UNITED STATES DISTRICT COURT FOR THE DISTRICT OF RHODE ISLAND ______________________________ ) ) ) Plaintiff, ) ) v. ) ) HASBRO, INC., ) ) Defendant. ) ______________________________) MICHAEL BOWLING,

C.A. No. 05-229 S

OPINION AND ORDER William E. Smith, United States District Judge. Plaintiff Michael Bowling (Bowling) has filed this patent infringement action against Hasbro, Inc. (Hasbro) for allegedly infringing Bowlings United States Patent Number 5,938,197 (the 197 patent). The 197 patent, entitled RANDOM NUMBER GENERATOR FOR GAME PLAYING, describes several polyhedral dice, one of which, the six-sided die (known in the gaming world as a D-6), is the subject of this dispute. that require construction. summary judgment on The parties have identified two claims Additionally, Bowling has moved for earlier motion to correct

Hasbros

inventorship, and Hasbro has moved for partial summary judgment on marking. After careful consideration, and for the reasons that
follow, the Court shall construe the disputed claims in the manner provided infra Part II.A, grant Bowlings Motion for Summary Judgment on the inventorship issue, and deny Hasbros Motion for Partial Summary Judgment on the marking issue.
Background Bowling, an engineer by training, is an afficionado of fantasy
role-playing games, such as Dungeons & Dragons,1 and holds several domestic and international patents in dice design. Crystal Caste, specializes the in core dice, miniatures, of the His company, and gaming is

accessories,

although

feature

enterprise
polyhedral dice, which are an essential component in role playing. The dice described in the 197 patent are of central importance to the business plan of Crystal Caste. These dice, ranging from a D-6
to a D-20, have extension member facets in the shape of opposing triangles. This unique shape is both functional and aesthetic. It allows the dice to have facets wide enough (at the triangles base) to display readable indicia and, at the same time, resembles a crystal. Designing a polyhedral die in the shape of a crystal is
a clever marketing ploy because, in fantasy circles, crystals are thought to be imbued with magical powers.2 At some point in 1999, Hasbro, a toy and game company, began selling Monopoly, Millennium, an edition of the well-known
Somewhat ironically, Dungeons & Dragons is a product of Wizards of the Coast, a subsidiary of Hasbro. The interested reader might consider Wikipedia, The Free Encyclopedia, Dungeons & Dragons: Dragonshard, at http://en.wikipedia.org/wiki/Dragonshard_(computer_game) (last visited May 14, 2007), as a primer. 2

commercial

game.3

included

characteristics similar to Bowlings patented die.

In September

1999, Hasbro contacted Bowling by letter to discuss the possibility of using his die design. Bowling responded, in November 1999, by
informing Hasbro that it was infringing the 197 patent, and demanding that Hasbro immediately cease its infringing activities. The parties thereafter exchanged a series of correspondence, but ultimately were unable to resolve the dispute. infringement action in May 2005. II. Discussion A. Claim Construction Bowlings proposed construction 1. facets being identically shaped and having equal surface areas, without regard to any indented indicia Hasbros proposed construction 1. each extension member facet has the same or substantially the same shape, as defined by the outer perimeter of each such facet, and the same or substantially the same surface area, measured as the surface of a three-dimensional object The Courts construction 1. discrete facets being identically shaped and having equal surface areas, without regard to negligible variances in surface area caused by indented indicia Bowling filed this

Claim Terms

1. discrete facets being identically shaped and having equal surface areas
Hasbro markets Monopoly through its subsidiary, Parker Brothers. 3
Bowlings proposed construction 17. facets are of equal surface area, without regard to any indented indicia
Hasbros proposed construction 17. each extension member facet has the same or substantially the same surface area, measured as the surface of a three-dimensional object
The Courts construction 17. extension member facets being equal in surface area, without regard to negligible variances in surface area caused by indented indicia

17. extension member facets being equal in surface area
The parties dispute the meaning of equal surface area as used in claims 1 and 17 of the 197 patent. Hasbro, referencing a
technical dictionary, observes that surface area is generally understood as a measure of how much area the solid would have if you could somehow break it apart and flatten it out. Barrons
Dictionary of Mathematical Terms 327 (Douglas Downing ed., 2d ed. 1995). This construction is important to Hasbros claim because,
under this definition, the facets of a die would not have surface areas equal to one another, as the 197 patent claims, unless those facets were flat. In other words, a die with indented indicia
could not, as a matter of mathematics, have facets of equal surface area. See Merriam-Webster Dictionary 257 (1997) (defining equal
as of the same measure, quantity, value, quality, number, degree, or status as another.). This is because an indented indicium,
whether an arabic numeral or a combination of pips,4 augments the surface area of a given facet to a greater or lesser extent than another indented indicium. For example, if you were able to break
apart a six-sided die, flatten out its facets, and compare them individually, you would see that the facet with six pips would cover more area than the facet with only one pip. No two facets
have the same number of pips (the die would not randomly generate numbers otherwise), so it follows that no two facets would have the same surface area. According to Hasbro, because the plain meaning
of equal surface area is readily understandable in light of the technical definition above, construction is at an end. Bowling
responds that Hasbros construction contradicts how a person of ordinary skill in the art of game playing would interpret equal surface area, ignores the specification, and, if accepted, would exclude the preferred embodiment of the invention. Without endorsing all of Bowlings characterizations of the 197 patent, the Court agrees that Hasbros construction cannot withstand a fair reading of the specification, and that its
reliance on the extrinsic evidence of dictionary entries is, under the circumstances here, misplaced. The construction of patent claims is a matter of law properly subject to summary disposition. See Markman v. Westview
A pip is a type of indented indicium that resembles a polka 5
Instruments, Inc., 52 F.3d 967, 977-79 (Fed. Cir. 1995).

