Where some, but not all, findings of infringement are reversed but no remand is sought, and a general damage award is consistent with the mandate, the damage award may not be challenged in subsequent proceedings.

A patentee brought an action for infringement, accusing two products: a 1 mL syringe and a 3 mL syringe. The patentee argued for a lump-sum reasonable royalty of $72 million based on granting the accused infringer freedom to operate. A jury found that both accused products infringed. In response to an interrogatory, the jury “determine[d] the amount of reasonable royalty damages that would fairly and adequately compensate [the patentee] for infringement”: $5 million. On appeal, the Federal Circuit reversed the finding of infringement on the 3 mL syringe, and affirmed on the 1 mL syringe. The accused infringer did not challenge the damage award, and the court did not remand.

The accused infringer subsequently asked the district court to modify the damage award to reflect that the 1 mL syringe was the only infringing product. The court refused, citing the mandate rule: because the damage award was within the scope of the original judgment and not raised in the prior appeal, it could not be revisited.

The Federal Circuit affirmed. The damage award “could have and should have been raised in the previous appeal,” especially “given the general nature of the jury verdict on damages and [the patentee’s] lump-sum reasonable royalty theory that was presented to the jury.” In other words, the damage award and the mandate were consistent. The court declined to hold that its own prior opinion could constitute a change in the evidence sufficient to create an exception to the mandate rule.

A copy of the opinion can be found here.