Digest of Carnegie Mellon Univ. v. Marvell Tech. Group Ltd., No. 2014-1492 (Fed. Cir. Aug. 4, 2015) (precedential). On appeal from W.D. Pa. Before Wallach, Taranto, and Chen.
Procedural Posture: Appellants-accused infringers appealed final judgment of infringement, validity, and monetary relief. CAFC affirmed in part, reversed in part, and vacated and remanded in part.
- Anticipation/Obviousness: The district court’s judgment of no invalidity, following a jury verdict that the asserted claims were not anticipated by or obvious over the prior art, was affirmed. The jury could properly have found that the prior art reference did not disclose a “set” of signal dependent branch metric functions, as required by the district court’s construction of the claim term “selecting a branch metric function for each of the branches at a certain time index from a set of signal-dependent branch metric functions.”
- Infringement: The district court properly found infringement because substantial evidence supported the jury’s verdict. The accused post-processor products satisfied the claim term “Viterbi-like” detector which, under the district court’s claim construction, encompassed a post-processor that calculated some but not all branch metrics in a trellis. The accused chip products met the requirement in the claims that the branch metric function be applied to a “plurality of signal samples,” because the chips take multiple signal samples as their inputs, select parameters for the function applied to those samples, and produce a branch metric as a result. The accused computer simulator product could be the claimed “detector,” and appellant’s use of the computer in simulations operated on signal samples, as required by the claims.
- Laches: The district court did not abuse its discretion in rejecting appellants’ laches defense. In finding the equities clearly favored the appellee-patentee, the district court properly considered evidence of copying by appellants, the extent and egregiousness of the copying, the appellee’s culpability in delaying suit, and public policy ramifications of finding laches.
- Willful Infringement: The district court erred in enhancing damages because its finding of willful infringement was improper. The district court properly found the subjective recklessness prong of the willfulness standard satisfied based on evidence that appellants knew or should have known of the asserted patents and that their actions would infringe. The objective prong of the willfulness standard was not satisfied because the appellants’ prior art defense was objectively reasonable. Whether an infringer knows of a defense before litigation and whether a litigation defense is actually presented at trial are irrelevant to the objective reasonableness of the defense.
- Admissibility of Expert Testimony: The district court did not abuse its discretion in allowing appellee’s damages expert to testify. The expert had the necessary qualifications based on a “range of knowledge, skills, and training,” even in the absence of a Ph.D. or a traditional academic appointment. The expert also used an appropriate methodology, considering relevant evidence and relying upon appellee’s other experts for areas outside of her expertise.
- Reasonable Royalty:
- The district court did not err in choosing a per-unit license instead of a flat fee, or in setting the royalty rate. Although appellee had previously entered three lump-sum license agreements involving the asserted patents, sufficient evidence of differences between those past practices and the hypothetical negotiation between the appellant and appellee supported the jury’s use of a per-unit royalty. Ample evidence, including the lack of non-infringing alternatives, industry-wide acceptance of the patented technology, market pressures, and appellee’s ability to pay, supported the per-unit royalty rate.
- The district court plainly erred in including certain accused products in the royalty base by not properly applying territoriality principles. “Where a physical product is being employed to measure damages for the infringing use of patented methods . . . territoriality is satisfied when and only when any one of those domestic actions for that unit (e.g., sale) is proved to be present, even if others of the listed activities for that unit (e.g., making, using) take place abroad.” Therefore, the royalty base could not include accused products which were “manufactured, sold, and used abroad without ever entering in the United States.” The district court properly included in the royalty base accused products that were imported into the United States for use in the United States. For accused products not made or used in, or imported into, the United States, a new trial was necessary to determine whether such products were sold in the United States.