throbber
Case 8:14-cv-01352-JLS-KES Document 394 Filed 03/19/20 Page 1 of 25 Page ID
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`RUSS AUGUST & KABAT
`Benjamin T. Wang (SBN 228712)
`bwang@raklaw.com
`Minna Y. Chan (SBN 305941)
`mchan@raklaw.com
`Andrew D. Weiss (SBN 232974)
`aweiss@raklaw.com
`Jacob R. Buczko (SBN 269408)
`jbuczko@raklaw.com
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`Telephone: (310) 826-7474
`Facsimile: (310) 826-6991
`Attorneys for Plaintiff
`PAVO SOLUTIONS LLC
`
`
`PAVO SOLUTIONS, LLC
`
`
`Plaintiff,
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
` Case No. 8:14-cv-01352-JLS-KES
`Honorable Josephine L. Staton
`
`PLAINTIFF PAVO SOLUTIONS,
`LLC’S MOTION FOR ENHANCED
`DAMAGES PURSUANT TO 35
`U.S.C. §284 FOR WILLFULNESS
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`
`KINGSTON TECHNOLOGY
`COMPANY, INC.,
`
`
`Defendant.
`
`
`
`
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`PLAINTIFF PAVO SOLUTIONS, LLC’S MOTION FOR ENHANCED DAMAGES
`PURSUANT TO 35 U.S.C. § 284 FOR WILLFULNESS
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`Case 8:14-cv-01352-JLS-KES Document 394 Filed 03/19/20 Page 2 of 25 Page ID
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`
`TABLE OF CONTENTS
`
`I.
`
`INTRODUCTION .............................................................................................1
`
`II. LEGAL STANDARD .......................................................................................2
`
`III. THE TOTALITY OF THE CIRCUMSTANCES WARRANTS
`ENHANCEMENT OF THE JURY’S DAMAGES AWARD ...........................3
`A. Factor 2: Kingston Did No Investigation of Its Infringement Of the ‘544
`Patent And Could Not Have Had a Good Faith Belief in Non-Infringement or
`Invalidity ............................................................................................................5
`B. Factor 3: Kingston Engaged In Substantial Misconduct Throughout This
`Litigation In Almost Every Facet Of The Litigation .........................................8
`C. Factor 4: Kingston Is A Large Company Such That Substantial Enhancement
`Is Viable And Necessary To Change Its Behavior ..........................................13
`D. Factor 5: This Case Was Not Close .................................................................15
`E. Factor 6: Kingston Infringed For Seven And A Half Years, Including Five
`Years After Being Notified Of Its Infringement ..............................................18
`F. Factor 7: Kingston’s Lack of Remedial Measures Favors Enhancement ........18
`G. Factor 8: Kingston’s Motivation For Harm .....................................................19
`H. Factors 1 And 9 Are Neutral ...........................................................................20
`
`IV. CONCLUSION ...............................................................................................20
`
`
`
`
`
`i
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`SUPPLEMENTAL DECLARATION OF BENJAMIN T. WANG IN SUPPORT OF PAVO SOLUTIONS, LLC’S
`OPPOSITION TO DEFENDANT KINGSTON TECHNOLOGY COMPANY, INC.’S MOTIONS IN LIMINE NO. 1
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`RUSS, AUGUST & KABAT
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`
`TABLE OF AUTHORITIES
`
`Cases
`Arctic Cat Inc. v. Bombardier Recreational Prods. Inc.,
`198 F. Supp. 3d 1343 (S.D. Fla. 2016) .........................................................18
`Broadcom Corp. v. Qualcomm Inc.,
`2007 WL 8030058 (C.D. Cal. Nov. 21, 2007) ..............................................18
`Broadcom Corp. v. Qualcomm Inc.,
`No. SACV 05-467-JVS, 2007 WL 2326838 (C.D. Cal. Aug. 10, 2007) ......18
`Canon, Inc. v. Color Imaging, Inc.,
`292 F. Supp. 3d 1357 (N.D. Ga. Feb. 22, 2018) ...........................................18
