United States District Court, M.D. Florida, Fort Myers Division
GLOBAL TECH LED, LLC, a Florida limited liability company, Plaintiff,
HILUMZ INTERNATIONAL CORP., a Georgia corporation, HILUMZ, LLC, and HILUMZ USA, LLC, a Georgia limited liability company, Defendants/Third Party Plaintiffs JEFFREY J. NEWMAN, GARY K. MART, Third Party Defendants.
OPINION AND ORDER
E. STEELE, UNITED STATES DISTRICT JUDGE
matter comes before the Court on Plaintiff's Motion for
Default Judgment (Doc. #133) filed on January 8, 2018. No.
response has been filed, and the time to do so has passed.
For the reasons set forth below, Plaintiff's Motion is
granted in part and denied in part.
procedural history of this lawsuit is relevant to the
Court's resolution of Plaintiff's Motion for Default
Judgment and thus is recounted in some detail:
case involves a patent infringement dispute between two
business partners-turned-competitors in the retrofit light
emitting diode (LED) lighting industry. In recent years, LED
bulbs have become popular because they have a much longer
lifespan than traditional incandescent bulbs, and the light
they emit produces significantly less heat. The circuits that
provide electrical current to LED bulbs do, however, produce
a considerable amount of heat. This has motivated companies
that manufacture LED bulbs to create - and seek patent
protection for - apparatuses that both house the bulb and
allow the heat generated by the circuitry to be dispersed
Global Tech LED, LLC (Global Tech) is one such company.
Global Tech is the assignee of the ownership rights to United
States Patent No. 9, 091, 424 (the ‘424 Patent),
entitled “LED Light Bulb, ” which comprises a
retrofit LED apparatus made up of: a screw connector, which is
configured to be screwed into a receiving socket of an
electric light fixture; a bracket, which is physically
attached to the screw connector; and a housing, which is
rotatably coupled to the bracket, and which includes one or
more LED units for generating light and one or more
electrically powered cooling devices to remove heat from the
vicinity of the LED units. (Doc. #1-1, p. 2.) This design
allows the face of the housing - along with the back-attached
fan (or “heat sink”) - to be rotated
“orthogonally” (ninety degrees) from the
receptacle's connector base. This, in turn, enables the
heat generated by the circuitry to be dispelled
advantageously away from the LED units, thereby preserving
the life of those units.
contend that this rotatable feature constitutes the
“true innovation” of the ‘424 Patent and is
being infringed by a retrofit LED apparatus (the Retrofit
Kit) invented by Defendants HiLumz International Corp.,
HiLumz, LLC, and HiLumz USA, LLC (collectively, Defendants).
On September 15, 2015, Global Tech filed a Complaint (Doc.
#1) accusing Defendants of “making, using selling, or
offering for sale” one or more lighting products that
infringe the claims the ‘424 Patent, either literally
or under the doctrine of equivalents. (Id. ¶
36.) Defendants are also alleged to have “induced
infringement of claims of at least the ‘424 Patent by
having one or more of [their] distributors and other entities
use, sell or offer for sale the Accused Products and others
substantially identical to the Accused Products with
knowledge of the ‘424 Patent.” (Doc. #1, ¶
37.) The Complaint seeks injunctive relief and money damages
for Defendants' willful direct and indirect patent
infringement, in violation of 35 U.S.C. § 271.
defended this case for almost two years, consistently denying
the allegations of infringement. Specifically, they argued
that (1) any product “substantially identical” to
the Accused Products was sold prior to the issuance of the
‘424 Patent, and that (2) any Retrofit Kit sold after
the issuance of the ‘424 Patent did not infringe that
patent, despite the orthogonal rotation, because those Kits
contained no “screw connector” component - that
is, no connector piece that could be screwed into an
electrical socket and through which electricity traveled to
power the LED units - only a hose clamp that attached to the
outside of the electrical socket through which no
power was conveyed to the units. Defendants also asserted a
number of affirmative defenses and counterclaims against
Global Tech and filed a third party complaint against Mart
and Newman (Doc. #63).
Defendants moved for a preliminary injunction against
Plaintiffs (Doc. #6), as well as sanctions pursuant to Rule
11 (Doc. # 64) - both of which Plaintiffs opposed (Docs. ##
22, 70), and both of which the Court denied (Docs. ## 62,
94). The Court also, upon Global Tech's Motion (Doc.
#71), dismissed (i) Defendants' counterclaim seeking a
declaratory judgment of inequitable conduct and patent
unenforceability and (ii) three of the seven factual bases
for Defendants' Lanham Act counterclaim. The Court denied
dismissal of the remaining bases for the Lanham Act claim and
the other three counterclaims (unfair competition, Florida
Deceptive and Unfair Trade Practices Act, and trade libel).
January 19, 2017, the Court conducted a
“Markman” hearingfor the purpose of
construing the term “screw connector, ” as used
in independent claims 1, 14, and 18 of the ‘424 Patent.
Specifically, the construction question before the Court was
whether, to be a “screw connector, ” the
connector piece had to draw power from the electrical socket,
which is what Defendants argued,  or merely had to serve as a
support structure, as Plaintiffs argued. On May 23, 2017, the
Court issued an order (Doc. #120) accepting in part
Plaintiffs' proposed construction and rejecting
Defendants' proposed construction.
30, 2017, counsel for Defendants filed a motion to withdraw
on the ground that Defendants were “no longer able and
willing to pay for the attorney's fees and costs
necessary to pursue their claims and defenses in this civil
action.” (Doc. #121, p. 2.) The Magistrate Judge
granted that motion (Doc. #122) and directed Defendants to
retain counsel on or before August 11, 2017, as is required
for corporations under Middle District of Florida Local Rule
2.03(e). (Doc. #123.) Defendants failed to do so.
August 28, 2017, the Magistrate Judge issued a Report and
Recommendation (Doc. #124) recommending that a Clerk's
default be entered against Defendants, and that
Defendants' pending counterclaims and third-party
complaint be dismissed without prejudice. No. objections were
filed. On September 22, 2017, the undersigned issued an
Opinion and Order (Doc. #125) adopting the Report and
Recommendations and ordering the Clerk to enter a default
against Defendants and a judgment dismissing the third-party
claims. A clerk's entry of default (Doc. #126) and a
judgment dismissing the third-party claims (Doc. #127) were
entered on September 25, 2017.
January 8, 2018, Global Tech filed the instant Motion for
Default Judgment seeking the following relief: (1) entry of a
final judgment on Global Tech's claims of willful patent
infringement; (2) an award of damages, consisting of lost
profits or, in the alternative, an award of a reasonable
royalty, or a combination of both; (3) enhanced damages; (4)
costs and attorneys' fees; (5) an Order requiring
Defendants to produce sales and cost-of-goods-sold records
for the Accused Products; and (6) entry of an Order
permanently enjoining Defendants from making, selling, or
offering to sell the Accused Products.