United States District Court, E.D. Virginia, Norfolk Division
OPINION & ORDER
Coke Morgan, Jr. Senior United States District Judge.
matter comes before the Court on Cobalt Boats, LLC's
("Plaintiffs" or "Cobalt's") Motion
to Show Cause Why Brunswick Corporation Should Not be Held in
Contempt of the Court's Permanent Injunction (the
"Motion"). Doc. 427. A hearing for this matter took
place on November 29, 2018. For the reasons stated below, the
Court DENIES Plaintiffs Motion.
21, 2017, a jury returned a verdict finding that the swim
steps on Brunswick's boats (the "Litigated
Design") infringed claims 4 and 5 of Cobalt Boats'
'880 Patent. Doc. 338.The jury found that Brunswick the
Litigated Design infringed claim 4 of the '880 Patent
both literally and under the doctrine of equivalents, and
that Defendant had infringed 5 of Plaintiffs '880 Patent
under the doctrine of equivalents only. Id. Claim 5
is an independent claim and Claim 4 depends on Claim 1 of the
'880 patent. Claims 1, 4, and 5 are reproduced below:
• Claim 1: A retractable step for
use with a boat in water comprising: a base having a
recess; a pair of stationary arms, each of said arms coupled
with said base; a pair of moveable arms, each of said
moveable arms coupled with one of said stationary arms; a
step having a top side and an underside, said step
coupled with said moveable arms and capable of being
rotated 180° between a stored position within said
recess, wherein said underside is exposed, and a deployed
position below the water surface, wherein said top side
is exposed; and a spring biased locking mechanism
configured to hold at least one of said moveable arms in a
stationary position when said platform is in said
deployed position and releasable to accommodate movement of
said platform to said stored position.
• Claim 4: The retractable step of
claim 1, wherein said step comprises a material characterized
in that it is less dense than water.
• Claim 5: A deployable swim step
for use with a boat in water comprising: a step
having a top side and an underside: means for
coupling said step with the boat, said coupling means
configured to permit rotation of said step 180° from
a stored position above the water surface, wherein said
underside is exposed, and a deployed position below
the water surface, wherein said top side is exposed; and
means for locking said coupling means in a
stationary position when said step is in said deployed
position, said locking means further configured to
accommodate movement of said step to said stored position.
21, 2018, Plaintiff moved for entry of a permanent injunction
to enjoin Defendant from, in relevant part, "[m]aking,
selling or offering for sale within the United States"
the swim steps that were found to infringe the '880
patent, as well as any swim steps that amounted to "no
more than a colorable variation" of those swim steps.
Doc. 366 at 1-2. On July 31, 2017, Defendant e-mailed
Plaintiff and advised that it was re-designing the swim step
(the "Redesign"). Doc. 428-3. Defendant's
e-mail attached drawings of the re-designed hinge assemblies
and asked for Plaintiff to evaluate the Redesign "vis a
vis the '880 Patent." Id. Plaintiff
responded on August 2, 2017 and indicated that it would like
to see a "3-D model or more comprehensive drawings"
and asked to see a "working prototype/sample of hinge
assemblies incorporated into a swim step for
inspection." Id. Defendant replied on August 9,
2017 and advised that it would provide "additional
drawings shortly" and that "a full platform would
take additional time" but that it would contact
Plaintiff as soon as it could. Id. Defendant also
answered other questions about the redesign that were raised
in Plaintiffs e-mail. See Doc. 428-3. On October 26, 2017,
after obtaining an opinion from an independent counsel that
Redesign did not infringe, Defendant sent a physical sample
of the Redesign to Plaintiff. Doc. 434 at 9.
October 31, 2017, the Court entered an Order GRANTING
Plaintiffs Motion for entry of a Permanent Injunction, and
specifically enjoined Defendant, "including its
officers, directors, employees, agents, and anyone acting in
concert or in privity with Brunswick" from:
"[m]aking, selling or offering for sale within the
United States [A] any boats that have the swim step found by
the jury to infringe the '880 Patent . . . [B] any boats
that have a swim step used on Brunswick's Sea Ray 220 and
240 Sundeck models sold before March 2017 . . . [C] any boats
that have a swim step that has a detent locking mechanism
included in the hinge mechanism, regardless of the
configuration of the detent locking mechanism or material
used to create the locking mechanism ... [D] any boats that
have a swim step that is no more than a merely colorable
variation of the swim step enjoined in Paragraphs A-C,
Doc. 412 at 25, 26.
Court further ordered the parties to "meet and
confer" prior to either party pursuing a remedy for
contempt, and ordered that:
If Brunswick, after the Effective Date, intends to make or
sell or offer for sale any redesigned swim step, Brunswick
must, prior to its market introduction, provide Cobalt
with sufficient information about the new swim step design to
allow Cobalt to determine whether it believes such new swim
step design infringes the '880 Patent. If the
parties cannot agree that the proffered swim step design is
not an infringement of claim 4 or claim 5 of the '880
Patent, then the traditional burden to prove contempt of this
Order shall remain on Cobalt. If Brunswick does not comply
with the obligation to "meet and confer" or does
not provide Cobalt sufficient information regarding any
re-designed swim step for Cobalt to evaluate it for
infringement of claim 4 or claim 5 of the '880 Patent,
the burden to show that the redesigned swim step is not an
infringement shall be on Brunswick in any motion for contempt
by Cobalt, although Cobalt shall have the ultimate burden of
persuasion on all other aspects of its motion for contempt.
Doc. 412 at 27 (emphasis added). Prior to the Court's
Permanent Injunction Order, Defendant had already introduced
the boats containing the Redesign into the market for sale,
and Defendant continued to do so after the Court entered the
Order. Doc. 434 at 10. Between December 8, 2017 and March 13,
2018, the parties engaged in several communications to
coordinate further inspection of Defendant's Redesign.
See Docs 428-3, 428-4, 428-5. On March 20, 2018 and April 11,
2018, Defendant arranged for Plaintiffs Counsel and its
expert, Mr. Dyer, to inspect boats both in and out of the
water. Doc. 428-1.
11, 2018, Cobalt filed the instant Motion and a Joint Motion
for Discovery and Agreed Briefing Schedule. Docs. 427, 429.
Pursuant to the Agreed briefing schedule, Defendant filed its
response in opposition on July 27, 2018. Doc. 434. On August
24, 2018, Plaintiff filed its reply. On September 27, 2018,
Defendant filed a Motion for Leave to file a Sur-Reply. Doc.
444. Plaintiff opposed Defendant's Motion for Leave to
file a sur-reply on October 8, 2018. Doc. 445. Defendant
replied on October 15, 2018. On November 14, 2018, the Court
GRANTED Defendant's Motion for Leave to File Sur-Reply
and ORDERED Plaintiff to file its Sur-Surreply, if any, on or
before November 27, 2018. Doc. 447. On November 15, 2018,
Defendant filed its sur-reply. Doc. 449. On November 27,
2018, Plaintiff filed its sur- surreply. Doc. 454. Plaintiffs
Motion to Show Cause is now ripe for review.
Court has broad discretion to hold contempt proceedings.
Tivo Inc. v. EchoStar Corp.,646 F.3d 869, 881 (Fed.
Cir. 2011). However, contempt "is a severe remedy, and
should not be resorted to where there is a fair ground of
doubt as to the wrongfulness of the defendant's
conduct." Id. at 881-882. To show that a party
is in contempt of an injunction, "the party seeking to
enforce the injunction must prove both that the newly accused
product is not more than colorably ...