`Chamberlain Grp., Inc. v. Techtronic Indus. Co.,
`315 F. Supp. 3d 977 (N.D. Ill. 2018) ............................................................18
`Cobalt Boats, LLC v. Brunswick Corp.,
`296 F. Supp. 3d 791, 800 (E.D. Va. 2017) ......................................................5
`Goodwall Construction Co. v. Beers Construction Co.,
`991 F.2d 751 (Fed. Cir. 1993) .........................................................................3
`Green Mountain Glass LLC v. Saint-Gobain Containers, Inc.,
`300 F. Supp. 3d 610 (D. Del. 2018) ................................................................5
`Halo Elecs., Inc. v. Pulse Elecs., Inc.,
`136 S. Ct. 1923 (2016) ....................................................................................2
`Hoechst Celanese Corp. v. BP Chems. Ltd.,
`78 F.3d 1575 (Fed. Cir. 1996) .........................................................................3
`I-Flow Corp. v. Apex Med. Tech., Inc.,
`No. 07cv1200, 2010 WL 114005 (S.D. Cal. Jan. 6, 2010) ...........................18
`Johns Hopkins University v. CellPro, Inc.,
`152 F.3d 1342 (Fed. Cir. 1998) .................................................................3, 14
`Jurgens v. CBK, Ltd.,
`80 F.3d 1566 (Fed. Cir. 1996) .........................................................................3
`Krippelz v. Ford Motor Co.,
`670 F. Supp. 2d 815 (N.D. Ill. 2009) ............................................................14
`Maxwell v. Angel-Etts of California,
`aff'd 53 Fed. Appx. 561 (Fed. Cir. 2002) ......................................................14
`Maxwell v. Angel-Etts of California,
`No. CV9910516DT(AJWX), 2001 WL 34133507 (C.D. Cal. July 9,
`2001) .............................................................................................................14
`Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings,
`370 F.3d 1354 (Fed. Cir. 2004) .....................................................................14
`ii
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`PLAINTIFF PAVO SOLUTIONS, LLC’S MOTION FOR ENHANCED DAMAGES
`PURSUANT TO 35 U.S.C. § 284 FOR WILLFULNESS
`
`
`
`RUSS, AUGUST & KABAT
`
`

`

`Case 8:14-cv-01352-JLS-KES Document 394 Filed 03/19/20 Page 4 of 25 Page ID
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`PPC Broadband, Inc. v. Corning Optical Commc'ns RF, LLC,
`No. 511CV761GLSDEP, 2016 WL 6537977 (N.D. N.Y. Nov. 3, 2016) .....15
`Read Corp. v. Portec, Inc.,
`970 F.2d 816 (Fed. Cir. 1992) .........................................................................3
`SRI Int’l, Inc. v. Advanced Technology Laboratories, Inc.,
`127 F.3d 1462 (Fed. Cir. 1997) .......................................................................3
`Stryker Corp. v. Intermedics Orthopedics, Inc.,
`96 F.3d 1409 (Fed. Cir. 1996) .........................................................................3
`TCL Commc’n Tech. Holdings, Ltd.,
`No. 2:15-CV-00011-RSP, 2018 WL 2149736 (E.D. Tex. May 10, 2018) .....5
`Whirlpool Corp. v. TST Water, LLC,
`Case No. 2:15-CV-01528-JRG, 2018 WL 1536874 (E.D. Tex. Mar. 29,
`2018) .............................................................................................................15
`Statutes
`35 U.S.C. §284 ..........................................................................................................1
`
`
`
`
`
`iii
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`SUPPLEMENTAL DECLARATION OF BENJAMIN T. WANG IN SUPPORT OF PAVO SOLUTIONS, LLC’S
`OPPOSITION TO DEFENDANT KINGSTON TECHNOLOGY COMPANY, INC.’S MOTIONS IN LIMINE NO. 1
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`Case 8:14-cv-01352-JLS-KES Document 394 Filed 03/19/20 Page 5 of 25 Page ID
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`I.
`
`INTRODUCTION
`After finding
`that Defendant Kingston Technology Company, Inc.
