Posts Tagged: "damages"

On August 8th, a memorandum opinion entered in the District of Nebraska overturned a jury verdict award of more than $30 million handed to Omaha, NE-based intellectual property licensing firm Prism Technologies LLC back in June 2015. After Prism won the multi-million damages award from Overland Park, KS-based telecommunications company Sprint (NYSE:S), a decision by the Court of Appeals for the Federal Circuit upheld findings of patent invalidity in a different case involving the patents asserted by Prism. That Federal Circuit decision was applied to Prism’s case against Sprint in a way which shows patent owners that their intellectual property rights are seemingly never safe under the current U.S. patent policy regime.

The standards for overturning a jury verdict and Court’s award of enhanced damages are high. The legal standard regarding lost profits is not limited to one third party sale and courts have discretion to determine if substantial evidence supports a finding of lost profits.

The total number of intellectual property claims included in all commercial cases is higher than the figure of 11,643 commercial cases including at least one IP claim. “It turns out to be incredibly hard to build a Venn diagram that reflects the types of IP claims included in these commercial cases,” said Brian Howard, Lex Machina data scientist and the author of the commercial litigation report. “It turns out to be its own mini-Venn diagram within a Venn diagram, some of the cases are patent and trademark and commercial, so there’s overlap within that IP circle.” Of the different types of intellectual property claims which are included in commercial litigation, trademark claims are by far the most common, occurring in a total of 8,277 commercial cases; that’s 15 percent of all commercial cases filed since 2009. Copyright claims were brought in a total of 3,260 commercial cases filed since 2009, a total representing about 6 percent of all commercial cases. Patent claims were brought in 2,219 commercial cases, or only about 4 percent of the total.

On Monday, August 7th, a judicial panel of the U.S. Court of Appeals for the Federal Circuit entered a decision in Personal Audio, LLC v. Electronic Frontier Foundation which is being widely hailed by the anti-patent crowd. The three judges on the panel issued a majority opinion, authored by Circuit Judge Pauline Newman, upheld a final written decision issued by…

In the calculation of design patent infringer profits, two key issues are the definition of the article of manufacture and the methodology for calculating total infringer profits… Depending upon the case, infringer profits may be based on the entire accused product or may be limited to a component of the accused product, but there is no test or guidance at this point for how to determine if the entire product is the article of manufacture or if only a component or certain components comprise the article of manufacture. Therefore, it may be prudent, depending upon the case, to calculate infringer profits based on one or more alternative assumptions as to what the article of manufacture is comprised of in the specific situation. In some cases, the design patent will cover most or all of the product in question but in other cases such as in the Apple case, it will cover only a minor portion of the product.

As Stone Creek deepens the divide among circuits, the issue of whether willfulness is required for disgorgement of a defendant’s profits in trademark cases is ripe for Supreme Court review… The Stone Creek decision solidifies the Ninth Circuit’s position that willfulness is required for a recovery of profits in trademark cases. This approach is consistent with equitable principles because disgorgement is generally used to deter culpable behavior and deterrence would not be necessary, and would not work, for an innocent infringer. Depending on the facts of a case, trademark law provides sufficient remedies to prevent a likelihood of confusion and compensate a plaintiff for its losses—beyond a defendant’s profits—like an injunction, actual damages and/or corrective advertising. An award of profits can be reserved for willful infringers, without depriving a plaintiff of remedies for non-willful infringement.

Equitable estoppel may be appropriate for the defendant in SCA v. First Quality since the plaintiff was silent for years after the defendant asserted invalidity (possibly fulfilling the misleading conduct through inaction and reliance on that conduct). But can equitable estoppel be relied upon as a defense against a dormant plaintiff in the example illustrated above? Below, we consider the two elements of equitable estoppel that replace the unreasonable delay element of laches: misleading conduct and reliance.