It is a

bedrock principle of patent law that the claims of a patent define the invention to which the patentee is entitled the right to exclude. Innova/Pure Water, Inc. v. Safari Water Filtration Sys., Inc., 381 F.3d 1111, 1115 (Fed. Cir. 2004). In construing claims,
inquiring courts are to give claim terms their ordinary and customary meaning, which is the meaning the terms would have to a person of ordinary skill in the art in question at the time of the invention. (Fed. Cir. 2005). Phillips v. AWH Corp., 415 F.3d 1303, 1312-13 In some cases, the ordinary meaning of claim

language as understood by a person of skill in the art may be readily apparent even to lay judges, and claim construction in such cases involves little more than the application of the widely accepted meaning of commonly understood words. Id. at 1314. On
such occasions, general purpose dictionaries may assist the court in ascertaining the correct construction of the claims. Id.
Where, as here, the claim terms are not so readily susceptible to interpretation, Phillips outlines what sources the district court may consider and teaches how much weight a particular source deserves. First and foremost, the intrinsic record, which consists of the claims themselves, the specification,5 sometimes referred to
Section 112 of Title 35 of the United States Code defines the patent specification as follows: The specification shall contain a written description of the invention, and of the manner and 6
as the written description, and, where relevant, the prosecution history,6 provides the best guidance as to a claims meaning. at 1313-15. Id.
Among the sources of intrinsic evidence, Phillips
places primary importance on the claims themselves, but recognizes that the claims are part of a fully of a integrated written that

instrument,

consisting

principally

specification
process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. The prosecution history consists of the complete record of the proceedings before the PTO [the Patent and Trademark Office] and includes the prior art cited during the examination of the patent. Phillips at 1317. Although generally not as useful in construing a claim as the specification, the court may consider the prosecution history if it is in evidence. Like the specification, the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be. Id.; see also Chimie v. PPG Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (The purpose of consulting the prosecution history in construing a claim is to exclude any interpretation that was disclaimed during prosecution.) (internal quotations and citation omitted). In this case, neither party uses the prosecution history of the 197 patent to support their respective construction of the disputed claims. Hasbro urges the Court to take judicial notice of the prosecution history (along with other material most of which need not be addressed), but did not formally move it into evidence. This writers review of the material Hasbro submitted, if it constitutes the entirety of the prosecution history, has revealed nothing of significance to the present question. 7

concludes with the claims. at 978).
Id. at 1315 (quoting Markman, 52 F.3d
For this reason, claims must be read in view of the
specification, of which they are a part. Id. (quoting Markman, 52 F.3d at 979). Indeed, the specification is always highly
relevant to the claim construction analysis.

Usually, it is

dispositive; it is the single best guide to the meaning of a disputed term. Id. at 1315 (quoting Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)); see Metabolite Labs., Inc. v. Lab. Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir. 2004) (In most cases, the best source for discerning the proper wherein context the of claim terms is the patent the

patent

applicant

describes

invention.); Multiform Desiccants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed. Cir. 1998) ([t]he best source for understanding a technical term is the specification from which it arose,
informed, as needed, by the prosecution history); Standard Oil. Co. v. Am. Cyanamid Co., 774 F.2d 448, 452 (Fed. Cir. 1985) (The descriptive part of the specification aids in ascertaining the scope and meaning of the claims inasmuch as the words of the claims must be based upon the description. The specification is, thus,
the primary basis for construing the claims.). Additionally, extrinsic evidence, such as dictionaries,
treatises, and expert testimony, may provide guidance in certain circumstances, although such sources should be used with caution.

all its

forms,

extrinsic

evidence

recognized

significant than the intrinsic record in determining the legally operative meaning of disputed claims language. C.R. Bard, Inc.
v. U.S. Surgical Corp., 388 F.3d 858, 862 (Fed. Cir. 2004) (quoting Vanderlande Indus. Nederland BV v. Intl Trade Commn, 366 F.3d 1311, 1318 (Fed. Cir. 2004)). Of particular relevance here, a
dictionary definition cannot trump an inventors definition of claim language in the specification if the two are irreconcilable. See Phillips, 415 F.3d at 1320-24; see also Autogiro Co. of Am. v. United States, 384 F.2d 391, 397 (Ct. Cl. 1967) (Often the invention is novel and words do not exist to describe it. dictionary does not always keep abreast of the inventor. cannot.). Phillips discussed this point at length: The It
The main problem with elevating the dictionary to such prominence is that it focuses the inquiry on the abstract meaning of words rather than on the meaning of claim terms within the context of the patent. Properly viewed, the ordinary meaning of a claim term is its meaning to the ordinary artisan after reading the entire patent. Yet heavy reliance on the dictionary divorced from the intrinsic evidence risks transforming the meaning of the claim term to the artisan into the meaning of the term in the abstract, out of its particular context, which is the specification. The patent system is based on the proposition that claims cover only the invented subject matter. Phillips, 415 F.3d at 1321. Accordingly, a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, Boss Control, Inc. v. Bombardier Inc., 410 F.3d 1372, 1377 (Fed. Cir. 2005), and, if he does, his lexicography

superficial read of the written description would seem to indicate that a die with flat facets is the preferred embodiment of the invention. However, the patent illustrations show that such a The illustrations of unmistakably display
construction could not have been intended. Bowlings six-sided die, provided below,
facets with indented arabic numerals.
See, e.g., Permutit Co. v.
Graver Corp., 284 U.S. 52, 60 (1931) (recognizing that drawings may be referred to for illustration and may be used as an aid in interpreting the specification or claim); Playtex Prods., Inc. v. Proctor & Gamble Co., 400 F.3d 901, 909 (Fed. Cir. 2005) (examining patent illustrations to support the construction of a claim term);
Autogiro, 384 F.2d at 397 (In those instances where a visual representation can flesh out words, drawings may be used in the same manner and with the same limitations as the specification.); cf. Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1565-67 (Fed. Cir. 1991) (noting that of an drawings alone may provide a written strict

description

invention).
construction, the claims would exclude the very die depicted below (not to mention the dice that Bowling has manufactured and

marketed). reach.

This is an absurd result that this writer refuses to
Cf. Chimie, 402 F.3d at 1377 (refusing to read the claim
dust-free and non-dusting in its hyper-literal sense, i.e., that the invention creates absolutely no dust, and instead construing the term to mean a very low level of dust because the former would not read on the preferred embodiment and there was no highly persuasive evidentiary support to suggest otherwise).
Even if perfectly flat facets were the preferred embodiment, this would not be the only embodiment that the 197 patent

protects.

Use of the word preferably would be superfluous were
a die with facets of perfectly equal surface area the only (and not just the best) example of the invention. The very purpose of the
specification is to teach and enable those of skill in the art to make and use the invention and to provide a best mode for doing so. Phillips, 415 F.3d at 1323. One of the best ways to teach
a person of ordinary skill in the art how to make and use the invention is to provide an example of how to practice the invention in a particular case. specific to aid Id. Often, these examples will be very Confining the claims to those

