Cases and Deals

Blank Rome Wins Patent Infringement Appeal for Daktronics, Inc.

A Blank Rome team successfully won an appeal in reversing a jury verdict of patent infringement against Daktronics, Inc., a manufacturer of electronic scoreboards such as at Madison Square Garden, and large-screen LED video displays, such as the large halo video scoreboard at Mercedes-Benz Stadium (Atlanta Falcons) and the video displays throughout the new Texas Rangers ballpark in Globe Life Field.

In 2015, Olaf Sööt Design, LLC (“OSD”) sued Daktronics, claiming that Daktronics’ motorized winch that is used to raise and lower scenery in theaters infringed OSD’s patent. OSD sought more than four million dollars in damages.

The case was tried in December 2018, with the jury finding that Daktronics infringed OSD’s patent. The verdict was unprecedented in that the jury found four elements of the patent claim were met under the “doctrine of equivalents” (“DOE”), which allows a finding of infringement when the components are substantially the same as a claim element, as opposed to exactly the same. The district court denied Daktronics’ post-trial motion for judgment as a matter of law and Daktronics appealed. OSD cross-appealed, claiming that Daktronics acted willfully and should be subject to treble damages.

On January 7, 2021, the U.S. Court of Appeals for the Federal Circuit agreed with Daktronics that its winch did not infringe OSD’s patent as a matter of law because at least one of the elements was not substantially the same as in the patent and reversed the jury verdict of infringement. The concurring opinion by Judge Lourie speaks volumes. Judge Lourie pointed out that he has not found a case where the Federal Circuit affirmed a finding of infringement under the DOE where four claim elements are not literally met. He wrote, “That would be equivalent (no pun intended) to holding that the accused product infringes when it does not infringe… To find that multiple significant instances of inventing around still infringes runs counter to that important theory of patent law … [that] ‘inventing around’ … is considered socially desirable for the promotion of competition and the benefit of consumers.” Judge Lourie found that OSD’s infringement claim “fails the straight face test,” and its willful infringement claim “almost qualify[ies] for a chutzpah award,” “noting that ‘chutzpah’ describes ‘the behavior of a person who kills his parents and pleads for the court’s mercy on the grounds of being an orphan.’”

To read the full Opinion, please click here.

The Blank Rome team included Ken Bressler, Domingo Llagostera, Munira Jesani, and Russell Wong.