Case Cite

Enzo Biochem, Inc. v. Applera Corp., No. 3:04-cv-00929-JBA, slip op. (D. Conn. August 1, 2013) (2013 WL 3965305).

IPDQ Commentary

In Enzo Biochem, the district court rejected both parties’ challenges to a jury’s damages award. Plaintiff asked for an impermissible double-recovery, seeking damages for direct and indirect infringement stemming from the same act. Defendant unsuccessfully tried to overturn the original damages award, challenging use of the EMVR and the royalty rate – and the court rejected both tactics.

Case Summary

A jury awarded Plaintiff $48.6 M in reasonable royalty damages for direct infringement (through the sale of reagent products) and zero-dollars on its claim of indirect (induced) infringement (from sales of instruments). Id. at 2, 29. Plaintiff’s theory was that the instruments themselves did not infringe, but induced the use of the infringing reagents. See Id. at 30.

Plaintiff filed a Rule 59 motion for a new trial to determine damages for induced infringement through the sale of non-infringing instruments. Id. at 29-30. The district court denied the motion, finding Plaintiff was seeking additional damages based on the same act of infringement. Id. at 31. Moreover, the jury had evidence to support an award of zero-dollars because the instruments had non-infringing uses. Id.

Defendant requested a new trial on damages, arguing (1) the jury improperly applied the EMVR to kits that included the infringing reagent, and (2) the jury assigned a rate twice what Plaintiff could charge sub-licensees for the technology. Id. at 33.

The district court declined to grant a new trial based on Plaintiff’s use of the EMVR because: (1) Defendant’s damages expert used that base for his calculation; and (2) witnesses explained the accused reagents were the raison d’être for the kits. Thus, the jury had substantial evidence to support its verdict. Id. at 33-34.

The district court also declined to grant a new trial on the basis of the royalty rate adopted by the jury because: (1) there were other licenses and other expert testimony for the jury to consider; (2) the market had changed in the years since the original 3% license was set; and (3) the terms of the underlying license were disputed, and the jury heard differing interpretations. Id. at 34-36.