Expert testimony is valuable for providing background on the technology at issue, explaining how an invention works, or describing a distinctive use of a term in a particular field. However, like dictionaries, expert testimony is less reliable than intrinsic evidence for the interpretation of claims. Phillips opined, for example, that expert testimony is generated at the time of and for the purpose of litigation and thus can suffer from 15
who boasts the worlds largest collection of dice, testified that the dice in the 197 patent are for role-playing games, like Dungeons & Dragons.8 These types of games do not require dice with As long as the die remains a fair
the precision of gambling dice.
playing die, as specified in the written description, negligible variances in surface area are acceptable. Thus, according to Cook
(and Bowling, who testified as well), the 197 patent covers both precision dice (dice with perfectly equal surface area that would be acceptable for table games) and loose dice (dice with
negligible variances in surface area commonly used in role-playing games). Hasbro, of course, objects to the notion that the 197 patent covers anything Hasbro other than precision the dice. To of support this of

argument,

relies

center

symmetry, which the specification defines as follows: By center of symmetry, it is meant a point that is related to a geographical figure in such a way that for any point on the figure, there is another point on the figure such that a straight line joining the two points is bisected by the original point. Each of the surface area of discrete facets of extension member 28 are equal. The combination of the center of symmetry being the center and the equal surface areas of facets 32 provides
bias that is not present in intrinsic evidence. Phillips, 415 F.3d at 1318. The Court refers to expert testimony here simply to counter Hasbros claim that the extrinsic evidence in this case supports its proposed construction. Cook testified via video deposition, which was admitted into evidence. 16
for a fair playing die. That is, no one facet 32 is more likely to be rolled than any other of the facets 32. For reasons that are not so easily explained, indented indicia distort a dies center of symmetry. However, this argument suffers from the same flaws as Hasbros earlier argument. At best, precise center of symmetry is, like perfectly equal surface area, just the preferred (and not the only) embodiment of the invention.
Additionally, the paragraph immediately preceding the discussion of center of symmetry reinforces Cooks commentary about role playing: The inventor has discovered that the configuration of the die 20 is advantageous. In particular, the shape of the end caps 24, 26 provides for more bounce when dropping die 20 onto a surface. That is, to generate a random number, the user hold die 20 above a surface at a sufficient distance, such that when die 20 is dropped onto the surface, die 20 rolls before eventually resting upon one of the facets 32 of the extension member 28. The shapes of the end caps 24, 26 provide for more bounce and randomness when die 20 is dropped onto a surface. The tapered, triangular shapes of end caps 24, 26 provide for surfaces which can abut and engage the surface on which die 20 is being dropped, to create a more interesting and amusing outcome. In the final analysis, the intrinsic evidence, on the whole, rejects Hasbros rigid construction of equal surface area. The

frustrate the perjury of would-be inventors having no legitimate claim to the conception of the invention). [T]he case law is unequivocal that an [alleged] inventors testimony respecting the facts surrounding a claim of derivation of priority of invention cannot, standing alone, rise to the level of clear and convincing proof. Price, 988 F.2d at 1194; Hess v. Advanced Cardiovascular Corroborating
Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997).

evidence record[]

reliable with

of the

contemporaneously

inventive

process, Linear, 379 F.3d at 1327, such as an alleged inventors drawing or schematic. Less reliable forms include oral testimony
from disinterested witnesses, see Sandt Tech., Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1351 (Fed. Cir. 2001) ([P]ostinvention oral testimony is more suspect, as there is more of a risk that the witness may have a litigation-inspired motive to corroborate the inventors testimony, and that the testimony may be inaccurate.), corroborative determination story. although if, of viewed the any as pertinent a whole, of the evidence it qualifies a as

permits

credibility

[alleged]

inventors
Linear, 379 F.3d at 1327 (quoting Price, 988 F.2d at 1195
(describing the approach as a rule of reason)). In the present case, Hasbro provides no convincing evidence to corroborate Lizarragas testimony that he, not Bowling, realized that the dies facets must be of equal shape and surface area, as the 197 patent claims. Hasbro points to several drawings
(reprinted supra Part II.A) that Bowling submitted to the patent office in his application.10 Bowling does not dispute that
Lizarraga prepared these drawings; instead, he readily concedes
These are the only drawings that Hasbro identifies to corroborate Lizarragas testimony, (Dkt. Entry No. 89, Def.s Supplemental Mem. of Law in Supp. of Mot. to Correct Inventorship 3), although it appears from the record that Lizarraga prepared other drawings as well. 21
that Lizarraga accurately portrayed the invention as Bowling had conceived and described at their initial meeting. It has long been settled that [a]n inventor may use the services, ideas, and aid of others in the process of perfecting his invention without losing his right to a patent. Shatterproof Glass Corp. v. Libby-Owens
Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985) (quoting Hobbs v. U.S. Atomic Energy Commn, 451 F.2d 849, 864 (5th Cir. 1971)); see also Ethicon, Inc. v. U.S. Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998) (One who simply provides the inventor with well-known principles or explains the state of the art without ever having a firm and definite idea of the claimed combination as a whole does not qualify as a joint inventor.) (citing Hess, 106 F.3d at 981); Sewall v. Walters, 21 F.3d 411, 416 (Fed. Cir. 1994) (holding that an alleged inventor that simply reduces an inventors idea to practice is not necessarily a joint inventor); OReilly v. Morse, 56 U.S. (15 How.) 62, 111 (1853) (articulating that the inventive process requires the assimilation of knowledge from others that does not necessarily rise to the level of contribution). Without

compliance by a preponderance of the evidence.

Nike, Inc. v. Wal-

Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998). The relevant inquiry here is whether Bowling complied with the constructive notice provisions of 287(a) between August 8, 1999 (when the 197 patent issued) and November 3, 1999 (when Bowling undisputedly gave Hasbro actual notice of infringement).11 Assuming that Bowling proves infringement, he can recover damages existing before November 3, 1999 only if he proves compliance with the marking statute; if he does not, Bowling can recover only those damages existing afterwards. Offering a series of arguments,
Hasbro asserts, as a threshold matter, that Bowling has not pled and therefore cannot prove compliance; that Bowling cannot prove compliance as a matter of law because he did not mark each patented die with the statutory label; and, even if the dice could not be marked as such, that Bowling has failed to comply with the marking statutes alternative marking scheme. Responding in kind, Bowling
maintains that his Complaint sufficiently alerted Hasbro to the
In an initial memorandum, Hasbro cites several instances after November 3, 1999, that it claims evidence Bowlings failure to consistently mark substantially all of his patented products. However, for the period following actual notice, Bowlings compliance with the constructive notice provisions of 287(a) is irrelevant in this case (that is, with respect to Hasbro). See 35 U.S.C. 287(a) (except on proof that the infringer was notified of the infringement and continued to infringe thereafter); see also Am. Med. Sys., 6 F.3d at 1537 (discussing a patentees compliance with the constructive notice provisions of 287(a) up until the filing of the lawsuit, which constituted actual notice under the statute). To the extent that Hasbro still relies on this evidence for this purpose, that reliance is in error. 26
marking issue. As for Hasbros substantive plaints, Bowling argues that marking individual dice as described in 287(a)s primary marking scheme would be prohibitively expensive, if not impossible, and he rejects Hasbros assertion that he has not otherwise
complied with the marking statute.

