Carnegie Mellon University v. Marvell Technology Group, Ltd., et. al., 2-09-cv-00290 (PAWD August 24, 2012, Order) (Fischer, J.).
Tuesday, August 28, 2012
Noninfringing Sales May Determine Infringement Damages
The court denied defendants' motion for summary judgment of no damages for sales that defendant argued did not infringe. "Generally put, [defendant's] position is that because its sales – whether to [a licensed third party] or of the extraterritorial variety – are non-infringing, [plaintiff] may not recover damages based on those sales. [Defendant] relies heavily on Mirror Worlds, LLC v. Apple, Inc., 784 F.Supp.2d 703 (E.D. Tex. 2011) . . . The Court does not read Mirror Worlds as [defendant] would have it. . . . First, such a restrictive reading is contradictory to Federal Circuit precedent, which does not require a reasonable royalty to be tied only to use of the patented method (i.e., infringement). Further, one of the simplest ways to determine the value of an infringing use of a patented method during research is to ascertain how many sales were made based on that infringing use. . . . Second,. . . [defendant] has also conceded that its infringing use is the but-for cause of [its] sales. Thus, [plaintiff] has demonstrated that [defendant] infringes [its] Patents and that infringement is directly related to [defendant's] sales. This evidence was lacking in the Mirror Worlds case."