Coinco Pays Mars Over $27 Million in 20-Year Old Patent Dispute

Fish & Richardson today announced that its client Mars Incorporated received payment today of $27, 668,684.56, including interest, from Coin Acceptors, Inc. (Coinco) to satisfy the final judgment in a patent infringement dispute that lasted 20 years.

The litigation spanned the judicial career of former New Jersey District Judge John C. Lifland, who was assigned the case shortly after he was appointed in 1991 and issued the final, substantive opinion of the trial court very shortly before his retirement in 2007. He concluded that two of the five asserted Mars patents in the dispute were infringed, and none of the four Coinco patents were infringed.

The two Mars patents infringed by Coinco covered important inventions in electronic coin mechanisms used in vending machines. One invention was developed for Mars by Arthur D. Little, Inc. in the early 1970s. The other was purchased by Mars from Hilgraeve, Inc. in 1986. John B. Pegram, a Senior Principal at Fish & Richardson, filed the application for the first of these patents in 1972, assisted Mars in purchasing the other, and was Mars' lead counsel throughout the dispute with Coinco. Both patents expired during the litigation.

Although Coinco argued that it could have cheaply avoided the patents, they did not convince Judge Lifland, who awarded a 7% reasonable royalty. The Federal Circuit affirmed the royalty rate on June 2, 2008. Although the appeals court held Mars lacked standing to recover damages on sales from 1996 to 2003, that had a relatively small practical effect because one of Mars' infringed patents had expired and Coinco modified most of its products to avoid the other infringed patent before that period commenced. Coinco's petition for writ of certiorari was denied on December 1, 2008.

In the final episode of the 20-year saga, Coinco blocked Mars' demand on a Letter of Credit that Coinco had posted in lieu of an appeal bond. Coinco argued that the 4.86% post-judgment interest rate set in May 22, 2007 was inapplicable, because the Federal Circuit had modified the judgment without specifying the post-judgment interest rate, apparently hoping that a lower rate would be applied. On Mars' motion, the Federal Circuit recalled and corrected its mandate on March 9, 2009, confirming the 4.86% rate.

Mars is no longer in the coin and banknote mechanism business. It purchased another manufacturer of coin and banknote mechanisms, Nippon Conlux, Co., Ltd., in 2003 and consolidated it with its subsidiary Mars Electronics International (MEI). When Mars decided to concentrate on its core confectionery and food businesses, the company sold MEI to an investment group in 2006 and purchased Wm. Wrigley Jr. Co. in 2008.

Mars was represented by Fish & Richardson, with local counsel in the Newark, NJ office of McCarter & English, LLP.

Coinco was initially represented by attorneys from Haverstock, Garrett & Roberts in St. Louis, MO and later by attorneys in the St. Louis office of Bryan Cave LLP, with NJ local counsel from Day Pitney LLP.