Our weekly SoCal IP Institute meeting on Monday, August 10, 2015 will be a discussion of the following case:
Carnegie Mellon University v. Marvell Tech. Group, Ltd. et al., Case No. 2014-1492 (Fed. Cir. Aug. 4, 2015) (available here). Carnegie Mellon University (“CMU”) sued Marvell Technology Group, Ltd. and Marvell Semiconductor, Inc. (collectively “Marvell”) for infringing two patents related to hard-disk drives. A jury found for CMU on infringement and validity, and it awarded roughly $1.17 billion as a reasonable royalty for the infringing acts, using a rate of 50 cents for each of certain semiconductor chips sold by Marvell for use in hard-disk drives. The district court then used the established rate to extend the award to the date of judgment, awarded a 23-percent enhancement of the past- damages award based on Marvell’s willfulness (found by the jury and the district court), and entered a judgment of roughly $1.54 billion for past infringement and a continuing royalty at 50 cents per Marvell-sold chip.
Marvell appealed. The Federal Circuit affirmed the judgment of infringement and validity. The Federal Circuit also affirmed the rejection of Marvell’s laches defense to pre-suit damages. The Court reversed the grant of enhanced damages under the governing willfulness standard, which does not require that Marvell have had a reasonable defense in mind when it committed its past infringement. Otherwise, the Court rejected Marvell’s challenges to the royalty (past and continuing) with one exception. The Court remanded the case to district court on the basis of “plain error” for a further trial regarding the location of the “sale” regarding the foreign-manufactured and -sold chips. To the extent, and only to the extent, that the United States is such a location of sale, chips not made in or imported into the United States may be included in the past-royalty award and ongoing-royalty order.