December 11, 2019

December 10, 2019

Subscribe to Latest Legal News and Analysis

December 09, 2019

Subscribe to Latest Legal News and Analysis

Damages Apportionment For Infringing A Method Claim When The Smallest Saleable Unit Performs Infringing and Non-Infringing Functions

The Federal Circuit’s damages apportionment jurisprudence is an ever-evolving area of the law. On January 10, 2018, a three judge panel of the Federal Circuit revisited the issue in connection with a patent covering a method for providing computer security in the case Finjan, Inc. v. Blue Coat Systems, Inc. While the Federal Circuit affirmed the damages award for 2 of 4 asserted patents, it reversed as to one computer security patent which was found to be infringed by a product that performed both infringing and non-infringing functions.

In calculating damages, the plaintiff sought the reasonable royalty they “would have received through arms-length bargaining.” Lucent Techs., Inc. v. Gateway, Inc.,580 F.3d 1301, 1324

(Fed. Cir. 2009). As explained by the Federal Circuit, calculating a reasonably royalty requires determining the combination of a royalty base and a royalty rate that together reflect “the value attributable to the infringing features of the product, and no more.” Ericsson, Inc. v. D– Link Sys., Inc., 773 F.3d 1201, 1226 (Fed. Cir. 2014). If the infringing technology does not make up the whole of the accused product, apportionment is required unless the patentee shows “that the demand for the entire product is attributable to the patented feature.” LaserDynamics, Inc. v. Quanta Comput., Inc., 694 F.3d 51, 67–68 (Fed. Cir. 2012).

At trial, the Plaintiff attempted to tie the royalty base to the incremental value of the infringement by multiplying the total number of users of the infringing technology by the percentage of web traffic that passed through the so-called smallest saleable unit performing the infringing method. The plaintiff argued its apportionment methodology was adequate because it was limited to the “smallest, identifiable technical component” tied to the footprint of the invention. The plaintiff further argued that its methodology was sufficient because it had demonstrated at trial that the non-infringing functions of the smallest saleable unit were unimportant.

The Federal Circuit rejected plaintiff’s arguments. First, the court explained that a royalty base based on the “smallest, identifiable technical component” does not adequately address the “essential requirement” that the “ultimate reasonable royalty award must be based on the incremental value that the patented invention adds to the end product.” Citing VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1326 (Fed. Cir. 2014), the Federal Circuit explained that if the smallest identifiable technical component contains non-infringing features, additional apportionment is still required. With respect to the plaintiff’s argument that the non-infringing functions were unimportant, the Federal Circuit stated that even though the infringing functionality was undoubtedly important, other non-infringing functions were also valued by customers. In sum, the Federal Circuit rejected the plaintiff’s royalty base argument and ruled that further apportionment was required to reflect the value of performing the patented function as compared to the value of performing unpatented functions.

This decision shows the Federal Circuit’s continued focus on apportionment in reasonable royalty calculations. From a plaintiff’s perspective, associating the invention with the smallest saleable unit is more important than ever. From a defendant’s perspective, this decision provides a good roadmap for attacking damages calculations based on failure to apportion.

©1994-2019 Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C. All Rights Reserved.


About this Author

Stephen Akerley, Intellectual Property Attorney, Mintz Levin Law Firm

Steve is a seasoned intellectual property trial lawyer who has successfully represented clients in District Courts across the United States, the US International Trade Commission and international tribunals. Currently, he is preparing for an ITC trial relating to high-speed memory modules.

His practice emphasizes patent litigation, representing patent owners and accused infringers in cases involving telecommunications, semiconductors, software, and biotech diagnostics. His experience handling both enforcement and defense representations informs his approach to developing and...

Philip Ducker, Mintz Levin, IP attorney, Of Counsel,Patent Litigation, International Trade Commission, Federal District Court, Trade Secrets, IP Due Diligence, Strategic IP Monetization & Licensing
Of Counsel

Philip’s practice is primarily focused on intellectual property matters with an emphasis on patents, trade secrets, trademarks, and trade dress. These matters involve a wide and diverse range of complex technologies, including electronics, mobile telecommunications, mobile devices, and medical devices. Philip has successfully represented clients in District Courts across the United States and before the US International Trade. In addition to litigation matters, Philip also regularly counsels clients on intellectual property acquisitions and divestitures.