`(“Kingston”) infringed claims 1, 4, and 24 (the “Asserted Claims”) of U.S. Patent
`No. 6,926,544 (“’544 patent”), the jury also found that Kingston willfully infringed
`the ’544 patent. The jury’s willfulness finding, plus additional Read factors (such as
`Kingston’s failure to present evidence that its continued infringement, after
`receiving notice of its infringement of the ’544 patent, was in good faith; the fact
`that the case was not close; and Kingston’s improper litigation conduct) all weigh in
`favor of enhanced damages under 35 U.S.C. § 284.
`The record in this case makes clear that Kingston used its financial strength
`to employ a strategy of unjustifiably multiplying proceedings and increasing the
`costs and time required of Pavo (and its predecessor-in-interest, CATR) to enforce
`the ‘544 patent. It employed this strategy (successfully driving CATR out of the
`case) despite weak noninfringement positions and an invalidity defense so deficient
`that Kingston ultimately did not present it to the jury.
`The record is replete with examples of Kingston’s conduct, after receiving
`notice of its infringement through the end of trial, that justify enhanced damages.
`For example, Kingston served knowingly false discovery responses; attempted to
`rewrite deposition testimony; had its witnesses directly contravene sworn deposition
`testimony; withheld evidence of accused product costs from both Pavo and its own
`damages expert, and then prejudiced Pavo by having its fact witness introduce the
`withheld evidence for the first time at trial; multiple attempts to introduce for the
`first time at trial new noninfringement, willfulness, and invalidity arguments that
`were not previously disclosed; represented that it would raise a new “pair”
`noninfringement argument only for impeachment, even though Kingston knew (or
`should have known) that no impeachment existed, necessitating a curative
`instruction from the Court; and presented an expert who admittedly did not write
`portions of his expert reports, did not know who his coauthors were, and could not
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`PLAINTIFF PAVO SOLUTIONS, LLC’S MOTION FOR ENHANCED DAMAGES
`PURSUANT TO 35 U.S.C. § 284 FOR WILLFULNESS
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`identify what if any parts he may have written. And even before trial, Kingston’s
`strategy was evident in the several expert depositions that Pavo had to take for
`experts/issues Kingston ultimately never relied upon (Dr. Choi, Mr. Voyles and Prof.
`Rake regarding invalidity), and the numerous motions that had to be filed in the case,
`including an ex parte application, summary judgment motions, over twenty motions
`in limine, motions to strike, and Daubert motions.
`Kingston had the means to make the litigation as difficult as possible, and so
`it did so without regard to merit, its discovery obligations, or the truth. Kingston’s
`approach to this litigation mirrored its approach to the ‘544 patent after first learning
`of it, namely a disregard of reasonable conduct and a valid patent.
`As a result of Kingston’s willful infringement and its overall misconduct after
`learning of its infringement, Kingston’s conduct supports an enhancement of the
`jury’s damages award. Pavo believes that the damages award should be trebled as a
`punitive measure and to discourage similar conduct by Kingston in the future.
`II. LEGAL STANDARD
`“Enhanced damages are as old as U.S. patent law,” Halo Elecs., Inc. v. Pulse
`Elecs., Inc., 136 S. Ct. 1923, 1928 (2016), and may be “recovered in a case of willful
`or bad-faith infringement.” Id. at 1930 (internal citations omitted). In light of the
`jury’s willfulness verdict, the Court is empowered to enhance the damages award by
`up to three times. 35 U.S.C. § 284. To determine whether to enhance damages, the
`Court should “take into account the particular circumstances of each case in deciding
`whether to award damages, and in what amount.” Id.
