Post Infringement Reasonable Royalty
Posted on | February 27, 2009 | 1 Comment
2009-1154 Amado v. Microsoft
CD/CA 03-242
Judge David Carter
Plaintiff Amado appeals from the order of Judge David Carter setting the reasonable royalty for Microsoft's post-verdict sale of infringing products and reducing the number of units for which the royalty is owed.
The case is on remand from the Federal Circuit decision [517 F.3d 1353 (2008)] generally affirming infringement by Microsoft but remanding for for determination of the post-verdict royalty for infringing sales following the grant of the (stayed) permanent injunction. The key language employed by Judge Carter from the CAFC's Amado decision is:
district court concludes that an injunction is warranted, but is
persuaded to stay the injunction pending an appeal, the assessment of
damages for infringements taking place after the injunction should take
into account the change in the parties' bargaining positions, and the
resulting change in economic circumstances, resulting from the
determination of liability-for example, the infringer's likelihood of
success on appeal, the infringer's ability to immediately comply with
the injunction, the parties' reasonable expectations if the stay was
entered by consent or stipulation, etc.-as well as the evidence and
arguments found material to the granting of the injunction and the stay.
Microsoft argued for a $0.04 royalty, which is what the jury awarded for pre-verdict infringement, noting that it has since (during the stayed injunction period) easily removed the infringing functionality. Amado argued for $2.00/unit, which is amount Microsoft agreed to escrow during the stay pending appeal.
The court settled on $0.12/unit, or treble the jury award. The court's reasoning is fairly well detailed. The court expressly rejects use of the Georgia-Pacific factors in post-verdict reasonable royalty calculations, finding that the CAFC implicitly rejected these factors by not mentioning them in the first Amado decision.
The court also reduced by 75% the number of units subject to the royalty in light of Microsoft v AT&T, 127 S.Ct. 1746 (2007) [discussed here by Patently-O], related to overseas copies of the software for which there is no liability pursuant to 35 U.S.C. § 271(f). An interesting aside, the court several times references Microsoft's refusal to provide detailed sales or financial information to Amado as if there was nothing that could be done to compel such production.
More reading: Order
Counsel:
Amado: Morrison & Foerster (LA)
Microsoft: Arnold & Porter (DC, LA)
Comments
One Response to “Post Infringement Reasonable Royalty”
Leave a Reply
Subscribe via RSS or Email
Introducing PATalert from PATracer
PATalerts: Recent CAFC Opinions 
- ADAIR V. CARTER
Appeal Number: 2011-1212 - LAGUNA HERMOSA CORP. V. U.S.
Appeal Number: 2011-5062 - SYNQOR, INC. V. ARTESYN TECHNOLOGIES, INC. [ORDER]
Appeal Number: 2011-1191 - MIDTRONICS, INC. V. AURORA PERFORMANCE PRODUCTS LLC. [ORDER]
Appeal Number: 2011-1589 - GLENN DEFENSE MARINE (ASIA) V. U.S. [ORDER]
Appeal Number: 2011-5071 - TOOKES V. DEPT. OF VETERANS AFFAIRS [ORDER]
Appeal Number: 2011-7189 - PRZYBYLSKI V. DEPT. OF VETERANS AFFAIRS [ORDER]
Appeal Number: 2011-7190 - JONES V. DEPT. OF VETERANS AFFAIRS [ORDER]
Appeal Number: 2011-7195 - IN RE HISAMITSU CO., INC. [ORDER]
Appeal Number: 2012-1025 - JOY TECHNOLOGIES, INC. V. NORTH AMERICAN REBUILD CO., INC. [ORDER]
Appeal Number: 2012-1061
September 11th, 2010 @ 15:11
Buy:Human Growth Hormone.Retin-A.Actos.100% Pure Okinawan Coral Calcium.Prednisolone.Zovirax.Mega Hoodia.Petcam (Metacam) Oral Suspension.Accutane.Lumigan.Arimidex.Nexium.Valtrex.Synthroid.Zyban.Prevacid….