Case study

Jury Verdict and Permanent Injunction in Patent Infringement Case

March 30, 2023 Case Study

U.S. Silica Co. v. Amberger Kaolinwerke Eduard Kick GmbH & Co. KG

Along with its co-counsel from the Webb Firm, Beck Redden has obtained a permanent injunction from the Eastern District of Texas that bars the sale of an infringing cool roofing granule until the expiration of our client’s patents for a cool roofing system.

In March 2022, following a five-day trial, a jury in the Eastern District of Texas returned a unanimous verdict in favor of our client U.S. Silica. The jury found that a German competitor, AKW, had willfully infringed three of U.S. Silica’s patents relating to cool roofing technology. The jury also rejected AKW’s multi-million-dollar counterclaim for tortious interference with prospective business relations. Following substantial post-verdict briefing, the district court entered its Final Judgment on March 29, 2023. While U.S. Silica’s compensatory damages were less than $100,000 because AKW stopped selling the infringing product once the lawsuit was filed, the Court determined that both treble damages—which the Court noted to be generally reserved for “egregious cases of culpable behavior”—and a permanent injunction were appropriate based on the evidence of AKW’s conduct.

The Beck Redden trial team was led by partner Matthew Whitley. Beck Redden attorneys Seepan Parseghian and Bilma Canales assisted at trial, while Russell Post and Parth Gejji provided appellate support. Patrick Redmon, a Beck Redden alumni, was also a key contributor at trial. Cyndi Causseaux coordinated everything backstage as our trial paralegal.

The Beck Redden team sends its thanks and congratulations to our co-counsel Cecilia Dickson, Anthony Brooks, and Kent Baldauf, Jr. of the Webb Firm in Pittsburgh, who were invaluable in providing technical expertise at trial.

The case style is U.S. Silica Co. v. Amberger Kaolinwerke Eduard Kick GmbH & Co. KG, case number 2:20-cv-00298, in the U.S. District Court for the Eastern District of Texas.

Matthew P. Whitley 713.951.6251
Seepan V. Parseghian 713.951.6231
Bilma A. Canales 713.951.6270
Russell S. Post 713.951.6292
Parth S. Gejji 713.951.6288