`In exercising their discretion, district courts typically consider a non-exclusive
`set of factors (the “Read Factors”), which include but are not limited to: (1) whether
`Kingston copied Pavo’s patented ideas; (2) whether Kingston, knowing of Pavo’s
`patent protection, investigated the scope of the patent and formed a good-faith belief
`of non-infringement or invalidity; (3) Kingston’s behavior as a party to the litigation;
`(4) Kingston’s size and financial condition; (5) the closeness of the case; (6) the
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`PLAINTIFF PAVO SOLUTIONS, LLC’S MOTION FOR ENHANCED DAMAGES
`PURSUANT TO 35 U.S.C. § 284 FOR WILLFULNESS
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`Case 8:14-cv-01352-JLS-KES Document 394 Filed 03/19/20 Page 7 of 25 Page ID
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`duration of Kingston’s infringement; (7) whether Kingston engaged in any remedial
`action to cease infringement; (8) whether Kingston had a motivation for harm; and
`(9) whether Kingston attempted to conceal its conduct. Read Corp. v. Portec, Inc.,
`970 F.2d 816, 826-27 (Fed. Cir. 1992) superseded on other grounds as recognized
`in Hoechst Celanese Corp. v. BP Chems. Ltd., 78 F.3d 1575, 1578 (Fed. Cir. 1996).
`Enhancement, however, is not limited to cases where the infringer engaged in
`“slavish copying” or produced an “exact copy” of the patentee’s product or patent.
`Stryker Corp. v. Intermedics Orthopedics, Inc., 96 F.3d 1409, 1414 (Fed. Cir. 1996).
`In evaluating the Read factors, the Court’s discretion is bound by the jury’s
`verdict. While the Court may weigh the totality of the circumstances in many
`different ways, it is required to credit facts necessarily determined by the jury—like
`the fact that Kingston’s infringement was willful. See Jurgens v. CBK, Ltd., 80 F.3d
`1566, 1372 (Fed. Cir. 1996) (“Although the trial court many times has discretion to
`weigh the closeness of the case and the scope of the infringer’s investigation in
`deciding whether to increase a damages award, it does not have discretion to reweigh
`this evidence once the matter has been decided by the jury ....”).
`III. THE TOTALITY OF THE CIRCUMSTANCES WARRANTS
`ENHANCEMENT OF THE JURY’S DAMAGES AWARD
`The
`jury’s finding of willfulness could, alone, support enhanced
`damages. See, e.g., SRI Int’l, Inc. v. Advanced Technology Laboratories, Inc., 127
`F.3d 1462, 1468-69 (Fed. Cir. 1997); Johns Hopkins University v. CellPro, Inc., 152
`F.3d 1342, 1352, 1364-65 (Fed. Cir. 1998); Goodwall Construction Co. v. Beers
`Construction Co., 991 F.2d 751, 758 (Fed. Cir. 1993). But in addition to the jury’s
`willfulness finding, the facts presented at trial, as well as Kingston’s litigation
`conduct before and during trial supports an enhancement in this case.
`As shown at trial, Kingston continued to blatantly and willfully infringe the
`’544 patent for over 5 years after receiving notice of its infringement of the ’544
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`PLAINTIFF PAVO SOLUTIONS, LLC’S MOTION FOR ENHANCED DAMAGES
`PURSUANT TO 35 U.S.C. § 284 FOR WILLFULNESS
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`RUSS, AUGUST & KABAT
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`

`

`Case 8:14-cv-01352-JLS-KES Document 394 Filed 03/19/20 Page 8 of 25 Page ID
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`patent. Exs. A-C; Ex. D at 46:13-18, 97:24-98:4; Ex. E at 121:25-123:24, 126:4-
`133:5. The jury found that Kingston intentionally or deliberately infringed claims 1,
`4 and 24 of the ‘544 patent. And the finding of the jury makes sense given the clear
`and straightforward nature of the claims. Instead of acting, such as by, for example,
`adopting a non-infringing alternative, Kingston made the deliberate choice to
`continue to manufacture, import and sell the DT101G2. The reasoning for
`Kingston’s choice is apparent based on the evidence – the DT101G2 was a best
`seller, greatly outselling the “alternatives” offered by Kingston at trial. Ex. F at 3,
`Ex. G at 118:23-121:1.
