Patent Damages

DDE rules on settlement agreements, foreign sales, and non-infringing alternatives

The District of Delaware, in M2M Sols. LLC v. Enfora, Inc., Case No. 12-32-RGA (Judge Andrews) (March 9, 2016), considered, in part, plaintiff's Daubert motion and defendants' summary judgment motion (MSJ) on damages issues.  The court granted plaintiff's Daubert motion, and granted in-part and denied in part defendants' MSJ.


NDILL certifies for appeal two lost profits issues relating to a foreign patent owner and its US subsidiary

On May 23, 2013, Chief Judge Holderman of the Northern District of Illinois issued an opinion in Fujitsu Ltd. v. Tellabs, Inc., Case No. 09-C-4530 (Doc. No. 1103), addressing a summary judgment motion by Tellabs on the issue of whether Fujitsu Ltd. could recover lost profits.  Tellabs offered two grounds for summary judgment:  “(1) Fujitsu Limited is not entitled to damages in the form of the lost profits because it sells no products in the United States and (2) Fujitsu Limited cannot claim the lost profits of its North American subsidiary and non-exclusive licensee, Fujitsu Network Communications, Inc.”  Slip op. at 1.


Federal Circuit addresses damages issues and worldwide sales

On March 26, the Federal Circuit issued its opinion in Power Integrations v. Fairchild Semiconductor Int’l, Inc., No. 11-1218, addressing damages issues and worldwide sales.  The case is linked here.


WDPA allows “novel” damages theory for per-unit royalty on units sold outside US because of “but for” usage inside US

Judge Fischer in the Middle District of Pennsylvania, in Carnegie Mellon University v Marvell Technology Group, Ltd. (M.D. Pa. November 29, 2012), denied an “emergency” motion to strike CMU’s damages theory on the eve of trial.  The Court denied the motion on multiple grounds, both procedurally (finding that it was in essence a motion for reconsideration of a previous order), and substantively (applying the same logic from the previous summary judgment motion that was denied).


EDTX Allows Defendant’s Damages Reduction Based on Foreign Sales But Disallows in Part Defendant’s Government Sales Reduction

On April 16, 2012, in PACT XPP Technologies, AG v. Xilinx, Inc., Case No. 2:07-CV-563-RSP (EDTX), Magistrate Judge Payne issued an order on PACT’s motion to exclude opinions of Xilinx damages expert Mary Woodford regarding non-U.S. sales and U.S. government sales.  Woodford opined that PACT’s damages base was too large because it impermissibly included sales of accused products that occurred outside the U.S. and included sales to the U.S. government.  PACT argued that Woodford’s opinions were not supportable and moved to exclude her proposed reductions in the damages base.