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U.S. District Judge William Alsup had his eye on the clock as a witness took a motor apart in his courtroom. The 27-minute show earlier this month decided the case: The motor didn’t have enough glue. This meant motor manufacturer Quicksilver Controls Inc. had violated Alsup’s previous order specifying how the company could redesign its motor and thereby avoid an infringement suit by Animatics Corp. On Monday, Alsup blasted Quicksilver for a “bait-and-switch” and ruled it was infringing Animatics’ motor design patents. Alsup was angry because he told Quicksilver a year ago that it could escape liability by redesigning its line of motors so that the motor body could not be separated from the controller encasement. Santa Clara’s Animatics sells integrated motors in which the computer controls are directly joined to an electric motor. Alsup approved two Quicksilver motor prototypes in which the three motor parts — body, controller and controller encasement — were glued together with epoxy. “So long as the product-line units [sold by Quicksilver] are as difficult to disassemble as the prototypes, they will not infringe,” Alsup wrote in his earlier ruling. But this month, Animatics claimed Quicksilver was selling motors that could readily be taken apart. The company took its case back to Alsup with videotapes illustrating the disassembly and reassembly of Quicksilver’s motor. At a Jan. 8 hearing, Quicksilver contended that Animatics had doctored the tapes and called Quicksilver’s president to the stand, challenging him to disassemble one of the motors. He was able to separate the encasement from the motor body in approximately 27 minutes, Alsup wrote in his ruling Monday. The tapes weren’t doctored, Alsup added. “The in-court demonstration, performed at the behest of Quicksilver, clearly shows that one can remove the encasement from the motor body using techniques similar to those on Animatics’ videotapes.” Quicksilver, Alsup wrote, “intentionally and secretly changed its protocol for the assembly process immediately after the prototype was approved.” Alsup said Quicksilver failed to use epoxy in two-thirds of the places it was used in the prototypes. “I’ve never seen anything like this,” said Robert Andris II, a partner in Ropers, Majeski, Kohn & Bentley’s Redwood City office who represents Animatics. “Generally, when someone has gotten the blessing of the court on ‘this is they way you cannot infringe,’” the party will stick with the redesign. But Quicksilver attorney R. Joseph Trojan, of Beverly Hills’ Trojan Law Offices, said his client had misinterpreted Judge Alsup’s previous order and believed applying glue in four locations rather than 12 was sufficient. Trojan said he understood why Alsup was upset, but said his order went too far. Trojan said he will appeal the decision to the Federal Circuit U.S. Court of Appeals. “I think it’s an overreaction to the situation,” Trojan said. “The order bars the manufacture of any motor without his approval. That far exceeds the scope of the patent by light years.” Alsup enjoined Quicksilver from making or selling the S-series motors without prior court permission, but delayed the ruling so the company could request a stay from the Federal Circuit. However, Alsup said Quicksilver must give its distributors and customers notice of the order — and that they use the motor “at their peril.” Animatics filed suit against Quicksilver in 1999, and the case resulted in a hung jury. Alsup then ruled that Quicksilver infringed two patents but did not infringe several others. Both companies appealed the decision to the Federal Circuit. Andris said the district court has yet to rule on damages that Animatics is seeking for Quicksilver’s infringement.

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