Technical LED Intellectual Property, LLC v. BVGA Mipow Co., Ltd

Background

Technical LED Intellectual Property, LLC, the assignee of U.S. Patent No. RE41,685, alleged that BVGA Mipow (USA) Co., Ltd. infringed claims 10 through 14 of the patent through products including its playbulb smart lights and similar assemblies. The alleged infringement involved making, using, supplying, distributing, selling, or offering for sale products covered by the patent.

The clerk entered default after BVGA Mipow failed to defend the case. Magistrate Judge Spero held a hearing on Technical LED’s motion for default judgment and requested additional evidence concerning damages. He later issued a Report and Recommendation concluding that the motion should be granted in part and denied in part. No party objected to that recommendation, and the docket showed that it had been served on BVGA Mipow’s registered agent.

Damages and Other Relief Recommended

Judge Spero recommended awarding $51,749.30 in reasonable royalty damages, calculated as 9% of BVGA Mipow’s revenue from allegedly infringing product sales from 2015 through October 19, 2018, before BVGA Mipow was notified of the patent. He recommended denying Technical LED’s request for treble damages covering the full period because the complaint did not allege that BVGA Mipow knew about the patent before October 19, 2018.

For the period after notification, Judge Spero recommended doubling the royalty rate to 18%, adding $9,105.94 in royalty damages. That produced total monetary damages of $60,855.24. He also recommended denying injunctive relief because Technical LED had not explained what irreparable injury could not be compensated with money.

The recommendation included $17,800 in attorney and paralegal fees under 35 U.S.C. § 285, after reducing billing rates to account for aspects of how the litigation was handled, and $9,697.49 in costs. It also recommended declining to hold two employees personally liable because neither was named as a defendant or mentioned in the complaint.

Ruling

The court adopted the Report and Recommendation and granted in part and denied in part Technical LED’s motion for default judgment. It stated that it would enter a separate judgment awarding $88,352.73: $60,855.24 in monetary damages, $17,800 in attorney and paralegal fees, and $9,697.49 in costs. The order did not award injunctive relief or the requested treble damages for the full period of sales.