IP Newsflash

On January 3, 2019, following a jury’s award of $145 million in damages to Wi-LAN, the Southern District of California granted Apple’s motion for a conditional order of remittitur to a $10 million damages award. In granting remittitur, the court reasoned that Wi-LAN’s expert’s apportionment methodology rendered Wi-LAN’s damages opinion unreliable.

Omega Patents, LLC (“Omega”) sued CalAmp Corp. (“CalAmp”) for patent infringement in the Middle District of Florida. The jury returned a verdict for Omega, finding all of the asserted claims valid and infringed. On April 5, 2017, U.S. District Judge Paul G. Byron granted Omega’s motions for entry of final judgment, an award of attorney’s fees and enhanced damages against CalAmp. Judge Byron’s opinion highlights the importance of presenting credible evidence of an accused infringer’s reliance on opinions of counsel at a time before commencing the challenged conduct. The court did not seem to give much weight to after-the-fact opinions.

On August 15, 2016, Judge Orrick of the Northern District of California granted-in-part defendant Sophos’s motion to exclude the testimony of plaintiff Finjan’s damages expert. Sophos urged, among other things, that the expert’s apportionment methodology improperly inflated her royalty base. Specifically, Sophos argued that Finjan’s expert improperly inflated the royalty base by double or triple counting revenue attributable to the “threat engine” and “live protection” features of the accused software products. That is, Finjan’s expert apportioned the royalty base by 28.6 percent (or 2/7) as to both patents-in-suit, even though each patent covered those same two features. “In this way, [the expert] counts the revenue attributable to certain features multiple times in calculating her royalty base such that her total apportionment calculation uses a royalty base that is over 100 percent of the total value of several of the accused products.”

In a case of first impression involving actual notice under 35 U.S.C. §154(d), the Federal Circuit affirmed the district court’s grant of summary judgment denying Plaintiff’s claim for pre-issuance damages.

Judge Gilstrap in the Eastern District of Texas recently held that plaintiff’s damages expert failed to properly apportion the royalty base “because he has failed to specify, distinguish, and then separate the value of BMC’s patented features from the unpatented features of ServiceNow’s products.” Plaintiff’s damages expert created his relevant royalty base by simply reducing defendant’s total revenue by 50%, then subtracting out the revenues he determined were subject to lost profits. The Court rejected plaintiff’s argument that the “original 50% reduction” was sufficient to isolate or apportion the incremental value associated with the infringement of the asserted patents. Although the Court recognized that the damages expert adequately identifies a portion of defendant’s revenue that is at risk, the Court rejected the asserted royalty base because the expert failed to apportion out any of the value of the unpatented features in the accused products. Relying on the Federal Circuit’s recent Ericsson opinion, the Court held that the “expert fails to provide an ultimate combination of royalty base and royalty rate based on the ‘incremental value that the patented invention adds to the end product.’” Ultimately, the Court carried defendant’s motion to exclude and ordered plaintiff to supplement its damages exert report to correct the deficiency within ten days, reserving the right to readdress this issue after supplementation.