Defendant Not Barred From Seeking Lump Sum Royalty Damages as Alternative to Ongoing Royalty or Injunction

The court denied plaintiff's motion in limine to preclude defendant from asking the jury to award lump sum damages. "[Plaintiff] contends that [defendant] should be precluded from asking the jury to award damages in the form of a fully paid-up lump sum covering the life of the patents-in-suit because that outcome would preclude [plaintiff] from seeking an injunction or post-verdict ongoing royalties. According to [plaintiff], this would improperly allow the jury to decide equitable issues. Although the Court agrees that a lump-sum award might foreclose additional relief, there is no doubt that a fully paid-up lump sum is an allowable form of damages. . . . The possibility that the jury’s decision may affect [plaintiff's] claim for equitable or injunctive relief is no basis for taking that decision out of the jury’s hands. . . . The solution to [plaintiff's] concern is not to bar [defendant] from seeking a lawful lump sum royalty rate but to prove to the jury that the proper measure of damages in this case is a running royalty."

Open Text SA v. Box, Inc. et al, 3-13-cv-04910 (CAND January 28, 2015, Order) (Donato, J.)