In either event, Bowling

observes, genuine issues of material fact on this question preclude summary judgment. Hasbros threshold argument essentially is that Bowlings failure to plead compliance with 287(a) constitutes a waiver. See Maxwell v. J. Baker, Inc., 86 F.3d 1098, 1111 (Fed. Cir. 1996) (noting that the patentee had the burden of pleading and proving at trial that she complied with [ 287(a)]); see also Dunlap v. Schofield, 152 U.S. 244, 248 (1894) (noting that the patentee has the duty of alleging and the burden of proving compliance with the marking statute). Although This Bowling argument, did not however, is squarely allege

foreclosed.

affirmatively
compliance with 287(a) in his Complaint, he did allege that Hasbro knew of the 197 patent at least as early as September 1999 (when Hasbro referenced the 197 patent in a letter to Bowling) a factual predicate for willful infringement. Imonex Servs., Inc.
v. W.H. Munzprufer Dietmar Trenner GmbH, 408 F.3d 1374, 1377 (Fed. Cir. 2005); see also Nike, 138 F.3d at 1446 (comparing willful infringement with constructive notice). Presented with this
precise issue, the Federal Circuit has held that pleading the
knowledge element of willful infringement serves to notify the accused infringer that the patentee will pursue damages under the constructive notice provisions of the marking statute. Sentry, 400 F.3d at 918. This conclusion comports with the liberal pleading
requirements of the Federal Rules of Civil Procedure, which require only a short and plain statement of the claim showing that the pleader is entitled to relief, Fed. R. Civ. P. 8(a)(2), and direct district courts to construe pleadings so as to do substantial justice. Fed. R. Civ. P. 8(f). See Dopp v. HTP, Corp., 947 F.2d
506, 513 (1st Cir. 1991) (Pleadings are liberally to be construed, and for the purpose of determining what relief a claimant has sought, complaints ought not to be read grudgingly or with a hypertechnical eye.); Torres Ramirez v. Bermudez Garcia, 898 F.2d 224, 226-27 (1st Cir. 1990) (It is not fatal to a complaint that a legal theory has been mischaracterized or that the precise language invoking jurisdiction has not been used.); Conn. Gen. Life Ins. Co. v. Universal Ins. Co., 838 F.2d 612, 622 (1st Cir. 1988) (holding that the failure to plead a particular legal theory, when the plaintiff pled two related legal theories, was not a bar to recovery); Janke Constr. Co. v. Vulcan Materials Co., 527 F.2d 772, 776 (7th Cir. 1976) (holding that the plaintiffs misconceived legal theory did not preclude it from obtaining relief under another theory).
Moreover, Hasbro has not claimed that it has been unfairly prejudiced by Bowlings oversight such that might warrant a
departure from these principles. Compare Civix-DDI, LLC, v. Cellco Pship, 387 F. Supp. 2d 869, 901 n.38 (N.D. Ill. 2005) (following the rule in Sentry in the absence of unfair prejudice to the accused infringer), with Tech. Licensing Corp. v. Thomson, Inc., No. Civ. S-031329, 2005 WL 1562225, at *2-*3 (E.D. Cal. June 30, 2005) (granting summary judgment on patentees failure to plead compliance with 287(a) because the accused infringer had not conducted discovery on the marking issue in reliance on the

patentees failure to so plead).
In fact, Hasbros extensive
discovery on this issue (and the present motion itself), suggests that Hasbro was fully aware of the marking issue from an early stage in the litigation. Under these circumstances, granting
Hasbros motion based on a hypertechnical reading of the Complaint would be excessive and unsound. Turning to Hasbros second argument, it is unclear whether Bowlings dice would fall under 287(a)s primary marking scheme. The purpose behind the marking statute is to provide notice to the public concerning the status of the intellectual property embodied in an article of manufacturing or design. Bonito Boats, Inc. v.
Thunder Craft Boats, Inc., 489 U.S. 141, 162 (1989); Nike, 138 F.3d at 1446 (to provide notice in rem); see also Wine Railway Appliance Co. v. Enter. Railway Equip. Co., 297 U.S. 387, 397
(1936) (observing that the notice requirement is designed for the information of the public); Rutherford v. Trim-Tex, Inc., 803 F. Supp. 158, 161 (N.D. Ill. 1992) (discussing the Supreme Courts long-standing focus on the notice effected by the method of marking the patented article rather than on the precise mechanistic compliance with the statute). For this reason, the marking
statute generally is construed to allow some discretion in the patentee to alternatively mark its product (by marking the
products packaging, for example), particularly when the product in question is small. See Sessions v. Romadka, 145 U.S. 29, 50 (1892)
(It is not altogether clear that the stamp could not have been made upon the smaller sizes [of truck catches], but, in a doubtful case, something must be left to the judgment of the patentee, who. affix[ed] a label to the packages in which the fasteners were shipped and sold.); Gillette Safety Razor Co. v. Standard Safety Razor Corp., 2 F. Supp. 64, 69 (D. Conn. 1932) (marking the packages containing the razor was sufficient), revd on other grounds, 64 F.2d 6 (2d Cir. 1933); see also Wayne-Gossard Corp. v. Sondra Co., 434 F. Supp. 1340, 1364 (E.D. Pa. 1977) (recognizing other important factors, such as defacement, trade custom, and expense). This is true regardless of whether it is physically See,

possible to place the patent number on the article itself.
e.g., Chicago Pneumatic Tool Co. v. Hughes Tool Co., 192 F.2d 620, 626 (10th Cir. 1951) (involving cone drills and cone cutters used
in drilling deep wells for oil and gas); Saf-gard Prod., Inc. Serv. Parts, Inc., 491 F. Supp. 996, 1010 (D. Ariz. 1980) (involving automotive radiator caps); Bergstrom v. Sears, Roebuck & Co., 496 F. Supp. 476, 494 n.9 (D. Minn. 1980) (involving a tubular steel fireplace grate). Hasbro argues that strict compliance is nevertheless required when the product has markings or printing on it already (other than the appropriate patent marking). However, the authority Hasbro
relies upon for this proposition is plainly distinguishable from the present case. Creative Pioneer Prods. Corp. v. K Mart Corp.,
5 U.S.P.Q. 2d 1841, 1847-48, 1987 WL 54482 (S.D. Tex. 1987) involved a wire-cutting tool, exponentially larger than the die at issue here, that could have been marked relatively easily. In John L. Rie, Inc. v. Shell Bros., Inc., 366 F. Supp. 84, 90-91 (E.D. Pa. 1973), the patented bag closure devise contained the inscription JOHN L. RIE, INC. YONKERS, N.Y., seriously undercutting the patentees argument that the devise was too small to mark. Here,
Bowlings dice, which are approximately 1 1/8 inch long and 3/8 inch in diameter, contain only a single arabic numeral on each facet. Viewing the evidence in the light most favorable to Bowling, and in the absence of any authority directly on point, this writer is not satisfied that this question is appropriate for summary judgment. Several important factors are either disputed or have

yet to be ascertained.

