This case was originally filed in 2012 in Massachusetts. The case went to trial and BU won on infringement and validity, with the jury awarding damages in the form of a fully paid-up lump sum. On the jury verdict form, the jury chose a one-time payment for the life of the patent, as opposed to a running royalty rate based on sales.
The interesting question for damages came in post-judgment motions, when BU asked for prejudgment interest. BU argued such interest should accrue from the date of the hypothetical negotiation (i.e., January 2000), rather than from the point in time six to twelve years (for the three defendants) later, when notice occurred and damages began to accrue.
In her opinion, Judge Saris explained that since damages could not accrue until after the hypothetical negotiation, prejudgment interest could also not accrue until notice occurred. Her conclusion was based largely upon BU’s lack of supporting case law:
On December 8, 2017, the CAFC heard oral arguments on the issue (N.b., the relevant argument begins at 29 minutes & 30 seconds into the recording available below). The prejudgment interest case discussed was Gen. Motors Corp. v. Devex Corp., 461 U.S. 648, 655 (1983). Counsel for BU argued that the case supports the notion that lump-sum damages awarded by a jury should accrue interest from the hypothetical negotiation. It will be interesting to read the Court’s eventual opinion on this specific issue.
Judge Bryson in the District of Delaware excluded an expert opinion not once, but twice, over violation of the entire market value rule. Heavily citing to LaserDynamics and Uniloc, Judge Bryson notes that no matter what apportionment is performed, if the royalty base includes more than the SSPU, then the analysis is fatally flawed.
The CAFC issued this opinion regarding marking, ongoing royalties, willfulness and damages. The court reviewed the Daubert motion and found that the court did NOT err in NOT excluding the expert analysis which involved comparing an infringing product to a non-infringing product. Citing Apple v. Motorola the CAFC opined that, “factually attacking the accuracy of a benchmark goes to evidentiary weight, not admissibility.”
The initial rulings on the Daubert Motions and Motions for Summary Judgment are good reads as well.
The CAFC issued an interesting opinion which touched on some issues that arise in lost profit matters. The case provides a good meta-analysis of the lost profits damages requirements and summarizes where the case law on lost profits damages stands.
An important consideration in any lost profits analysis is an actual demonstration of causality; specifically, “reliable economic evidence of but for causation.” The opinion states:
The opinion also identifies the Panduit test as a “useful but non-exclusive” method to derive lost profits. The discussion in this matter is echoed by Calico Brands.
The second is R+L Carriers v. Qualcomm which discusses the language “substantially identical” with respect to whether claims have changed through reexamination. This is relevant for when damages could start to accrue.
This case is particularly interesting because it appears to touch on the current thinking on the book of wisdom. It also suggests (as have other cases in the past) that the time of the hypothetical negotiation is of paramount importance. The opinion reviews several issues regarding expert qualifications, royalty calculations, and enhanced damages.
Here is a quote from the opinion citing to the recent AstraZeneca case:
The opinion discusses several damages issues, including extraterritorial reach of patent damages, specifically limitations of that reach. It also discusses the exclusion of a damages expert who opined that the royalty rate should be 4 times the price of the accused items. Specifically the CAFC noted that the exclusion of the expert was merited given that:
This case provides a potential cap on damages and thus a response to Stickle v. Heublein where damages may be higher than an infringer’s profit and higher than the price set on the infringing product.