`Compounding this issue was Kingston’s litigation practice throughout this
`case of constantly changing the facts and refusing to even search for documents to
`support its changing facts. Mr. Terpening, for instance, first testified that Kingston
`did no internal investigation, then testified (likely after being informed by his
`counsel of the import of that testimony) that an investigation did take place but he
`did not know any of the details or who was involved, then testified at trial that an
`investigation did in fact take place and that he was personally involved, only to then
`admit on cross-examination that he had no idea whether he was actually involved
`and had no proof of the supposed investigation. Ex. G at 23:11-24:6, 24:20-28:9,
`29:2-5. The jury apparently did not believe Mr. Terpening’s wildly varying
`testimony and found willfulness. Kingston’s deliberate choice to continue infringing
`for financial gain, and its active efforts to obfuscate the facts, warrant a financial
`deterrent to ensure that Kingston avoids similar conduct in the future.
`What follows is an analysis of each of the Read factors, which confirms that
`enhancement of the jury’s damages award is appropriate.
`
`RUSS, AUGUST & KABAT
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`PLAINTIFF PAVO SOLUTIONS, LLC’S MOTION FOR ENHANCED DAMAGES
`PURSUANT TO 35 U.S.C. § 284 FOR WILLFULNESS
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`
`A.
`Factor 2: Kingston Did No Investigation of Its Infringement
`Of the ‘544 Patent And Could Not Have Had a Good Faith Belief
`in Non-Infringement or Invalidity
`Read factor 2 considers whether, upon finding out about the ‘544 patent,
`Kingston investigated the scope the patent and formed a good faith belief of non-
`infringement or invalidity. In finding willful infringement of the Asserted Claims of
`the ’544 Patent, the jury necessarily rejected the notion that Kingston held a good-
`faith belief in non-infringement or invalidity of the ‘544 patent. In these
`circumstances, courts routinely find that this factor favors enhancement. Green
`Mountain Glass LLC v. Saint-Gobain Containers, Inc., 300 F. Supp. 3d 610, 628–
`31 (D. Del. 2018) (finding factor 2 weighed in favor of enhancement when jury
`returned a willfulness verdict); TCL Commc’n Tech. Holdings, Ltd., No. 2:15-CV-
`00011-RSP, 2018 WL 2149736, at *11 (E.D. Tex. May 10, 2018) (“The jury’s
`finding that TCL’s infringement was both culpable and egregious necessarily means
`that the jury did not credit TCL with a good faith belief about the ‘501 Patent.”);
`Cobalt Boats, LLC v. Brunswick Corp., 296 F. Supp. 3d 791, 800–04 (E.D. Va. 2017)
`(finding factor 2 weighing in favor of enhancement because “the jury found and the
`Court concurs that [patentee’s] cited evidence is more persuasive on willfulness.”).
`Evidence of Kingston’s lack of good faith was effectively undisputed. Pavo
`presented evidence at trial that Kingston, by way of its own trial counsel, was
`notified of the ’544 patent by a PTO Examiner as early as June 22, 2012. Exs. B-C,
`I-J; Ex. E at 126:4-133:5.1 Kingston was then again notified of the ’544 patent, and
`its infringement, on August 20, 2012, by CATR, the owner of the ’544 patent at the
`time. CATR sent a letter to Kingston offering Kingston a full license to the ‘544
`
`
`1 As the jury was informed, prior to trial, Kingston’s interrogatory response claimed that “[o]n
`August 17, 2012, Kingston first learned of the ’544 patent ....” Ex. E at 123:15-124:3 (emphasis
`added). But as the jury heard, Kingston actually first learned of the ‘544 patent earlier when the
`PTO Examiner notified Kingston of the ‘544 patent. Exs. B-C, I-J; Ex. E at 126:4-133:5. And
`importantly, the notice from the PTO was directed to one of Kingston’s own counsel in this case.
`Ex. E at 126:13-127:2.