These factors include, but are not limited
to, the relative size of the dice, the processes required to affix the statutory label upon the dice, the costs associated with these processes, the appearance of the dice with the statutory label, and industry practices. suited for a jury. So too is Hasbros third and alternate argument that Bowling has failed to comply with 287(a)s alternative marking scheme. Hasbro contends that Bowling did not adequately monitor the The balancing of these factors is a job best
retailers that sold his dice, and that, as a result, the packaging of the dice was not consistently and continuously marked. See
Amsted Indus., Inc. v. Buckeye Steel Castings Co., 24 F.3d 178, 185 (Fed. Cir. 1994) (holding that a patentees express and implied licensees must comply with 287(a) for the patentee to avail itself of the statutes constructive notice provisions). However,

when compliance turns on a third partys actions or inactions, a statistical survey of how many articles went unmarked, such as that provided by Hasbro in support of the motion under review, is not conclusive of the issue whether the patentees marking was
substantially consistent and continuous. 1111.

Maxwell, 86 F.3d at

Rather, the proper question is whether the patentee made efforts to ensure compliance with the marking

reasonable

requirements.
Id. at 1112 (explaining the difficultly associated
with ensuring that licensees comply with the marking statute, and
announcing a rule of reason approach to determine substantial compliance). This question remains in dispute.
III. Conclusion For all the foregoing reasons, the disputed claims shall be construed in the manner described supra Part II.A, Bowlings Motion for Summary Judgment on the issue of inventorship is GRANTED, and Hasbros Motion for Partial Summary Judgment on the issue of marking is DENIED. It is so ordered. ____________________________ William E. Smith United States District Judge Date:

This, Hasbro maintains, is tantamount to
knowing misrepresentation.
the Expert Fees of Neil Lapidus. Docket # 214 - Michael Bowlings Motion for Attorneys Fees under 35 U.S.C. 285, 28 U.S.C. 1927 and the Courts Inherent Equitable Powers. Docket # 215 - Defendant Hasbro Inc.s Motion for Payment of the Expert Fees of Barry Sussman. Docket # 241 - Objection and Notice of Appeal of Magistrate Judge Almonds June 2, 2008 Order Denying Leave to File a Motion to Compel. 3
Patent applicants must prosecute their patent applications in the PTO with candor, good faith, and honesty. Textron, Inc., 48 F.3d 1172, 1178 (Fed. Cir. 1995). duty constitutes inequitable conduct. Id. Molins PLC v. Breach of this

In order for a patent

to be considered unenforceable, there must be clear and convincing evidence that the applicant (1) made an affirmative
misrepresentation of material fact, failed to disclose material information, or submitted false material information, and (2) intended to deceive the PTO. Cargill Inc. v. Canbra Foods, Ltd., Both essential elements -
476 F.3d 1359, 1363 (Fed. Cir. 2007).
materiality and intent - must be proven by clear and convincing evidence. M. Eagles Tool Warehouse, Inc. v. Fisher Tooling Co., If both are proven, [t]he
439 F.3d 1335, 1340 (Fed. Cir. 2006).
court must then determine whether the questioned conduct amounts to inequitable conduct by balancing the levels of materiality and intent, with a greater showing of one factor allowing a lesser showing of the other. Digital Control Inc. v. Charles Mach.
Works, 437 F.3d 1309, 1313 (Fed. Cir. 2006) (citations omitted). PTO Rule 56, see 37 C.F.R. 1.56(b), provides: [I]nformation is material to patentability when it is not cumulative to information already of record or being made of record in the application, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim, or 4
(2) It refutes, or is inconsistent with, a position the applicant takes in: (i) Opposing an argument of unpatentability relied on by the Office, or (ii) Asserting an argument of patentability. A prima facie case of unpatentability is established when the information compels a conclusion that a claim is unpatentable under the preponderance of evidence, burdenof-proof standard, giving each term in the claim its broadest reasonable construction consistent with the specification, and before any consideration is given to evidence which may be submitted in an attempt to establish a contrary conclusion of patentability. See also Cargill, 476 F.3d at 1364. Additionally, under the so-

a misrepresentation or intended to deceive, and thus Hasbros claim of inequitable conduct fails. II. Hasbros Renewed Motion for Judgment as a Matter of Law or, in the Alternative, for a New Trial, or in the Alternative, for Remittitur. Hasbro contends that Bowling failed to offer cognizable
evidence of damages and that as a result, judgment as a matter of law in Hasbros favor is warranted. Alternately, Hasbro maintains
that if damages are warranted, they should be nominal, calculated either by virtue of a new trial or remittitur. A motion for
judgment as a matter of law only may be granted when, after examining the evidence of record and drawing all reasonable
inferences in favor of the nonmoving party, the record reveals no sufficient evidentiary basis for the verdict. Zimmerman v. Direct Fed. Credit Union, 262 F.3d 70, 75 (1st Cir. 2001); Chrabaszcz v. Johnston Sch. Comm., 474 F. Supp. 2d 298, 311 (D.R.I. 2007). The
Court must view the facts in the light most favorable to the plaintiff, drawing all reasonable inferences in his favor. Lama v. Borras, 16 F.3d 473, 475 (1st Cir. 1994). Further, the Courts
role is not to evaluate the credibility of the witnesses or the weight of the evidence. Chrabaszcz, 474 F. Supp. 2d at 311.
Thus, the jury verdict must stand unless the evidence, taken in the light most favorable to the prevailing party, points unerringly to an opposite conclusion. Zimmerman, 262 F.3d at 75. 7
Bowling Satisfied the Marking Requirements
First, Hasbro maintains that Bowling failed to sustain his burden of proving that he marked his patented dice, and that as a result, Hasbro can be held liable for damages only beginning on November 10, 1999, the date upon which it received actual notice of infringement. In order to recover damages, a patentee must prove
by a preponderance of the evidence that he has complied with the relevant marking statute. Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437, 1446 (Fed. Cir. 1998). Sufficient marking is
established either by fixing thereon the word patent or the abbreviation pat., together with the number of the patent, or when, from the character of the article, this can not be done, by fixing to it, or to the package wherein one or more of them is contained, a label containing a like notice. 35 U.S.C. 287(a).
A patentee must also show that once marking was begun, the marking was substantially consistent and continuous. Cybiotronics, Ltd.
v. Golden Source Elecs. Ltd., 130 F. Supp. 2d 1152, 1160 (C.D. Cal. 2001). Without satisfaction of the marking requirement, unless
actual notice of infringement is provided, damages are unavailable. 35 U.S.C. 287(a). Based on a preponderance of the evidence standard, the jury found that Bowling had continuously marked substantially all of his dice, or if not practical, the packaging of the dice, with his 8

