The opinion
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
*
TERRIE BANHAZL d/b/a HEIRLOOM *
CERAMICS, *
*
Plaintiff, *
*
Civil Action No. 16-cv-10791-ADB
v. *
*
THE AMERICAN CERAMIC SOCIETY, *
*
Defendant. *
*
*
ORDER
BURROUGHS, D.J.
Before the Court is Plaintiff Terrie Banhazl’s (“Plaintiff”) motion for prejudgment and
post-judgment interest, future royalties, and further discovery. [ECF No. 168]. For the reasons
set forth below the motion is ALLOWED in part and DENIED in part.
35 U.S.C. § 284 provides that “[u]pon finding for the claimant the court shall award the
claimant damages adequate to compensate for the infringement, but in no event less than a
reasonable royalty for the use made of the invention by the infringer, together with interest and
costs as fixed by the court.” In its Findings of Fact and Conclusions of Law, this Court found
Defendant liable, determined the reasonable royalty and, based on that royalty, awarded Plaintiff
$161,939.52 in damages. [ECF No. 166 at 49–52]. Plaintiff has now moved, under Rule 59(e)
of the Federal Rules of Civil Procedure for the Court to amend its May 10, 2022 Judgment to
include prejudgment and post-judgment interest and future royalties. [ECF No. 168].
The Court begins with Plaintiff’s request for prejudgment interest. “While arguments
presented for the first time in a Rule 59(e) motion ordinarily are deemed forfeited, the grant or
denial of prejudgment interest is an exception to this general rule.” In re Redondo Const. Corp.,
678 F.3d 115, 122 (1st Cir. 2012) (internal citation omitted). To that end, the First Circuit has
explicitly “recognized that Rule 59(e) is an appropriate vehicle for the resolution of disputes
about prejudgment interest.” Id. (citing Bos. Gas Co. v. Century Indem. Co., 529 F.3d 8, 21 (1st
Cir. 2008); Crowe v. Bolduc, 365 F.3d 86, 92–93 (1st Cir. 2004)). The purpose of awarding
prejudgment interest is “to make the patentee whole because the patentee also lost the use of its
money due to infringement.” Crystal Semiconductor Corp. v. TriTech Microelectronics Intern.,
Inc., 246 F.3d 1336, 1361 (Fed. Cir. 2001) (citing Gen. Motors Corp. v. Devex Corp., 461 U.S.
648, 655–56 (1983)). The Supreme Court has held that the award of “prejudgment interest [is]
the rule, not the exception[,]” but “noted that a patentee’s undue delay in prosecution could
justify denial of prejudgment interest.” Id. (citing Gen. Motors, 461 U.S. at 657).
In her motion, Plaintiff skips past the question of whether the Court should award her
prejudgment interest stating that she is “entitled to an award” and that “the only issue . . . is how
that award should be calculated.” [ECF No. 169 at 4]. Defendant argues, however, that Plaintiff
is not entitled to prejudgment interest because she waited several years to file her lawsuit, which
prejudiced Defendant in the form of increased damages and impeding Defendant’s ability to
defend itself. “[T]o show that delay was undue, a defendant must, at least generally, show that it
was prejudiced.” Kaufman v. Microsoft Corp., 34 F.4th 1360, 1375 (Fed. Cir. 2022) (citation
omitted). In other words, a defendant would need to show that it would have stopped its
infringing behavior, and thus avoided accruing damages, if Plaintiff had not delayed filing. Id.
Here, as the Court previously found, “Defendant has . . . not offered any evidence to show that it
relied on Plaintiff’s conduct and was prejudiced by it.” [ECF No. 166 at 48]. Absent such
prejudice, the Court is unable to conclude that denying prejudgment interest is warranted.
The Court, however, declines to award prejudgment interest at the Massachusetts
statutory rate of 12 percent and instead applies the prime rate, compounded annually. The Court,
in its discretion1 and in line with the reasoning of other sessions of this court, concludes “that the
prime rate is an appropriate compromise between the Massachusetts statutory rate, which is
excessive, and the miniscule Treasury Bill rate, which will not adequately compensate [Plaintiff]
for the pre-judgment period of infringement.” WBIP, LLC v. Kohler Co., No. 11-cv-10374-
NMG, 2014 WL 585854, at *4 (D. Mass. Feb. 12, 2014) (citing Uniroyal, Inc. v. Rudkin-Wiley
Corp., 939 F.2d 1540, 1545 (Fed. Cir. 1991) and NTP, Inc. v. Rsch. in Motion, Ltd., 270 F.
Supp. 2d 751, 763 (E.D. Va. 2003)); Trs. of Boston Univ., 187 F. Supp. 3d at 323. Moreover,
the Court finds that prejudgment interest should be awarded from the date of infringement
because the award of interest is intended to compensate Plaintiff for the loss of use of money she
otherwise would have had. The Court therefore awards Plaintiff prejudgment interest in the
amount of $61,761.16.
The Court further ALLOWS Plaintiff’s motion to the extent it seeks an award of post-
judgment interest. 28 U.S.C. § 1961(a) mandates that “[i]nterest shall be allowed on any money
judgment in a civil case recovered in a district court. . . . [and that] [s]uch interest shall be
calculated from the date of the entry of the judgment, at a rate equal to the weekly average 1-year
constant maturity Treasury yield, as published by the Board of Governors of the Federal Reserve
System, for the calendar week preceding the date of the judgment.” The post-judgment interest
1 “The Federal Circuit ‘has recognized that the district court has substantial discretion to
determine the interest rate in patent infringement cases.’” Trs. Of Boston Univ. v. Everlight
Elecs. Co., 187 F. Supp. 3d 306, 323 (D. Mass. 2016) (quoting Gyromat Corp. v. Champion
Spark Plug Co., 735 F.2d 549, 556 (Fed. Cir. 1984).
will be calculated based on the district court’s judgment, including prejudgment interest, at the
applicable rate of 2.1 percent.
The Court also ALLOWS, as unopposed, Plaintiff’s request for ongoing royalties
calculated using the royalty rate and methodology set forth in the Court’s Findings of Fact and
Conclusions of Law. [ECF No. 166].
The Court, however, DENIES Plaintiff’s motion to the extent she seeks further discovery
for the simple reason that this argument, unlike the requests for interest, are not properly brought
pursuant to Rule 59(e). See, e.g., OK Resorts of P.R., Inc. v. Charles Taylor Consulting Mexico,
S.A. de C.V., No. 19-cv-1889-GAG, 2021 WL 819325, at *2 (D.P.R. Mar. 3, 2021) (reiterating
that a Rule 59(e) motion “does not provide a vehicle for a party to undo its own procedural
failures[,]” such as failing to move to compel the production of evidence while discovery was
open, and thus denying the plaintiffs’ motion that sought permission to conduct further
discovery).
SO ORDERED.
January 11, 2023
/s/ Allison D. Burroughs
ALLISON D. BURROUGHS
U.S. DISTRICT JUDGE