`
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`PLAINTIFF PAVO SOLUTIONS, LLC’S MOTION FOR ENHANCED DAMAGES
`PURSUANT TO 35 U.S.C. § 284 FOR WILLFULNESS
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`patent, indicating that Kingston infringed the ‘544 patent, and including an
`exemplary claim chart comparing the DT101G2 to one of the claims. The same
`analysis in the exemplary claim chart applied to claims 1, 4 and 24, and the main
`difference between those claims and the exemplary claim related to the “hinge
`protuberance” and “hinge element” requirements, the former being stipulated to at
`trial by Kingston and the latter not disputed at trial. See Ex. A; Ex. E 121:25-123:24;
`Doc. 332 at 2; see Ex. G at 136:15-23 and Ex. H at 23:10-22 (challenging only
`“parallel,” “closed rear end,” and “received in an inner space” limitations).
`The jury also heard and clearly discredited the testimony from Kingston’s
`representative at trial, Mr. Terpening, about a supposed internal review of the patent
`that allegedly took place after Kingston received the CATR letter. The evidence at
`trial was that Kingston had no documentation of any such review, had no idea who
`conducted or participated in the supposed review, did not know how long the
`supposed review took, did not know of any specific claim of the ‘544 patent that was
`reviewed, would have considered obviousness only at the time of the letter in 2012,
`and not from the appropriate 2002 priority date of the patent, would not have
`reviewed any prior art, and had no proof that an internal review was actually
`conducted. Ex. G at 23:11-35:25.
`Moreover, in contrast to Mr. Terpening’s supposed internal review, Calvin
`Leong, the Director of Kingston’s Legal Department, testified unequivocally that he
`was not aware of any internal analysis at Kingston as to whether Kingston infringed
`the ’544 patent. Id. at 50:6-11. He also testified that he did not recall ever requesting
`any analysis of whether Kingston infringed the ‘544 patent. Id. at 50:12-14.
`Testimony from each of Kingston’s fact witnesses, Mr. Terpening, Mr. Leong,
`and Mr. Chien, also confirmed that Kingston does not respect the intellectual
`property of others. For instance, the jury heard evidence that Kingston did not
`perform a prior art search when designing the Accused Product to see if the design
`was infringing a patent (id. at 35:2-8), did not conduct an infringement analysis
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`PLAINTIFF PAVO SOLUTIONS, LLC’S MOTION FOR ENHANCED DAMAGES
`PURSUANT TO 35 U.S.C. § 284 FOR WILLFULNESS
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`against any other parties’ patents (id. at 35:9-12), has no standard policy to seek
`licenses or authorization (id. at 35:13-16), has no policy to review patents asserted
`against it (id. at 50:15-18), has no policy to conduct an infringement analysis if it
`becomes aware of another’s patent (Ex. AD at 66:19-23), has no formal process to
`notify anyone if an employee becomes aware of a patent (Ex. G at 35:17-25), and
`has never taken a license to a patent without litigation (id. at 49:24-50:5).
`Further evidencing Kingston’s lack of good faith was its minimal and weak
`non-infringement contentions at trial, and abandonment in the middle of trial of its
`invalidity defense. For instance, Kingston’s only non-infringement arguments at trial
`for claim 24 were to challenge whether the plate members were parallel, and the
`“USB terminal piece is received in an inner space of the cover or exposed outside
`the cover” requirements. But its own witnesses admitted that both requirements were
`met by the DT101G2. Mr. Terpening admitted the cover was “parallel” (Ex. E at
`111:2-6), Prof. Rake at least admitted that the cover was closer to “parallel” when
`the device was fully assembled (Ex. H at 53:1-4), and Kingston’s own technical
`documents always show the cover as “parallel.” Exs. K-M; Ex. S at 16:22-17:21.
`Likewise, using almost the exact language of the claim, Mr. Terpening and Prof.
`Rake both admitted that the “received in ... or exposed outside” requirement was met
`by the accused device. Ex. E at 121:13-20; Ex. H at 67:19-68:8. And Kingston’s own
`documents showed this to be true. Exs. M, O-P. As for invalidity, Kingston dropped
`all challenges of invalidity in the middle of trial, specifically at 7:26PM on the third
`day of trial. Ex. Q, Ex. G at 18:14-17; 33:16-34:19.
