United States District Court, E.D. Texas, Marshall Division
MEMORANDUM OPINION AND ORDER
GILSTRAP UNITED STATES DISTRICT JUDGE
the Court is Rembrandt Technologies, LP's
(“Rembrandt”) Motion to Amend Judgement (Dkt. No.
375), in which Rembrandt seeks to “strip out”
from the jury's award those royalties tied to
pre-complaint sales on a per-unit royalty calculation.
Samsung disputes the propriety of Rembrandt's per-unit
approach, which is based on per-unit sales, and instead
advances a per-day calculation. The difference in the
parties' approaches amounts to roughly $2.4 million in
damages. Having considered the Motion and the relevant
authorities, the Court is of the opinion that the Motion
should be GRANTED as set forth herein.
Wireless Technologies, LP, filed suit against Samsung
Electronics Co., Ltd., Samsung Electronics America, Inc., and
Samsung Telecommunications America, LLC (collectively,
“Samsung”) alleging infringement of U.S. Patents
8, 023, 580 (the “'580 Patent”) and 8, 457,
228 the “'228 Patent”). These patents concern
systems and methods to facilitate communi- cations between
network modems. See, e.g., '580 Patent at
2:17-20. Rembrandt alleged specifically that the asserted
claims covered Samsung's devices incorporating a
particular Bluetooth standard.
trial, Samsung moved to limit Rembrandt's damages
asserting Rembrandt's failure to mark products embodying
Claim 40 of the '580 Patent. (Dkt. No. 167). In response
to the motion, Rembrandt statutorily disclaimed Claim 40
pursuant to 35 U.S.C. § 253(a). (See Dkt. No.
183-2, Disclaimer in Patent Under 37 C.F.R. 1.321(a)).
Rembrandt then argued that it therefore had no marking
obligation concerning Claim 40. (Dkt. No. 183 at 5-8). The
Court agreed and denied Samsung's motion. (See
Dkt. No. 262; Dkt. No. 277).
trial, the parties presented fundamentally different damage
models. Rembrandt proposed a reasonable royalty of between
5¢ and 11¢ per accused device. (Dkt. No. 293,
2/10/2015 Trial Tr. at 111:23-25.) Based on sales of roughly
290 million accused devices, Rembrandt's royalty model
totaled from $14.5-$31.9 million. (Id. at 112:1-7.)
In contrast, Samsung advanced a fully paid-up lump royalty
theory totaling $500, 000. (Dkt. No. 297, 2/12/2015 Trial Tr.
at 18:16- 19.)
prevailed on infringement, and the jury awarded it damages of
$15.7 million, up to the time of trial. (Dkt. No. 288 at 4).
On appeal, however, the Federal Circuit held
“disclaimer cannot serve to retroactively dissolve the
§ 287(a) marking requirement for a patentee to collect
pre-notice damages.” Rembrandt Wireless Techs., LP
v. Samsung Elec. Co., 53 F.3d 1370, 1384 (Fed. Cir.
2017). Otherwise, disclaimer “provides an end-run
around the marking statute” and “undermines the
statute's public notice function.” Id. at
1383. The Federal Circuit therefore vacated the Court's
denial of Samsung's motion to limit damages and remanded
to this Court as to that issue. Id. at 1385.
soon after the Federal Circuit's decision, Rembrandt
elected to not maintain damages for pre-complaint sales.
(See Dkt. No. 376-3, Enger Email May 11, 2017). In
light of that decision, Rembrandt maintains that the Court
now need only “strip out the royalties from pre-notice
sales” and enter an amended final judgment. (Dkt. No.
376 at 2 (quoting Rembrandt Wireless, 53 F.3d at
the parties present the Court with starkly different
methodologies for doing so. Rembrandt urges the Court to (1)
divide the jury's award ($15.7 million) by the original
damages base of 290, 230, 172 units to derive a royalty of
5.4¢ per unit, then (2) multiply that per-unit royalty
by the number of units sold after Samsung had notice of
Rembrandt's infringement claim- i.e., after
Rembrandt served its complaint. That calculation would yield
damages of $11, 111, 920. (Dkt. No. 375 at 5 (relying on
Declaration of Roy Weinstein (Dkt. No. 375-1))). Rembrandt
emphasizes the consistency of this approach with that
discussed by Judge Taranto during oral argument.
(Id. at 7-8.)
does not dispute Rembrandt's math, but complains that its
methodology incorrectly derives a per-unit royalty from the
jury's lump-sum damages award. (Id. at 8.)
Samsung notes there was no jury finding that the $15.7
million award reflects such a per-unit royalty.
(Id.) According to Samsung, the evidence favors
treating the verdict as a fully paid-up lump sum given that
the parties presented only lump-sum license agreements at
trial. (Dkt. No. 391 at 5-6).
instead advocates for a per-day calculation, and provides two
options. First, if the Court decides the jury's award is
a fully paid-up lump sum, Samsung multiplies the jury's
award ($15.7 million) by the ratio of (a) the days from the
filing of the complaint through the expiration of the patents
(2091) to (b) the days from the beginning of Samsung's
sales through the expiration of the patents (2622). This
calculation would yield a royalty of $12, 520, 481.
(Id. at 4.) Alternatively, Samsung suggests the
Court multiply the jury's award by the ratio of (a) the
days from the complaint to trial (622) to (b) the days from
the beginning of Samsung's sales to trial (1221). This
calculation would yield a royalty of $8, 872, 236.
Id. at 5. Samsung contends Rembrandt's expert
also used a per-day calculation for a portion of the damages
he presented at trial. (Id. at 3-4.)
has three complaints regarding Samsung's methodology.
First, Rembrandt claims that Samsung's approach is
contrary to its representations to the Federal Circuit, where
Samsung supposedly agreed the parties could simply multiply
post-complaint sales by a per-unit royalty. (Dkt. No. 375 at
6-7 (citing Judge Taranto's questioning on the marking
issue)). Second, Rembrandt claims Samsung's approach
contradicts the Federal Circuit's mandate. (Id.
at 7.) Third, Rembrandt contends that Samsung's approach
contradicts the trial record, where Samsung's expert
opined the jury should award a lump sum paid-up royalty of
$500, 000 and he did not offer any type of per-day
calculation before the jury. (Id. at 7-8.)
patent cases, a motion for judgment as a matter of law (JMOL)
is a procedural issue reviewed under the law of the regional
circuit. Summit Tech., Inc. v.Nidek Co.,
363 F.3d 1219, 1223 (Fed. Cir. 2004). In the Fifth Circuit,
“a jury verdict must be upheld unless there is no
legally sufficient evidentiary basis for a reasonable jury to
find as the jury did.” Hiltgen v. Sumrall, 47
F.3d 695, 700 (5th Cir. 1995) (internal citation omitted);
see alsoFed. R. Civ. P. 50(a)(1) (stating JMOL may
be granted only if “the court finds that a reasonable
jury would not have a legally sufficient evidentiary basis to
find for the party on [an] issue.”). However, the court
may not make credibility determinations or weigh the
evidence, as those are solely functions of the jury. See
Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133,
150-51 (2000).The court should give great deference
to a ...