patent number from August 17, 1999, through November 10, 1999. Without evaluating the credibility of the witnesses or weighing the evidence, and drawing all reasonable inferences in Bowlings favor, the evidence presented at trial sufficiently supported the verdict to preclude this Court from granting Hasbros motion. For example, Bowling testified that prior to the issuance of the 197 patent he supplied his existing customers, both distributors and retailers, with stickers indicating that the dice were patent pending. He
also testified and provided copies of letters indicating that just before issuance, he provided those same customers with patent number stickers and instructed them to place the stickers on the bins out of which the dice were sold. Bowling also testified that
after August 15, 1999, for all orders shipped, he included patent number stickers and instructions requiring that they be affixed to the containers out of which the dice were to be sold, that he personally affixed stickers to all tubs or bins he shipped to customers, and that he placed such stickers inside of all bags of loose dice. Bowling also testified that throughout the relevant
period, he kept in regular contact with his customers about their marking obligations, and that he had no reason to believe they were not following his instructions. Bowlings assertions were
confirmed, at least in part, by the testimony of at least one game
shop employee that display bins in his shop were affixed with Bowlings patent stickers. Hasbro maintains, essentially, that absent additional evidence to corroborate Bowlings testimonial assertions about marking, the jury could not have found that Hasbro Bowling asserts met the marking was

requirements.

Particularly,
insufficient evidence to establish that Bowling continuously marked substantially all of his patented dice, see Am. Med. Sys. Inc. v. Med. Engg Corp., 6 F.3d 1523, 1537 (Fed. Cir. 1993), the date when he began marking, id., and that he took reasonable steps to ensure that his customers complied with his marking instructions.

Bowlings proposed damages expert Neil Lapidus was granted, courts look to the so-called Georgia-Pacific5 factors as guidance when asked to calculate a reasonable royalty because actual damages cannot be established. Id. at *2; Georgia-Pacific Corp. v. U.S.
Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), affd, 446 F.2d 295 (2d Cir. 1971), cert denied, 404 U.S. 870 (1971). instructed in the factors set forth in The jury was for

Georgia-Pacific

determination of reasonable royalty, and applying this standard awarded Bowling $446,182.40 as damages for Hasbros infringing sales on and after August 17, 1999. whether verdict. there was evidence adduced So, the question is simply at trial to support this
The Georgia-Pacific factors are, in brief: (1) royalties that a patentee receives for the patent in suit; (2) rates licensee pays for use of other comparable patents; (3) nature and scope of the license; (4) the licensors established policy regarding licensing of its technology; (5) commercial relationship between the parties; (6) effect on and extent of derivative or convoyed sales; (7) duration and term of license; (8) established profitability of the product made under the patent, its commercial success, and popularity; (9) utility and advantages of the patented article over old modes; (10) nature of patented invention; character of commercial embodiment of the patent as owned or produced by the licensor; (11) extent to which infringer has made use of invention; (12) portion of profit or selling price customarily allowed; (13) portion of realizable profit attributable to invention; (14) the opinion testimony of qualified experts; (15) the amount a willing licensor and licensee would agree upon at the time of infringement, had both been reasonably and voluntarily trying to reach agreement, including the amount of profit the licensee would be willing to contribute to the license. Bose Corp. v. JBL, Inc., 112 F. Supp. 2d 138, 165-67 (D. Mass. 2000). 12
Renewed Motion for Judgment as a Matter of Law
Hasbro maintains first that because Bowling failed to put forth evidence should sufficient have been to establish in a reasonable royalty, See

judgment

Because the record contains a legally sufficient
evidentiary basis for a jury to calculate a reasonable royalty, Hasbros motion for JMOL is denied. 2. Motion for a New Trial or, in the Alternative, For Remittitur
Hasbro contends that the Court should order a new trial or remittitur because the jurys damages award is overly excessive and against the weight of the evidence. When a party files a motion
for a new trial on the amount of damages awarded by a jury, the trial court determines whether the jurys verdict is against the clear or great weight of the evidence. Unisplay, 69 F.3d at 517
(quoting Standard Havens Prods. v. Gencor Indus., 953 F.2d 1360, 1367 (Fed. Cir. 1991)). While the district court has wide
discretion in determining whether to grant a new trial under this standard, id., the jurys verdict is entitled to deference and must be upheld unless the amount is grossly excessive or
monstrous, clearly not supported by the evidence, or based only on speculation or guesswork. 1383 (Fed. Cir. 2004). Monsanto Co. v. Ralph, 382 F.3d 1374, As for remittitur, should the court
determine that the jurys damage award cannot stand, the patent holder may avoid a new trial by agreeing to a remittitur of the excessive portion of the damage award, whereby the determination shall be based on the highest amount of damages that the jury could properly have awarded based on the relevant evidence. Unisplay, 69 F.3d at 519. The jury returned a damages verdict in the amount of
$446,182.40, or approximately $0.40 per die, which corresponds to a royalty of 4% of net sales for the Monopoly Millennium and Avon Special editions. Throughout the proceedings and in its motion for a new trial, Hasbro has maintained that a reasonable royalty in this case cannot exceed $7,068.59, or, approximately $0.010 per game for the Avon Special edition and $0.014 per game for the Monopoly Millennium edition (each edition contains two dice). In
Hasbros view, the jury award here represents something more akin to lost profits, something Bowling neither sought nor adduced evidence in support of.6 Hasbros contention alone, however, does TWM Mfg., Inc. v. Dura
not render the jury verdict excessive.
Corp., 789 F.2d 895, 899 (Fed. Cir. 1986) ([A]n infringer cannot
To recover lost profits as actual damages, a patent holder must demonstrate that there was a reasonable probability that, but for the infringement, it would have made the infringers sales. Minn. Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1577 (Fed. Cir. 1992); Panduit Corp. v. Stalin Bros. Fibre Works, Inc., 575 F.2d 1152, 1156 (6th Cir. 1978). 16

successfully argue that the district court abused its discretion in awarding a high royalty by simply substituting its own
recomputation to arrive at a lower figure.). The hypothetical willing licensee/licensor approach to
calculating a reasonable royalty is a device in the aid of justice, and must be applied flexibly. TWM Mfg., 789 F.2d at 900.
Foremost, it is the courts duty to ensure that the amount conferred provides adequate compensation to the patentee for the infringement proven. Cornell Research Found., Inc. v. HewlettAt the
Packard, 2007 WL 4349135 at *59 (N.D.N.Y. Jan. 31, 2007).
same time, however, despite the element of approximation and uncertainty inherent in the reasonable royalty rubric, the damage award must have a reliable foundation in fact, and simply must be within the range encompassed by the record as a whole. 69 F.3d at 517, 519. In this case, the record contains ample evidence as to the parties relative bargaining positions in the hypothetical Unisplay,

negotiation.

