A federal jury in Newark has returned an $11.8 million verdict in a patent infringement suit over an apparatus for applying flea and tick repellent to pets.
Central Garden & Pet Co. of Ronkonkoma, New York, was ordered to pay $11,006,000 on June 27 for selling a product that infringed the patent held by Nite Glow Industries of Far Hills, along with an additional $825,450 for breaching a confidentiality agreement between the two companies. The verdict was entered after a 14-day trial before U.S. District Judge Katharine Hayden.
Nite Glow, the plaintiff, holds over 100 patents that it markets to retailers and manufacturers, including the flea repellent applicator that is the focus of this case. Nite Glow claimed that its principals made a presentation about the applicator to defendant Central Garden in August 2008, after the parties signed a confidentiality agreement. Central Garden did not buy or license the patent. Then, in February 2012, Central Garden offered a similar product at a trade show, with the name Adams Smart Shield, the suit claimed.
Nite Glow’s repellent applicator, designed to provide superior delivery of flea and tick products directly to an animal’s skin, received U.S. Patent No. 8,057,445 in November 2011. When the defendant sought to patent its own, similar product, the U.S. Patent and Trademark Office rejected the application, finding it too similar to the plaintiff’s product, Nite Glow said in court documents.
What’s more, after it discovered that Central Garden was selling a similar product, Nite Glow’s attorneys emailed Central Garden to raise its patent infringement claim. Allen Simon, an executive of the defendant company, responded with an email of his own, sent to his boss, Frank Palantoni, that said, “everything in this e-mail is true,” according to a court filing.
Central Garden claimed at trial that the plaintiff’s tort claims were addressed in the confidentiality agreements between the parties, and therefore any recovery should be limited to damage remedies prescribed in the agreement. Central Garden also maintained that its product was significantly different than the plaintiff’s design. The plaintiff’s design required the user to manually snip off the end of the flea and tick medication cartridge, then insert it in the applicator and squeeze the top of the cartridge. The defendant’s product, on the other hand, has a lid at the top, and once the medication cartridge is placed in the applicator and the lid snapped shut, the tip of the cartridge is automatically cut to allow the medication to release, according to court papers. In addition, the defendant argued that its product used a flexible polyethylene applicator, while the plaintiff’s design used a rubber applicator.
The jury found that Central Garden induced infringement of the plaintiff’s patent, and had $11,006,000 in infringing sales. The $825,450 award represents royalty damages at a rate of 7.5 percent of infringing sales.
Lead counsel for the plaintiff was Steven Garlock of Thompson Coburn in St. Louis. Garlock said it’s unclear how the jury reached the $11 million figure but he said his client was “thrilled with the verdict.” Garlock said Nite Glow would seek post-verdict relief compensating his client for ongoing sales of the infringing product, but that would have to wait if the defendant appealed the verdict, which he thinks is likely.
The defendant took the position that its allegedly infringing product was “an independent creation” and that its similarity to the plaintiff’s patent was “the biggest coincidence in the world,” said Garlock.
James Coons of Ansa Assuncao in East Brunswick was local counsel for the plaintiff.
Central Garden was represented by Linda Harvey and Michael Freeman of Greenberg Dauber Epstein & Tucker in Newark. They did not return calls about the verdict.