Tuesday, August 04, 2015

CAFC finds largely in favor of Carnegie-Mellon in Marvell case

In the Carnegie-Mellon case, Marvell appealed rulings on infringement, invalidity,
and damages, as well as willfulness and laches related to US Patents 6,201,839 and 6,438,180.
The outcome was largely adverse to Marvell:

We affirm the judgment of infringement
and validity. As to the monetary relief: We
affirm the rejection of Marvell’s laches defense to pre-suit
damages. We reverse 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. We reject
Marvell’s challenge to the royalty (past and continuing)
with one exception.

That exception involves an issue of extraterritoriality—whether
the royalty, in covering all Marvell sales of
certain chips made and delivered abroad, improperly
reaches beyond United States borders. We conclude that
the royalty properly embraces those Marvell-sold chips
that, though made and delivered abroad, were imported
into the United States, and we affirm the judgment to the
extent of $278,406,045.50 in past royalties (50 cents for
each of the 556,812,091 chips the jury could properly find
were imported), plus an amount to be calculated on remand
that brings that figure forward to the time of judgment,
and the ongoing royalty order to the extent it
reaches imported Marvell-sold chips. But as to the Marvell
chips made and delivered abroad but never imported
into the United States, we conclude that a partial new
trial is needed to determine the location, or perhaps
locations, of the “sale” of those 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.

The remaining question is "how much" money Marvell is on the
hook for.

The initial award of $1.54 billion of March 2014 is going to be reduced to
at least $1.17 billion because of the reversal as to willfulness. CMU will get at
least $278.4 million. For the in-between amount, the trial court will have to contemplate
the centrality of a sale-location determination to satisfying the extraterritoriality principle
for the bulk of the chips used for the royalty determination.

The CAFC stated:

The jury found that Marvell both directly and indirectly
infringed the two (method) claims at issue by
developing, testing, and selling to its customers—notably,
some of the world’s leading makers of hard-disk drives—
products that practice the claimed methods. Marvell rests
its challenge to the jury’s finding solely on arguments
about whether its chips’ operation and one of its testing
activities meet the claim limitations. Marvell raises no
issue about other elements of infringement, such as the
knowledge element of indirect infringement. We reject
Marvell’s challenges, concluding that the jury had substantial
evidence to support its verdict.

Of Harris v. Ericsson:

Contrary to Marvell’s contention, Harris Corp. v. Ericsson
Inc. does not show lack of infringement here. The
simple problem in Harris was that the claim required an
actual “communication system,” but Harris did not prove
that Ericsson’s actions, in “simulating” certain techniques
(also involving Viterbi detectors), involved any actual
communication system. A claim element was not proved
to be present. 417 F.3d at 1256. This case sharply differs
because no claim element was missing. Here, even the
“simulations” involved use of “signal samples.” The
meeting of all claim elements is the critical question, not
the use of the word “simulation,” which can mean different
things in different contexts.3

Of laches:

The holding of Serdarevic, keyed to the inventorship
context, does not undermine the district court’s rejection
of laches in this case, based on its well-reasoned conclusion
that Marvell’s blatant and prolonged copying of
CMU’s inventions met the standard of particularly egregious
conduct. Serdarevic did not involve copying, let
alone egregious copying, and we did not hold that such
copying, to defeat laches, must have caused the unreasonable
delay. Nor does any other precedent cited by Marvell
restrict the relevance of copying.
Indeed, the en banc court in Aukerman specifically instructed
district courts to consider such copying, and it
did so without requiring that the relevant copying have
caused the delay: “Conscious copying may be such a factor
weighing against the defendant . . . .” 960 F.2d at 1033;

link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/14-1492.Opinion.7-31-2015.1.PDF

**UPDATE. 28 Sept 2015



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