First, through Bowlings own testimony, the jury
learned that Bowling had never licensed his 197 patent, and had no established royalty rate, an issue that Hirtle confirmed would favor Bowling in a negotiation, and furthermore that Bowlings plan was to sell dice directly to customers, not via a licensor/licensee relationship. The jury also learned through Hirtle that Hasbro 17
would have wanted the 197 patent to be licensed for Hasbros exclusive use, that Hasbro likely would have agreed to pay a higher royalty in exchange for that exclusivity, and that, generally speaking, Hasbro would have been willing to pay a higher royalty rate for a component which was considered exciting, innovative, or expected to generate buzz. Although Hirtle maintained that the
197 die was not a significant new feature of the Millennium versions of Monopoly, and thus not a buzz generator, the jury viewed an advertisement for the games in which the dice were featured prominently, viewed Millennium game packaging which touted the futuristic dice included within, and heard, via videotaped deposition of Dorothy Echlin, that Hasbro believed that futuristic dice would contribute to the popularity and sales of the Millennium versions of its Monopoly game. As to the role that the 197 dice played in his existing business, Bowling testified that through his direct sale of the 197 dice he was able to increase sales of his other, non-patented items. Bowling further testified that he sold his dice directly to customers for prices ranging from $0.645 to $0.49 per die, never less, that he made, on average, a profit of $0.50 per die, and that the demand for his crystal shaped die was very high. At the same

time, however, Bowling acknowledged that his dice business had suffered overall losses during the period just proceeding the time 18
of the hypothetical negotiation - the date when the patent was issued. See Harris Corp. v. Ericsson, Inc., 417 F.3d 1241, 1257
(Fed. Cir. 2005) (for purposes of calculating a reasonable royalty, the hypothetical negotiation is considered to have taken place on the date of first infringement). Taking this all into
consideration, Bowling asserts that he either would have sold his dice directly to Hasbro for $.645 per die, or that he would have licensed the design to Hasbro for $0.58 per die, factoring in Hasbros manufacturing costs. As to Hasbros position at the time of the hypothetical negotiation, through Hirtle the jury learned that the subject dice accounted for very little of the selling price of the game. Hirtle
testified that the dice accounted for 2.4% of the price of the Avon Special edition and only The 1.1% of the price of of the Monopoly were,

Millennium

edition.

retail

prices
respectively, $9.50 and $28.50.
No evidence was introduced as to
what rates Hasbro pays or has paid to license patented component parts for other Monopoly editions or any of its other toys or games, and Hirtle in fact testified that he was unfamiliar with any similar situation.7 The jury was informed, however, that the
Since trial, it has come to the Courts attention that Hasbro has not only licensed a component part for one of its games, but that it has licensed a unique die for an edition of its Monopoly game with the royalty based on the selling price of the 19
royalty paid by Hasbro to the family of the man credited with having invented the Monopoly concept, is a sum equal to 3% of net profits of the sale of all Monopoly products. The jury also
learned that Hasbro and Bowling were not competitors with each other - rather, Bowling sold to a particular market of dice and gaming enthusiasts and collectors, whereas Hasbro marketed its Millennium edition games to the public at large. Hirtle admitted
that the hypothetical negotiation would have taken place during Hasbros highest selling season, and that at the time, the
infringing dice were already in games on store shelves and were featured prominently in advertisements, something that would have prompted Hasbro to offer a higher royalty rate, even if only temporarily. The jury also learned from Hirtle that although the
Millennium editions were limited edition runs, if Hasbro had licensed Bowlings dice, it likely would have considered using the dice in other special editions of well known games. This evidence covers many of the Georgia-Pacific factors and tends overall to favor Bowlings position. More important,

however, was the trial testimony of Hirtle on the issue of industry standards and how they might apply to this case. Hirtle testified
game. The license and its details are unknown to the Court and not a part of the record. However, it is perplexing why this information was not disclosed during discovery or at trial. 20
to the significance of two authoritative reference guides,8 both of which were introduced into evidence, and both of which state that the standard royalty rate in the toy industry is 5% of net sales. Hirtle also testified that, generally speaking, a lower 3% standard royalty rate would be applied where the toy or game at issue had other obligations, such as another inventor or third party license. Applying the standard formula for calculating royalties,9 Hirtle demonstrated for the jury that in this case a 5% royalty rate would equal a total sum of $554,499, whereas a 3% rate would equal a total sum of $331,189. equal to a 4% rate. Ultimately, the jury awarded $446,182,
While Hirtle testified to these standard industry rates, and calculated for the jury how those rates would apply to this case, he adamantly denied the applicability of the formula and the rates to Hasbros use of Bowlings patented dice. that in cases involving component parts, Instead, he testified a royalty would be
calculated using a cost-added approach wherein the key factor is not the industry standard rate, but is the amount of value that the
Hirtle testified to the significance of both Inside Santas Workshop, and The Toy and Inventors Handbook, both of which were made exhibits and both of which the jury was allowed to examine during deliberations. The industry standard method consisted of the following equation: (Pairs of Dice) x (Wholesale Price of the Game) x (.9) x (Royalty Rate) = Royalty. 21
component contributed to the cost of the game.

Thus, per Hirtles

formula, a reasonable royalty would be the cost of the component part divided by the cost of the game, multiplied by the net selling price of the game, and then multiplied by a royalty rate of 5%. For the Avon Special and Monopoly Millennium editions,
respectively, with costs of 2.4% and 1.1%, the royalty per game would be $0.010 and $0.014, or roughly half a cent per die. Although he could not cite a single occasion when Hasbro had used this formula, and admitted that his formula was not a printed industry standard, Hirtle maintained that the approach would be taken by pretty much anybody in the inventor relations business. The jury then was faced with a substantial gap between the royalty amount considered reasonable by Hasbro on one hand and sought by Bowling on the other. Obviously, approach and the jury found the and

