In Intellectual Ventures I LLC v. Xilinx, Inc., C.A. No. 10-1065-LPS (D. Del. Apr. 21, 2014), Judge Leonard P. Stark granted defendant’s motion for summary judgment on damages and willfulness in part. Prior to the summary judgment opinion, Judge Stark had excluded plaintiff’s sole damages expert as unreliable and denied plaintiff’s request to supplement its damages report. Id. at 2.
Judge Stark granted defendant’s motion for summary judgment of no willful infringement based on defendant’s assertion that plaintiff “cannot satisfy the objective prong of a willfulness claim.” Id.at 6. Judge Stark found that defendant had “at least one reasonable defense to each allegation of infringement.” Id. at 7. Specifically, Judge Stark explained that defendant raised non-infringement defenses that were not unreasonable, and that the PTO’s rejection and plaintiff’s cancellation of certain claims of three patents-in-suit further demonstrated the reasonableness of these defenses. Id. at 6-7. Judge Stark also granted defendant’s summary judgment motion of no damages for distributor sales, as the basis for those damages relied on the testimony of the excluded damages expert. Id. at 7.
Defendant also moved the Court to rule as matter of law that plaintiff cannot prove any damages on the grounds that plaintiff’s “only support for damages comes from [the excluded] expert opinion.” Id. at 3. Judge Stark denied defendant’s motion, noting that there was “sufficient evidence in the record”—independent of the excluded expert testimony—“from which a jury could find a reasonable royalty.” Id. Such evidence included, for example, agreements between the parties and the testimony of defendant’s damages expert. Id.
Judge Stark also denied defendant’s motion that requested the Court to rule as a matter of law that plaintiff cannot provide any damages for induced infringement on the basis that plaintiff had “no evidence concerning the actual use of the accused products.” Id. at 4. Judge Stark explained that plaintiff’s expert asserted that the accused software product had “default settings” that met each limitation at issue. Id. Despite the fact that customers could change the defaults settings, Judge Stark found there was sufficient evidence such that a reasonable jury could find that “the product, as sold, necessarily infringes the patents-in-suit.” Id.
Judge Stark denied defendant’s request that the Court rule as a matter of law that plaintiff was not entitled to “pre-suit damages for induced infringement, or willful infringement or enhanced damages, because [plaintiff] bases these claims solely on information [plaintiff] exchanged with [defendant] pursuant to a contractual business relationship, and those contracts preclude [plaintiff] from using that information to support [plaintiff]’s case.” Id. at 5. Judge Stark found, however, that a genuine issue of material fact existed as to whether plaintiff notified defendant of the patents-in-suit pursuant to the parties’ contractual business relationship. Id.