The Southern District of Florida, in Arctic Cat Inc. v. Bombardier Recreational Products, Inc., Case No. 14-cv-62369 (Judge Bloom) (Jan. 3, 2017), awarded Plaintiff an ongoing royalty and pre-judgment interest.
In an earlier order, the Court determined that Plaintiff was entitled to an ongoing royalty based on Defendant’s concession that it is continuing to sell the infringing personal watercrafts and that the jury’s royalty rate of $102.54 per unit set the “floor” for the ongoing royalty rate. The Court ordered the parties to negotiate an ongoing royalty rate, but mediation was unsuccessful.
The District of Nebraska, in Prism Techs, LLC v. Sprint Spectrum, Case No. 8:12CV123 (Judge Lyle Strom) (December 18, 2015), granted Plaintiff Prism’s motion for pre- and post-judgment interest and denied its motion for an accounting and ongoing royalty.
On August 7, 2012, the Federal Circuit in WhitServe, LLC v. Computer Packages, Inc., Case No. 2011-1206, 1261 (Fed. Cir.), the court vacated the jury’s damages award and remanded for a new trial on damages. The case addresses many damages issues—reasonable royalty base, reasonable royalty rate, lump sum versus running royalty, the 25% rule, ongoing royalties, prejudment interest, and supplemental damages—but none of the rulings is surprising or ground breaking. The case is instructive, however, on how much care must be taken in presenting a coherent damages case. Plaintiff, WhitServe, and its damages expert, Shapiro, made mistakes at trial, and WhitServe’s desperate attempt on appeal to preserve the verdict (approximately $8M) simply could not overcome these mistakes.
EDTX Post-Trial Order on Multiple Issues: Ongoing Royalty Base and Payment of Ongoing Royalties; Supplemental Damages & Prejudgment Interest; Foreign Tax Laws; Extending Ongoing Royalties to Successors and Assigns; Stay of Supplemental Damages and Ongoing Royalties Pending Appeal
On April 30, 2012, in Mondis Tech. Ltd. v. Chimei InnoLux Corp., Civil Action No. 2:11-cv-378-JRG (EDTX), Judge Gilstrap issued a post-trial order on a number of damages issues: (a) the definition of the royalty base for ongoing royalties; (b) the timing and frequency of reports and payments; (c) whether prejudgment interest should be assessed on the supplemental damages; (d) whether a portion of the judgment must be withheld due to Taiwanese tax laws; (e) whether the ongoing royalties extend to Innolux’s successors and assigns; (f) whether Mondis is entitled to additional discovery related to a possible transfer of assets from Innolux to Hon Hai Precision Ltd. (which is not addressed in this summary); and (g) whether the supplemental damages award and the ongoing royalty award should be stayed pending appeal.