When it comes to television shows, it not always clear what is “copyrightable.” Sometimes, filmmakers and screen writers can get into serious trouble if they don’t follow specific television copyright laws accordingly. Austin-based filmmaker Lex Lybrand watched the June 4th episode of the hit HBO series “Silicon Valley” to shockingly find strong similarities between the episode “The Patent Troll” and his own film “The Trolls.” Jed Wakefield of Fenwick & West recently sat down with IPWatchdog to discuss Lybrand’s case and the impact of copyright infringement when it comes to movie scripts.

Without laches, accused infringers might more frequently invoke declaratory judgment to clear their products and services upfront rather than tolerate a looming threat of suit for years…. The Supreme Court’s recent decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC (Mar. 21, 2017) eliminated the equitable defense of laches in patent cases.  While time will reveal the impact of the SCA decision, elimination of laches, an equitable defense against “unreasonable, prejudicial delay in commencing suit,” Id. at 3 (citing Petrella v. Metro-Goldwyn-Mayer, Inc.(2014), provides greater security to patent owners who assert claims several years after discovering potential infringement.  Conversely, the decision removes one shield—albeit a relatively modest shield—from the accused infringer’s armament of potential defenses. 

The Court first addressed whether the district court’s decision awarding Halo pre- and post-judgment interest and ordering the parties to either file a stipulation on the amount of interest or file briefs explaining their positions constituted a “final decision” appealable under § 1295(a)(1). The Court noted that the district court had not resolved the parties’ dispute on the calculation of pre- and post-judgment interest before Pulse appealed. As a result and based on Supreme Court precedent, the Court found that the district court’s pre- and post-judgment interest decision was not “final” because the court had not “determine[d], or specif[ied] the means for determining the amount” of interest.

The Court disagreed that the district court’s sole basis for finding exceptional circumstances was that NOVA filed an action in equity. The Court noted that the district court also relied on the substantive weakness of NOVA’s position, which can independently support an exceptional-case determination. It is the substantive strength of a party’s litigating position that can lead to an exceptional case determination not correctness or success of that position. For instance, NOVA’s allegations of fraud were supported exclusively by conflicting testimony, a fact going to the strength of the action.

Rembrandt sued Samsung for patent infringement in the Eastern District of Texas and convinced a jury that Samsung infringed its two asserted patents, awarding $15.7 million in damages. Samsung appealed claim construction, denial of JMOL of obviousness, a Daubert motion on a damages expert, and the refusal to limit damages. The Federal Circuit agreed with the district court’s claim construction and its denial of Samsung’s JMOL motions, affirming those decisions… The Federal Circuit vacated because allowing Rembrandt to “avoid the consequence of its failure to mark undermines the marking statute’s public notice function.” The Federal Circuit remanded to the district court to properly limit damages, and also remanded the question of whether the marking statute applies on a patent-by-patent or claim-by-claim basis because the parties had not squarely addressed the issue during the present appeal.

Various Synopsys parties and EVE-USA, Inc. (collectively “Synopsys”) sued Mentor Graphics, seeking a declaration that Mentor’s ’376, ’531, and ’176 patents were invalid and not infringed. Mentor counterclaimed for willful infringement of those three patents, and also asserted infringement of two more (the ’526 and ’109 patents). The court consolidated the case with another involving a fourth patent owned by Mentor (the ’882 patent)… A jury does not have to further apportion lost profits to patented features of a larger product after applying the Panduit factors, which implicitly incorporate apportionment into the lost profit award. Claim preclusion applies when a claim was asserted, or could have been asserted, in a prior action. It does not bar allegations that did not exist at the time of the earlier action.

Damages discovery in patent cases is usually contentious, expensive, and non-uniform in application by the courts. The patent owner, on one hand, wants to discover all possible revenue streams for settlement and resource allocation. The accused infringer, on the other hand, wants to minimize disclosure, because of the sensitivity of financial information and the belief that the suit is meritless. And the courts are caught in the middle. Compounding these issues, fulsome damages contentions typically are not defined until expert reports are presented, meaning the parties (and the court through a Daubert motion) will not know whether there is sufficient basis for the damages sought until late in a case.