Timing (And Perseverance?) Is Everything: Brooks Kushman advises Therma Tru Corporation on its ‘540 patent

Wednesday, November 04, 2009

In 1989, Ernie Brooks was asked by a Toledo area door company, Therma Tru Corporation, to determine whether it should bring a patent infringement suit against a competitor that had introduced a stainable simulated wood-grained fiberglass composite entry door. Therma-Tru Corporation introduced its award winning FiberClassic Door several years earlier, and the market for this longer lasting replacement for the traditional wood entry door was just taking off.

Though the sales were not yet significant enough to generate damages that would warrant patent litigation, Therma-Tru filed suit against Peachtree Corporation with the goal of obtaining an injunction barring its competitor from entering this developing market.

In October, 1991, after a week-long trial, the jury deliberated less than 3 hours before returning a verdict that Therma-Tru`s ‘540 patent was valid, was infringed by Peachtree, and that Peachtree`s infringement was willful. But the District Court Judge, trying his first patent case, short-circuited the jury`s verdict by issuing a tersely worded ruling that the ‘540 patent was unenforceable due to unspecified inequitable conduct in the prosecution of the application for the ‘540 patent before the U.S. Patent Office.

Therma-Tru appealed the unenforceability ruling. Then waited. And waited. And waited. For three years, Peachtree continued to sell its competing Newport door. Others entered the growing fiberglass entry door market.

In January 1995, over three years after the trial, the Federal Circuit issued its opinion – the District Court`s unenforceability ruling was reversed. Now, almost six years after the suit was filed, Therma-Tru tried the damages phase of the suit. In the interim, the fiberglass composite door market exploded, topping $100 million in sales!

The damages case successfully presented by Brooks Kushman to the second jury included a request for

(1) lost profits based on Peachtree`s Newport door sales,
(2) lost profits for the lost sales of associated items that Therma-Tru would have sold if Therma-Tru had made Peachtree`s infringing door sales, and
(3) damages due to price erosion.

The more than $8 million awarded to Therma-Tru by the jury included each of these types of damages.

To date, Therma-Tru has collected substantially more from infringers of the ‘540 patent.