Summit 6 LLC v. Research In Motion Corp., No. 3:11-cv-367-O, slip op. (N.D. Tex. June 26, 2013).
The Summit 6 court reviewed and upheld the damages expert’s analysis underlying a jury’s award of “lump sum” damages to Plaintiff, then denied Plaintiff’s motion for an ongoing royalty. The lesson – be mindful of what you ask for during trial, it may eliminate damages down the road.
A jury returned a verdict finding Samsung Defendants infringed Plaintiff’s patent, awarded $15 Million in damages and wrote “lump sum” under that amount. Id. at 5. Samsung moved for JMOL on damages (Id. at 17), and Plaintiff moved for a compulsory royalty (Id. at 31).
Samsung argued Plaintiff’s damages should be limited to $1.5 Million because (1) Plaintiff’s damages expert, Mr. Benoit, used a flawed analysis for his calculation, and (2) the jury relied on improperly admitted settlement licenses. Id. at 17.
The court found Benoit’s analysis was not flawed, rejecting each argument advanced by Samsung:
- “Rate” Apportionment Unnecessary – Samsung argued Benoit’s royalty rate analysis began with a component of the accused device that did not practice the patent. Id. at 18. The court disagreed, concluding there was no requirement that the component the expert relied upon to calculate the rate must be a patent-practicing unit of the accused device. Id. at 19.
- EMVR Not Misused – Relying on the now repudiated passage in Lucent (noting the relationship between the base and the rate), the court found Benoit had not improperly used the entire device for his royalty base. Id. The court also reasoned that the entire device was the smallest patent-practicing unit. Id. at 20.
- Survey’s Properly Relied Upon – The surveys Benoit relied upon were sufficiently related to the accused product and the features of those products, Benoit, although not a survey expert, was entitled to rely on those surveys in completing his analysis. Id.
- Nash Bargaining Solution Okay – Benoit’s use of the NBS was not a disguised attempt to adopt a “50% rule of thumb,” but rather based on his view of the parties’ respective bargaining positions. Id. at 21. It was up to the jury to evaluate his testimony. Id.
The court also concluded various settlement licenses were sufficiently comparable to the claimed technology to be admitted into evidence. Id. at 22. Moreover, Samsung pointed to differences between the licenses which the jury was able to weigh. Id.
The court denied Plaintiff’s request for a compulsory royalty on Samsung’s infringing sales after the verdict. Id. at 31-33. The verdict was an express award for a “lump sum” license. The parties consistently described a “lump sum” royalty throughout trial. Id. at 33. Thus, the verdict represented the amount of a lump sum license for the life of the patent and full compensation for past and future infringement. Id. at 33-34.
The court also awarded pre-judgment interest at 5% compounded annually and post-judgment interest under 28 U.S.C. § 1961. Id. at 34-35.