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."

Carnegie Mellon University v. Marvell Technology Group, Ltd., et. al., 2-09-cv-00290 (PAWD August 24, 2012, Order) (Fischer, J.).