release will not
prejudice the further efforts of Douglas to seek damages and/or
royalties on the ‘700 patent and increased post-verdict royalty
rates and interest based upon further proceedings.
(Christina J. Moser Decl. Ex. C (dkt. #782-2).)
Douglas responds that this letters “refers only to a “release from Douglas that the
trial judgment has been satisfied,” pointing out that Tucker’s original e-mail uses that
specific language. (See Aaron T. Olejniczak Decl. Ex. A (dkt. #774-1).) Whatever the
import of this email exchange, Douglas further argues that the parties agreed only to a
release of the judgment, once satisfied, and that there was no meeting of the minds with
respect to any potential claim for attorney’s fees.
While neither party has provided a copy of an actual or even a draft “release,”
Douglas cites to the satisfaction of judgment actually filed with the court on September 21,
2012, which states only that:
On November 23, 201214 judgment was entered in favor of
plaintiff Douglas Dynamics, LLC in the amount of $1,018,248
in damages for pre-verdict infringement of U.S. Patent Nos.
5,353,530 and 6,944,978 (“the Judgment”) in the aboveentitled action.
Without waiving any right to seek any
additional damages or recourse from Defendant that this Court
and/or any Court of Appeals may award in this litigation for
still-pending issues that are not satisfied by the Judgment,
Plaintiff acknowledges that on August 29, 2012 defendant
Buyers Products Company satisfied the Judgment.
(Satisfaction of Am. J. (dkt. #567) 1.)
The court finds the parties did not agree to release any potential claim for fees in
light of the context provided by: Tucker’s original e-mail; a complete dearth of any mention
of a claim for attorney’s fees, one way or the other, in the e-mail exchanges; the failure of
This appears to be an error, as the amended judgment was entered on November 23, 2011. (See
dkt. #562.)
14

28

the parties to enter into any kind of formal release agreement typical in such instances
(particularly when certain claims are unquestionably preserved by the parties); and, most
importantly (in the absence of any definitive final release language), the language of the
satisfaction of judgment.

In particular, given that Tucker originally referred only to a

release “that the trial judgment has been satisfied,” the court is unwilling to construe
Solveson’s later mention of a “release” more broadly, encompassing not only the judgment
but also possible claims for fees that went unmentioned by both sides, notwithstanding
Solveson’s subsequent “reservation” for pre- and post-verdict interest on that judgment.
Next, Buyers argues that this is not an exceptional case. First, Buyers quotes this
court’s previous findings that its positions were not “objectively baseless” in the course of
resolving Douglas’s claims for willful infringement.

See Douglas Dynamics, LLC v. Buyers

Prods. Co., 747 F. Supp. 2d 1063, 1113 (W.D. Wis. 2010) (‘530 patent: “the claim
language was susceptible to Buyers’ reasonable construction and acceptance of that
construction at must would have led to a finding of noninfringement”; ‘978 patent: “Buyers’
infringement could not have been the result of objective recklessness with these unanswered
questions floating about”). Second, Buyers attributes the need for litigation of this matter
to Douglas’s “outrageously high damages positions and unreasonable settlement positions.”
(Def.’s Br. Opp’n (dkt. #780) 15.)
Douglas argues that Buyers mistakenly refers to the “objectively baseless” standard as
precluding this court’s finding of an exceptional case, contrary to the holding in Octane
Fitness.

Certainly, the Supreme Court held in Octane Fitness that conduct need not be

independently sanctionable in order to justify an award of fees as an exceptional case. 134

29

S. Ct. at 1756-57. However, in this court’s view, the circumstances that Douglas presents
do not rise to the level of being “exceptional” under the Octane Fitness standard either.
Buyers took objectively reasonable litigation positions on infringement of the ‘530
and ‘978 patents. It was also objectively reasonable for Buyers to defend the litigation on
the grounds that it believed those patents to be invalid, particularly given the crowded field
of patents for snowplows and snowplow attachments. Indeed, Buyers’ claims of invalidity
with respect to the ‘530 patent survived summary judgment and went to trial. See Douglas
Dynamics, LLC v. Buyers Prods. Co., 745 F. Supp. 2d 876 (W.D. Wis. 2010). The mere fact
that Buyers chose not to appeal the infringement findings with respect to those two patents,
electing instead to redesign its assembly, is not enough to render this case “exceptional.”
There are myriad reasons an infringer could elect not to appeal this court’s findings; the
court declines to infer that Buyers’ decision here suggests knowledge that it had no defense
to Douglas’s claims of infringement of the ‘530 and ‘978 patents from the outset of suit.
ii.

Re-Litigation of ‘700 Patent

Douglas’s second request for fees relates to Buyers’ multiple attempts to re-litigate
the Federal Circuit’s finding of infringement of the ‘700 patent, which presents a far more
unusual set of circumstances than the first. As a preliminary matter, it is not clear that
dividing a single lawsuit into litigation stages and individual patents for purposes of
assessing whether a case is “exceptional” is appropriate, although neither party really
addresses this question. Buyers implicitly argues for a broader, holistic look at the case by
making reference to its conduct throughout the litigation, while Douglas understandably
would focus solely on Buyers’ position on remand. Douglas’s position seems somewhat at

30

odds with the text of the statute itself, which speaks of exceptional cases, not exceptional
claims or instances of conduct. Douglas’s position also seems somewhat at odds with the
Octane Fitness prescription that the court “consider[] the totality of the circumstances” in
assessing whether a case is exceptional. 134 S. Ct. at 1756.
That being said, Douglas makes a reasonable argument that Buyers went far beyond
making a record with respect to its efforts to obtain reconsideration of previous rulings that
in this court’s repeated view had become law of the case, as discussed in the earlier sections
of this opinion. As a result, Douglas was also forced to respond to the same arguments
repeatedly before and after trial, which unnecessarily prolonged what is an already long,
drawn-out case, particularly in this district.

While it might not be independently

sanctionable, Buyers’ method of litigation, particularly with respect to the settled question
of infringement on remand, arguably stands out as “exceptional” under the standard
articulated in Octane Fitness. Tellingly, Buyers does not respond directly to the objections
Douglas raises to its conduct regarding the ‘700 patent litigation on remand, instead
focusing on the reasonableness of the rest of its behavior.
Still, the infringement issues were side ones on remand, and Douglas’s responses
quickly became a simple rote. Accordingly, the court finds this conduct (while excessive)
does not by itself move this case into the exceptional category in this respect, and it will
deny Douglas’s request for fees incurred on remand.

ORDER
IT IS ORDERED that:
(1) plaintiff Douglas Dynamics, LLC’s motion to alter or amend (dkt. #749) is
GRANTED IN PART and DENIED IN PART consistent with the opinion above;
31

(2) defendant Buyers Products Company’s motion to alter or amend (dkt. #755) is
DENIED;
(3) defendant’s motion for judgment as a matter of law (dkt. #757) is DENIED;
(4) defendant’s motion for leave to file a supplemental brief in support of its motion
to alter or amend (dkt. #770) is GRANTED; and
(5) the clerk of court shall enter a final judgment in favor of Douglas Dynamics in
the amount of $9,935,983.
Entered this 31st day of December, 2014.
BY THE COURT:
/s/
________________________________________
WILLIAM M. CONLEY
District Judge

32