`In light of these facts, the jury rightfully rejected the notion that Kingston had
`any reasonable good faith belief in non-infringement or invalidity. This factor
`therefore weighs in favor of enhancement.
`
`RUSS, AUGUST & KABAT
`
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`7
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`PLAINTIFF PAVO SOLUTIONS, LLC’S MOTION FOR ENHANCED DAMAGES
`PURSUANT TO 35 U.S.C. § 284 FOR WILLFULNESS
`
`

`

`Case 8:14-cv-01352-JLS-KES Document 394 Filed 03/19/20 Page 12 of 25 Page ID
` #:19828
`
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`B.
`Factor 3: Kingston Engaged In Substantial Misconduct
`Throughout This Litigation In Almost Every Facet Of The
`Litigation
`Throughout this litigation, Kingston has demonstrated a practice of
`obfuscating the facts and withholding evidence, attempting to circumvent Court
`rulings, and affirmatively misrepresenting its positions so as to misdirect Pavo and
`conceal evidence. As described above, Kingston repeatedly changed its testimony
`regarding its lack of internal investigation after finding out about the ‘544 patent.
`And, even after changing its position to argue that an investigation took place (an
`argument rejected by the jury), Kingston admitted that it did not search for
`documents to support its argument. Ex. G at 27:12-18. Kingston also attempted to
`circumvent the Court’s ruling on Pavo’s motion in limine No. 4 by seeking to
`introduce testimony that Kingston referred the 2012 notice letter from CATR to
`outside counsel. See Ex. E at 101:17-103:5; Doc. 368. The clear implication would
`be that Kingston acted in a good faith manner and relied on outside counsel to alert
`them of any issues with the ’544 Patent. The Court properly excluded Kingston’s
`attempt to circumvent the Court’s ruling on Pavo’s MIL 4, and the N.D. Cal. Local
`Patent Rule 3-7 pertaining to advice of counsel disclosures. Ex. G at 10:22-11:19;
`12:19-15:4.
`But Kingston’s litigation misconduct was not limited to its lack of
`investigation after being notified of infringement. Kingston engaged in litigation
`misconduct in almost all other areas of the litigation.
`There were multiple instances were Kingston withheld or concealed its
`arguments and evidence during discovery, and then sought to rely on that withheld
`or concealed information at trial. In perhaps the most egregious example, though
`Pavo repeatedly sought such information, Kingston only produced a single Bill of
`Materials showing costs of producing the accused product in 2010. Ex. U. When
`deposed about the document, Mr. Ewing was unable to provide any information
`
`
`
`8
`
`PLAINTIFF PAVO SOLUTIONS, LLC’S MOTION FOR ENHANCED DAMAGES
`PURSUANT TO 35 U.S.C. § 284 FOR WILLFULNESS
`
`RUSS, AUGUST & KABAT
`
`

`

`Case 8:14-cv-01352-JLS-KES Document 394 Filed 03/19/20 Page 13 of 25 Page ID
` #:19829
`
`about the document that was not apparent on the face of the document. Ex. G at
`91:24-92:7; 100:10-101:3; 102:23-103:13. Indeed, both damages experts relied on
`the document, and specifically the cost associated with the flash memory, in forming
`their damages opinions, and Kingston’s damages contentions specifically identified
`the Bill of Materials “as relevant to the value of the Accused Products at the point
`of the hypothetical negotiation.” Id. at 95:16-97:21, 98:3-17. Incredibly, however,
`Kingston attacked Pavo’s damages expert’s reliance on the Bill of Materials by
`having Mr. Ewing testify that the document was inaccurate and not what Kingston
`itself had purported it to be. Id. at 92:24-93:1; 93:22-24. This was a position that
`Kingston and Mr. Ewing did not share with anyone until Mr. Ewing testified on the
`second to last day of trial – not Pavo, not Kingston’s expert, and not the Court. (Id.
`at 95:22-96:11). Indeed, Mr. Ewing’s testimony may even have been the reason that
`the jury did not award Pavo its full measure of damages.
