Case Cite

WesternGeco L.L.C. v. ION Geophysical Corp., No. 4:09-cv-1827, 2013 WL 3148671 (S.D. Tex. June 19, 2013).

IPDQ Commentary

In WesternGeco, Defendant’s disclosure of more than 1,300 infringing sales not mentioned at trial greatly “troubled” the court. As a consequence, Defendant was ordered to submit an accounting for post-trial sales.

Case Summary

A jury found Defendant infringed Plaintiff’s patents, awarding $93.4 million in lost profits and a $12.5 million reasonable royalty. Id. at *2. Defendant moved for JMOL, new trial, or remittitur on damages. Id. at *18. The court resolved issues relating to lost profits, reasonable royalty damages, prejudgment interest and supplemental damages:

Lost Profits

  • Foreign Infringement – Relying on 28 U.S.C. §271(f), Defendant argued Plaintiff’s damages resulted from non-infringing foreign use of allegedly infringing devices. Id. at *18. Defendant argued it merely “supplied” the device and could not be liable for subsequent “making” or “using” the device abroad. Id. at *18. In finding every accused product was made in and supplied from the U.S., the court rejected this argument. Id. at *19.
  • Panduit Test – The court decided Plaintiff introduced evidence sufficient to support each of the four Panduit factors. Id. at *20.

Reasonable Royalty

  • Double Counting – Defendant argued the jury instruction allowed an award of both lost profits and a reasonable royalty for the same infringement. Id. at *20. Noting the jury instruction (1) was drafted to avoid double counting, (2) contained the exact wording of the Model Patent Jury Instructions provided by the Federal Circuit Bar Association, and (3) Defendant had not objected to the instruction, the court rejected this argument. Id. at *21.
  • Apportionment – Saying Defendant had ample opportunity to cross-examine Plaintiff’s damages expert, the court rejected Defendant’s argument that the reasonable royalty analysis failed to apportion for the value of the patented feature. Id. at *21.
  • Marking – Having already considered and rejected Defendant’s arguments regarding a marking instruction, and in the absence of any new evidence, the court declined to reconsider its previous order. Id.

Prejudgment Interest – The parties disputed the applicable rate for prejudgment interest. Id. at *22. Based on case law, the court awarded interest at the prime rate on all damages from the date of infringement to the date of judgment. Id.

Accounting – The court required Defendant to submit a post-trial accounting of infringing sales. Id. at *23. The court was “troubled” by the fact that, subsequent to trial, it first learned more than 1,300 units were sold than were disclosed at trial, and the Defendant relocated its manufacturing of the accused products outside of the U.S. the week after the court’s summary judgment ruling. Id. The court also found Plaintiff was entitled to supplemental damages for infringing sales from the date of the verdict to the date of judgment. Id. at *23.