Milk Street Cafe, a café and catering business located on Milk Street in Boston, sued CPK Media when the latter opened the “Craig Kimball’s Milk Street Kitchen” (they have since dropped the word “Kitchen”), a cooking school also located on Milk Street. Judge Casper last year denied Milk Street Café’s motion for preliminary injunction, finding it had not shown a reasonable likelihood of success. After a bench trial, the court concluded that the defendant had rebutted the presumption of secondary meaning that came with the registration of the mark “Milk Street Café,” based largely on the fact that only the defendant offered consumer survey evidence on this issue. The court also determined that there was no likelihood of confusion, in part because the only real similarity of the marks was the phrase “Milk Street” in which Milk Street Café had no trademark rights and because the goods and services – breakfast and lunch restaurant and corporate catering by Milk Street Café versus cooking demonstrations and classes by the defendant – were not similar. Judge Casper found no trademark infringement, no false association, and no unfair competition. He did, however, refuse to cancel Milk Street Café’s trademark registration, finding the defendant had not shown that it would be damaged by the continued registration of the mark.
Judge Zobel entered final judgment in accordance with the December 14, 2016 jury verdict and her April 24, 2017 Order. The final judgment included:
- direct and indirect willful infringement of U.S. Patent 5,229,137;
- ‘137 patent valid over the prior art of record;
- Perrigo was not entitled to a laches defense because plaintiffs knew or should have known of infringement only as of August 2008, too recent for laches to apply;
- Damages of $10,210,071;
- Attorneys’ fees were not awarded, as the defense, while not successful, was not frivolous or vexatious, as Perrigo had investigated infringement and invalidity before filing its ANDA application ad Brigham’s corporate witness testified that it did not immediately bring suit for fear of losing royalties should the claims be found invalid; and
- Enhanced damages would not be applied, despite the jury’s finding of willfulness, in part because the awarded damages were at the high end of those sought.
Judge Zobel’s April order was interesting in that she found that final judgment had previously been entered, triggering the timelines of Fed R. 50(b) and 59(e), which could not be expanded by the district court, despite her having granted a joint motion to extend the deadline. Thus, Perrigo’s renewed motion for judgment as a matter of law was not timely filed, and its notice of appeal was also late.
A jury verdict was reach in the case of Koninklijke Philips Electronics N.V. v. Zoll Medical Corp. The jury awarded Philips $8,900,000 as a reasonable royalty for infringement of the ‘374 patent and $1,500,000 for infringement of the ‘454 and ‘905 patents, but also awarded Zoll $3,300,000 for Philips’ infringement of Zoll’s ‘526 and ‘187 patents. Neither side was found to willfully infringe.