2:10-cv-12492-SJM-MJH Doc # 471 Filed 06/16/16 Pg 1 of 5

Pg ID 29559

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVISION
FIELDTURF USA, INC.,
a Florida corporation, and
TARKETT, INC.,
a Canadian corporation,
Plaintiffs/
Counter-Defendants,

Case No. 2:10-cv-12492-SJM-MJH

Hon. Stephen J. Murphy, III
Magistrate Judge Michael J. Hluchaniuk

v.
ASTROTURF, LLC,
a Michigan limited liability company,
Defendant/
Counter-Plaintiff.

ASTROTURF LLCS MOTION FOR LEAVE TO FILE BRIEFS REGARDING THE

IMPACT OF THE SUPREME COURTS DECISION IN HALO V. PULSE

2:10-cv-12492-SJM-MJH Doc # 471 Filed 06/16/16 Pg 2 of 5

Pg ID 29560

This motion responds to Plaintiffs letter (DN 468) regarding the Supreme Courts recent
decision in Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. ___ (2016). AstroTurf agrees that
Halo is directly relevant to Plaintiffs pending Motion for Enhanced Damages. AstroTurf does
not agree, however, that the facts of this case merit an award of enhanced damages under Halo.
Given the importance of both Halo and the pending motion, AstroTurf respectfully moves that
the parties be allowed to file 10-page briefs on or before Thursday, July 7, 2016, addressing the
application of Halo to this case. Plaintiffs have advised that they oppose this motion.
Plaintiffs correctly identify that Halo overturns the two-part test promulgated by the
Federal Circuit in In re Seagate Tech., LLC, 497 F.3d 1360 (Fed. Cir. 2007). But Plaintiffs
incorrectly imply that evidence demonstrating lack of objective recklessness is no longer relevant
to the imposition of enhanced damages. Halo does not support that proposition. Language from
the opinion that Plaintiffs omit speaks directly to this issue:
Section 284 allows district courts to punish the full range of culpable behavior.
Yet none of this is to say that enhanced damages must follow a finding of
egregious misconduct. As with any exercise of discretion, courts should
continue to take into account the particular circumstances of each case in
deciding whether to award damages, and in what amount. Section 284 permits
district courts to exercise their discretion in a manner free from the inelastic
constraints of the Seagate test. Consistent with nearly two centuries of enhanced
damages under patent law, however, such punishment should generally be
reserved for egregious cases typified by willful misconduct.
Halo, slip op. at 11 (emphases added); see also id. at 9 (explaining that Seagates principal
problem was only that it required a showing of objective recklessness in every case (emphasis
added)). Recent cases regarding objective recklessness therefore remain relevantas part of the
nearly two centuries of enhanced damages under patent law adopted in Haloin assessing an
award of damages under Section 284. See id. at 13.1

Moreover, even if evidence demonstrating a lack of objective recklessness is not relevant under Halo, this Courts
rejection of AstroTurfs laches defense was predicated on a finding that AstroTurf had notice of the reexamination

2:10-cv-12492-SJM-MJH Doc # 471 Filed 06/16/16 Pg 3 of 5

Pg ID 29561

The parties should be allowed to file briefs regarding the appropriate analysis of Section
284 following Halo. Since the Supreme Court did not articulate a particular standard in Halo,
historical cases provide the only framework under which to evaluate the facts in this case.
Evidence of AstroTurfs defenses thus remains relevant; Halo merely instructs a district court to
appropriately evaluate the context and totality of such evidence. As the Supreme Court noted,
discretion is not whim. Thus, although there is no precise rule or formula for awarding
damages under 284, a district courts discretion should be exercised in light of the
considerations underlying the grant of that discretion. Id. at 8 (internal quotation marks
omitted). Indeed, the Supreme Court, in recognizing the significance of Halo and the
considerations to be applied in evaluating enhanced damages, remanded the cases before it for
further analysis. See id. at 15. This case would likewise benefit from short submissions
discussing the historical case law on enhanced damages and applying it to the instant facts.
For these reasons, AstroTurf respectfully requests that the parties be granted leave to
submit briefs of 10 pages to be due on or before Thursday, July 7, 2016.

Dated: June 16, 2016

Respectfully submitted,

/s/ Howard P. Goldberg

Martin F. Gaynor, III
Howard P. Goldberg
Lawrence K. DeMeo
MANION GAYNOR & MANNING LLP
125 High Street, 6th Floor
Boston, MA 02110
617-670-8800
mgaynor@mgmlaw.com
hgoldberg@mgmlaw.com
ldemeo@mgmlaw.com

of the 412 patent. DN 465 at 7. To the extent AstroTurf had such notice, any allegedly infringing conduct by it
was based on its actualand reasonable belief that [its] conduct [was] defensible. Halo, slip op. at 10.

2:10-cv-12492-SJM-MJH Doc # 471 Filed 06/16/16 Pg 4 of 5

Pg ID 29562

Thomas E. Bejin (P56854)

George Schooff (P45596)
David W. Hannon (P68968)
BEJIN BIENEMAN PLC
300 River Place, Suite 1650
Detroit, MI 48207
313-528-4882
bejin@b2iplaw.com
schooff@b2iplaw.com
hannon@b2iplaw.com
Attorneys for Defendant/Counter-Plaintiff AstroTurf,
LLC

2:10-cv-12492-SJM-MJH Doc # 471 Filed 06/16/16 Pg 5 of 5

Pg ID 29563

CERTIFICATE OF SERVICE
I hereby certify that on June 16, 2016, I filed the foregoing document under seal via the
CM/ECF system and served it electronically upon the following:
Kevin E. Warner (kwarner@winston.com)
Michael L. Brody (mbrody@winston.com)
WINSTON & STRAWN LLP
35 West Wacker Drive
Chicago, IL 60601

/s/ Howard P. Goldberg

Howard P. Goldberg
MANION GAYNOR & MANNING LLP
125 High Street, 6th Floor
Boston, MA 02110
617-670-8800
hgoldberg@mgmlaw.com