Unicom Monitoring, LLC v. Cencom, Inc., No. 06-1166 (MLC), 2013 WL 1704300 (D. N.J. April 19, 2013).


While a damages expert is not required, proof of the amount of damages is necessary. Unicom learned this lesson the hard way when it failed to meet its burden of proof to establish a reasonable royalty rate, and the court granted summary judgment on its damages and injunctive relief claims.


The Unicom court granted Cencom’s motion for summary judgment on compensatory and equitable relief when Unicom failed to provide competent proof upon which to make a reasonable damages claim. Id. at *11.

Unicom never identified a damages expert or comparable licenses, and the only evidence of damages was a short statement in the brief opposing the motion for summary judgment and a statement during oral argument on the motion. Id. at *2. Unicom never established a reasonable royalty calculation. Id. at *7.

Notwithstanding §284 (“not less than a reasonable royalty”), the court concluded:

  1. A patentee requesting damages carries the burden of proof that its proposed royalty would be reasonable (Id. at *4);
  2. While a patentee needn’t prove the “fact” of damages, “A distinction exists between the fact of damages and proving an amount to be awarded.” (Id. at *5);
  3. Competent evidence of damages for a reasonable royalty rate does not require a damages expert (Id. at *6, distinguishing Judge Posner’s decision in Apple v. Motorola);
  4. Unicom failed to establish that a genuine issue of fact on the issue of damages and lacked an expert to guide the jury the process to arrive at a reasonable royalty rate. (Id. at *8); thus
  5. “[T]he failure to present competent evidence regarding how the fact finder should perform the reasonable royalty calculation is fatal to Unicom’s claims for reasonable royalty damages.” (Id. at *8) Therefore, Unicom could not meet its burden of proving the amount of damages, and summary judgment was deemed appropriate. (Id.).

Since the record demonstrated no likelihood of irreparable harm, it was appropriate to deny injunctive relief as well. Id. at *10.