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Pentech Int'l v. Hayduchok

United States District Court for the Southern District of New York

July 30, 1996, Decided ; August 2, 1996, FILED

87 CIV 7233 (KTD)

Opinion

 [*1168] OPINION & ORDER

KEVIN THOMAS DUFFY, D.J.:

In November 1990, Judge Pierre N. Leval, then a District Judge, determined after a bench trial that Counterclaim-Defendant Pentech International, Inc. ("Pentech") had literally infringed United States Patent Number 4,681,471 ("the patent"), which was licensed exclusively to Counterclaim-Plaintiff Paradise Creations, Inc. ("Paradise"). 1 [**2]  When Judge Leval assumed the bench on the Court of Appeals for the Second Circuit, the issue of damages remained to be tried. That trial was held by me on March 20, 27, and 28, 1996, and this Opinion resolves the remaining issues. 2

The patent at issue is directed generally to a kit consisting of (a) a plurality of ink dispensers containing water-based inks, the inks containing at least red, yellow, and blue dyes, and (b) a dispenser of ink-eradicating fluid including a reducing agent which works to eradicate marks made by the water-based inks and a common carrier of defined formulation in the marker and eradicating fluid. The kit consists of the ink and eradicating dispensers in a common package. Judge Leval's Opinion explained the infringement issue as follows:

Plaintiff admits that its erasable markers are virtually identical to those patented by defendants. The only notable difference  [*1169]  is that plaintiff's marker kit does not contain a yellow marker, plaintiff having removed that marker precisely to distinguish the product from defendant's patent. (Plaintiff continues to use yellow dyes, to create hybrid colors such as orange and green). Plaintiff contends that this difference precludes a finding of infringement . . . .

Plaintiff continues [**3]  to use the yellow dye specified in defendant's patent, and relies on the eradicability of that dye to permit erasure of the hybrid inks containing yellow. Plaintiff's product thus uses all of the teachings of defendant's patent.

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931 F. Supp. 1167 *; 1996 U.S. Dist. LEXIS 11042 **

PENTECH INTERNATIONAL, INC., Plaintiff, --against-- LEON HAYDUCHOK, ALL-MARK CORPORATION, INC., and PARADISE CREATIONS, INC., Defendants. ALL-MARK CORPORATION, INC. and PARADISE CREATIONS, INC., Counterclaim-Plaintiffs, --against-- PENTECH INTERNATIONAL, INC. and NORMAN MELNICK, Counterclaim-Defendants.

CORE TERMS

patent, infringement, marker, ERASABLES, sales, royalty, yellow, selling, license, invention, products, damages, licensee, advice, profits, willful, colors, manufacturing, patentee, argues, costs, dye, enhanced damage, lost profits, calculation, licensor, asserts, percent, removal, inks

Business & Corporate Compliance, Ownership, Conveyances, Licenses, Patent Law, General Overview, Civil Procedure, Attorney Fees & Expenses, Basis of Recovery, Statutory Awards, Remedies, Damages, Increased Damages, Infringement Actions, Infringing Acts, Use, Collateral Assessments, Attorney Fees, Patentholder Losses, Patentholder Losses, Reasonable Royalties, Burdens of Proof, Defenses, Inequitable Conduct, Measure of Damages, Infringer's Profits, Statute of Limitations, Exclusive Rights, Antitrust & Trade Law, Intellectual Property, Ownership & Transfer of Rights, Copyright Law, Types of Damages, Infringement Profits, Royalties, Patents as Property, Utility Requirement, Judgment Interest, Prejudgment Interest