unconvincing industry

Hirtles

cost-added

determination on the part of the jury that in a hypothetical negotiation, a royalty rate calculated using standard industry rates was justified, and that a royalty calculated through the cost-added approach would neither meet the minimal standard set forth in Section 284, nor adequately compensate Bowling for
Hasbros unauthorized use of his patented dice. The record is replete with facts favoring Bowling in a
hypothetical negotiation, and the evidence certainly supports a reasonable royalty significantly higher than the nominal award suggested by Hasbro. While one could reasonably question whether
a royalty rate higher than that paid by Hasbro for the Monopoly concept itself is reasonable, there is no basis for the Court to conclude that the verdict fails to contemplate what Hasbro, acting as a willing and prudent licensee would have agreed to. Jenn-Air Corp. v. Penn Ventilator Co., 394 F. Supp. 665, 676 (E.D. Pa. 1975); see also Reynolds Spring Co. v. L.A. Young Indus., 101 F.2d 24
257, 261 (6th Cir. 1939).
This Court might agree that the verdict
seems high, particularly when compared to the three percent concept royalty. However, where there is evidence from which the jury
could derive its conclusion, a grant of remittitur would amount to nothing less than the Court substituting its judgment as if a juror - something that is just not permitted. Therefore, Hasbros motion for a new trial, or alternatively remittitur, must be and is denied. III. Other Pending Post-Trial Claims A. Interest
Prejudgment interest shall be awarded at a rate of 12% per annum not compounded on the $446,182.40 award. See R.I. Gen. Laws. 9-21-10(a). Prejudgment interest is ordinarily awarded in patent infringement cases. 648, 654 (1983). Gen. Motors Corp. v. Devex Corp., 461 U.S.
As 35 U.S.C. 284 does not specify a rate to be
used for prejudgment interest, courts often use the statutory interest rate of the state in which they sit. Brooktree Corp. v.

Advanced Micro Devices, Inc., 757 F. Supp. 1101, 1103 (S.D. Cal. 1990). In Rhode Island, this rate is 12% per annum. R.I. Gen.
Laws. 9-21-10(a). Prejudgment interest will run from the date of infringement to the date of judgment, as is typical for patent infringement cases. Nickson Indus., Inc. v. Rol Mfg. Co., 847 F.2d 795, 800 (Fed. Cir. 1988). 25
Postjudgment interest shall be awarded at 1.35%, compounded annually. See U.S.C. 1961(a)-(b). This award reflects the rate
equal to the weekly average 1-year constant maturity Treasury yield, as published by the Board of Governors of the Federal Reserve System for the calendar week preceding the date of the judgment. 28 U.S.C. 1961(a). The judgment was signed, filed, and entered on March 24, 2008. The average 1-year constant maturity
Treasury yield was 1.35% for the calendar week ending March 21, 2008. Federal Reserve Board, Selected Interest Rates, available at http://www.federalreserve.gov/releases/h15/20080324/. The parties shall submit an Order consistent with this opinion for the amount of judgment including the calculation of pre- and post-judgment interest. B. Attorneys Fees
Bowling moves under 35 U.S.C. 285, 28 U.S.C. 1927 and via the Court's inherent equitable powers for attorneys fees and sanctions against Hasbro for litigation misconduct. The Patent Act provides that "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." U.S.C. 285. 35
"Such an award, while unusual, is within the sound Colortronic
discretion of the trial judge in patent cases."
Reinhard & Co., K.G. v. Plastic Controls, Inc., 668 F.2d 1, 8 (1st Cir. 1981). Litigation misconduct is a condition sufficient to 26
make a case "exceptional" under 285, however, when either "bad faith [or] willful infringement. is present the requirement is more readily met." Sensonics, Inc. v. Aerosonic Corp., 81 F.3d See also Beckman
1566, 1574 (Fed. Cir. 1996) (emphasis added).
Instruments, Inc. v. LKB Produkter AB, 892 F.2d 1547, 1552 (Fed. Cir. 1989) ("[W]e are aware of few cases in which a patent owner has been granted attorney fees solely on the basis of litigation misconduct, without a concurrent finding of willful

infringement.").

A determination of litigation misconduct under
285 must be supported by clear and convincing evidence. Beckman, 892 F.2d at 1551. Despite the fact that the jury did not find that Hasbro willfully infringed on the patent, Bowling cites to a host of incidents which he alleges amount to litigation misconduct
sufficient to make this case "exceptional." both sides may have engaged in litigation
Nevertheless, while tactics that were
aggressive, neither side crossed the line in the Courts view. Because there is no clear and convincing evidence that Hasbros behavior amounts to anything more than zealous advocacy of a complex patent infringement action, Bowlings motion for attorneys fees under 35 U.S.C. 285 is denied. For this same reason, the
Court also declines to award attorneys fees under 28 U.S.C. 192710 and under its inherent equitable powers.11 C. Costs
The Court awards costs to Bowling of $15,627.89, pursuant to Federal Rule of Civil Procedure 54(d) and 28 U.S.C. 1920. Prevailing parties are typically awarded costs. See In re Two
Appeals Arising Out of the San Juan Dupont Plaza Hotel Fire Litig., 994 F.2d 956, 962-63 (1st Cir. 1993). Bowlings requested costs. Hasbro has contested some of
All of the uncontested costs are
awarded. The contested costs will be addressed individually as follows. Bowlings fees to a private process server for Service of Summons and Subpoena, $480, are awarded. For service of process,
28 U.S.C. 1920 only specifically includes fees of a marshal.
Pursuant to 28 U.S.C. 1927, a district court may award costs and attorneys fees against any attorney who multiplies the proceedings in any case unreasonably and vexatiously. Seemingly tacked-on, Bowlings claims under this statute are virtually indistinguishable from his 285 claims and without additional authority in support. This Court is therefore equally unpersuaded by his arguments with respect to 1927. In connection with Bowlings motion for attorneys fees, Hasbro filed two motions, one seeking to strike two reply memoranda filed by Bowling (Docket No. 231) as violative of Local Rule 7(b)(2), and another seeking leave to file a motion to compel the production of documents (Docket No. 237) in response to certain attorney billing documents attached to Bowlings motion. As a result of the foregoing disposition, these motions are moot. 28
However, some courts award private process serving fees due to the trend toward substitution of private process servers for the U.S. Marshals Service. Shared Med. Sys. v. Ashford Presbyterian Cmty.
Hosp., 212 F.R.D. 50, 54 (D.P.R. 2002) (citations omitted); see also Alflex Corp. v. Underwriters Labs., Inc., 914 F.2d 175, 178 (9th Cir. 1990). In a recent unpublished opinion, this Court Hasbro, Inc. v.
awarded fees for private service of process. Chang, 2006 WL 2246423, at *2 (D.R.I. 2006).

Although these documents were not
included in Bowlings privilege logs, this omission does not, as Hasbro contends, automatically render the privilege waived. This
Court has an obligation to safeguard the virtually sacrosanct privacy of the attorney-client privilege, and absent evidence that Bowling deliberately concealed the existence of these documents, that privilege remains in effect. Here, the Court credits
Bowlings assertion that the failure to include the documents was inadvertent. Thus, it would be futile to grant Hasbros motion for leave to file a motion to compel, as there is nothing for Bowling to produce. Judges Order. It is so ordered. Therefore, there was no error in the Magistrate
William E. Smith United States District Judge Date:
The sought-after items also include a fax and videotape, both of which are either no longer in existence or are no longer in the possession of counsel for Bowling. 35