Xinyi Motions for Court to Vacate or Modify $22 Million Judgment Against It in Patent Infringement Suit
May 7, 2010

Xinyi Glass North America and Xinyi Automobile Glass Co. have filed a motion requesting that the U.S. District Court for the Northern District of Ohio hold vacate or modify the jury's $22 million damages verdict, and is requesting that the court hold a new trial in the patent infringement suit Saint-Gobain filed against it in November 2006. The trial was held last November, and the final damages figure was released this April.

And, just last week, Xinyi was granted a stay until May 31 while it worked to secure bonding for the damages owed to Saint-Gobain. (CLICK HERE for related story.)

In the suit, Saint-Gobain alleged that Xinyi infringed on two of its patents, one titled "Spacer for Windshield Bracket" (known in court documents as the '669 patent) and one titled "Method of Centering Windshield Glazings" (referred to as the '395 patent). The '669 patent is said to be for the "first spacer being provided with means for centering and aligning the glazing upon the bracket," while the '395 patent is described as follows, "whereby said lip portion of the spacer contacts said bracket to provide a force for centering said glazing thereon, which force is sufficient to maintain centering of the glazing on the bracket."

In Xinyi's 38-page motion requesting a new trial, the company argues that the jury the jury lacked "substantial evidence on key issues."

Among these, Xinyi alleges that the correct construction of "centering" requires an even gap all around the periphery of the glazing, but that Saint-Gobain failed to prove infringement on this point, as it had defined "centering" as "non-skewed" or "straight" during the course of the trial, according to court documents.

Likewise, Xinyi claims that Saint-Gobain failed to prove infringement when using its own centering definition as well.

"There was no evidence at trial that the lips of the accused Xinyi windshields satisfied these requirements [as described in the patents]," writes counsel for Xinyi. "Instead, the most Saint-Gobain proved is that (1) the accused windshields have lips; and (2) those lips create 'a force' when bent."

Xinyi says Saint-Gobain should have run an "off-kilter test" on the accused Xinyi windshields by having expert witness Bob Beranek purposefully "set the Xinyi windshields 'off kilter.'"

"If he had done so in this case, the jury would have learned whether the lips of the accused Xinyi windshields are capable of forcing an 'off-kilter' windshield back into a nonskewed or straight position," writes Xinyi.

In addition, the defendant argues that Xinyi can't be charged damages for time during which it was unaware of the patents involved in the case, and that the company didn't know about the patents involved until it was notified about these in May 2005.

"Accordingly, there was no basis for the jury to find induced or contributory infringement prior to May 2005, and no basis for awarding damages for Xinyi windshields sold before that date," the motion continues. " … The jury's damages award must therefore be vacated as lacking substantial evidence or, in the alternative, be modified to reflect no infringement before May 2005."

Xinyi also claims that Saint-Gobain "failed to prove that 277,645 accused windshields were actually installed in the [United States] during the term of [the patents]." The company says that while Saint-Gobain based its case on Xinyi's sale of the windshields in the United States, the company didn't address "actual installations of those products by installers in the [United States]."

The defendant company requests a new trial on the patent infringement charges, but also requests that if this is not granted, that a new trial on the amount of the damages should be held.

The court had previously ruled that Xinyi owes Saint-Gobain damages of approximately $22 million, along with attorney's fees of nearly $2 million and court costs totaling $384,882.99-for a total of more than $24 million.

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