`Magnifying Kingston’s misconduct is that this is not the only example of
`Kingston attempting to use undisclosed evidence from Mr. Ewing to materially alter
`the damages evidence in the case. The Court granted Pavo’s Daubert motion and
`motion to strike as to opinions by Ms. Irvine because the opinions were based on
`“facts” provided by Mr. Ewing and Kingston that were contradictory to Mr. Ewing’s
`deposition testimony and Kingston’s document production. Doc. 302 at 12 (“Irvine
`may indeed rely on statements made by Ewing in her report. However, Ewing’s
`statement to the effect that that the company-wide data was informative as to the
`financials of the accused product defies logic. It is either (1) factually incorrect or
`(2) suggests that Kingston holds relevant information on the accused product’s
`financials demonstrating that Ewing’s statement is correct, and Kingston failed to
`properly disclose this information to Pavo upon request during discovery”), 22-24
`(“Bergman carried out his analysis and constructed his expert report in reliance on
`Ewing’s unaltered testimony and Kingston’s timely document productions. He did
`so without considering the information contained in the unclear ‘price list,’ or the
`9
`
`PLAINTIFF PAVO SOLUTIONS, LLC’S MOTION FOR ENHANCED DAMAGES
`PURSUANT TO 35 U.S.C. § 284 FOR WILLFULNESS
`
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`RUSS, AUGUST & KABAT
`
`

`

`Case 8:14-cv-01352-JLS-KES Document 394 Filed 03/19/20 Page 14 of 25 Page ID
` #:19830
`
`gross margin and labor cost information that Ewing communicated only to Irvine,
`after indicating to Pavo that it did not exist. It would be inequitable to allow Irvine
`to opine on this data when Pavo was led to believe for months (until almost the very
`end of fact discovery) that the information was not available.”) (emphasis in
`original).
`Kingston’s misconduct also extended to its non-infringement, invalidity and
`marking defenses. Kingston was on notice that it was going to be limited to its
`disclosed non-infringement positions after the Court granted Pavo’s Daubert and
`motions to strike opinions of Kingston’s experts pertaining to the “electrically
`connected” and “operatively connected” limitations in claims 1 and 24. Doc. 302 at
`13-16 (granting Pavo’s motions because Kingston misled Pavo to believe that these
`claim limitations were not contested until just eleven days before the close of fact
`discovery, when Kingston suddenly changed its position); see also id. at 3-6. Up
`until that point, Kingston had repeatedly confirmed in both discovery responses and
`deposition testimony that it was not contesting the “connected” limitations. Id.
`Rather than mind these rulings, as the Court warned the parties, Kingston repeatedly
`attempted to introduce its untimely non-infringement positions. In fact, in response
`to a query from Pavo, Kingston informed Pavo that it would raise its defense as to
`the “connected” limitations through the testimony of fact witness Mr. Terpening.
`Pavo then raised the issue at trial and the Court sustained Pavo’s objections the
`morning of the day Mr. Terpening testified at trial. See Ex. D at 11:16-14:19.
`Even more egregiously, for the first time at trial, Kingston not only attempted
`to introduce a new noninfringement argument (as to a “pair” of parallel plate
`members) but Kingston’s trial counsel misinformed the Court of her intentions when
`cross examining Prof. Visser about this defense. Pavo objected to Kingston’s new
`theory at the first opportunity after Kingston’s mini-opening, and the Court sustained
`Pavo’s objection. Ex. R at 150:9-154:10. Kingston was, however, given the
`opportunity to prove up its argument (that it had disclosed the theory in discovery)
`10
`
`PLAINTIFF PAVO SOLUTIONS, LLC’S MOTION FOR ENHANCED DAMAGES
`PURSUANT TO 35 U.S.C. § 284 FOR WILLFULNESS
`
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`RUSS, AUGUST & KABAT
`
`

`

`Case 8:14-cv-01352-JLS-KES Document 394 Filed 03/19/20 Page 15 of 25 Page ID
` #:19831
`
`in a trial brief. Id. at 154:2-10. Kingston chose not to do so at the time. Instead,
`Kingston chose to ignore the Co

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