A Massachusetts court recently denied defendant Kaz’s motions for judgment on the defenses of laches and equitable estoppel, letting stand an earlier jury verdict that found Kaz had infringed Exergen’s patents for temporal thermometers.  As we previously reported, the verdict awarded the plaintiff almost $15 million in damages.

In his order, Judge Stearns noted that the relevant facts underlying Kaz’s motions are the same. Exergen had sent several letters to Kaz in 2007 warning of infringement, after learning through a trade magazine that Kaz planned to introduce a temporal thermometer into the market.  However, Kaz did not begin selling its thermometer until 2009—at which point Exergen obtained a sample of the product.  Four years later, in 2013, Exergen filed its infringement suit against Kaz.

Turning first to the issue of laches, Kaz contended that Exergen had delayed filing suit for nearly six years, from the time it had first seen the Kaz product. However, Judge Stearns found that “the attributable delay is more fairly characterized as four years, accruing after Exergen obtained and tested an exemplary of the [Kaz] product.”  Also, because Kaz did not start selling its product until 2009, Exergen could “plausibly conclude that Kaz might have heeded the warning of potential infringement.”  In addition, the evidence showed that Exergen had actively enforced its patents against others during that four-year period.  As a result, the court could not conclude that Exergen had intentionally delayed filing its case against Kaz.

Kaz’s claim of equitable estoppel met a similar fate. Judge Stearns concluded that “Exergen did not engage in conduct that would reasonably believe Exergen did not intend to assert its patent rights,” as Exergen had communicated its intent to Kaz from the beginning.  And, Kaz had responded in kind, keeping tabs on Exergen’s litigation activities and obtaining multiple opinion letters in preparation for a potential lawsuit.

The Court’s order emphasizes that it is important for defendants to have substantive evidence of inequity in order to prevail on claims of laches and equitable estoppel. Otherwise, such claims will likely fail to generate much heat in the courtroom.

The case is Exergen Corp. v. Kaz USA, Inc., Civil Action No. 13-cv-10628 (D. Mass. Feb. 11, 2016), before Hon. Richard G. Stearns.   A copy of the order can be found here.