Patent Damages

District of Connecticut blocks late addition of subsidiary, kills Lost Profits

On March 29, 2014, Judge Robert N. Chatigny in the District of Connecticut issued an opinion denying motion for leave to add plaintiff Protegrity’s subsidiary as a co-plaintiff, effectively killing Protegrity’s lost profit claims.  Specifically, the Court found that there was no good cause for adding Protegrity USA, Inc. (PUSA) long after the deadline in the scheduling order.  The Court found that:


SDNY grants SJ of no pre-notice damages where plaintiff failed to plead marking

On December 31, 2013, Judge Rakoff of the Southern District of New York issued a summary judgment opinion in Cognex Corp. v. Microscan Systems, Inc., 13 Civ. 2027 (JSR) (Doc. No. 142), in which the court ruled on an issue concerning failure to plead patent marking.  According to the court, the plaintiffs’ complaint plead the date of actual notice but failed to plead compliance with the marking statue.  The defendants moved for summary judgment that plaintiffs could not recover damages prior to actual notice. 


CDCA grants SJ of no pre-assignment damages based on silent assignment.

On May 1, 2013, the Central District of California in Nano-Second Tech. Co. v. Dynaflex Int’l granted summary judgment on the issue of pre-assignment damages.  The plaintiff had purchased the patent in September 2010, but the assignment was silent on whether, as part of the purchase and assignment, the prior owner transferred the right to collect past damages.  The Court cited the Federal Circuit’s Arachnid case and the Supreme Court’s Moore v Marsh for the proposition that an assignment must expressly grant the assignee the right to collect damages for past infringement.


DNJ grants SJ of no damages and no injunction due to failure of proof

On April 19, 2013, the DNJ issued an opinion in Unicom Monitoring, LLC v. Cencom, Inc.-c1495cb07dc1, Civil Action No. 06-1166 (MLC) (Doc. No. 134).  The court addressed defendant’s motion for summary judgment of no damages due to plaintiff’s failure of proof and for no injunction due to lack of damages.  The court granted the motion.

In the pretrial order, plaintiff Unicom contended it would prove entitlement to reasonable royalty damages at a rate of 30% of the total revenue of Cencom’s sales of accused products.  In the pretrial order, Unicom indicated it would call two fact witnesses who would testify on matters related to damages, but the pretrial order contained virtually no detail on their proposed testimony.  Unicom did not identify a damages expert or submit a damages report, and it did not produce any licenses for the patent-in-suit or for comparable technology.