Court Denies Marvell's Emergency Motion to Strike Carnegie Mellon's Attempt to Include Noninfringing Sales of Chips That Are Never Used in the United States as Untimely and an Improper Attempt at Reconsideration

December 10, 2012

During jury selection in this patent infringement action, Marvell Technology Group, LTD ("Marvell") filed an emergency motion to strike a portion of Carnegie Mellon's ('CMU") damages. In the case, CMU asserted that Marvell infringed two of its patents directed to sequence detection in high density magnetic recording devices, specifically to high density magnetic recording sequence detectors. During trial, CMU intends to prove that Marvell produces read channel chips that perform the patented method when used and ultimately sold through an extensive sales cycle. The sales cycle involves alleged infringement when Marvell's chips are used in the United States to secure a design win when a customer decides to use Marvell's design for chips the customer will purchase.

Marvell's emergency motion addressed potential damages as to accused chips sold by Marvell outside of the United States. This issue previously arose in Marvell's motion for partial summary judgment, which the district court denied. Marvell asserted that the district court should revisit its prior ruling given additional information and arguments at this stage of the case. CMU objected and asserted that Marvell's motion was procedurally improper.

The district court agreed with CMU and found that Marvell's emergency motion was an untimely motion for reconsideration. The district court then noted that even timely motions for reconsideration are granted sparingly and the purpose of a motion for reconsideration is to correct manifest errors of law or fact or to present newly discovered evidence. Here, there was neither.

Marvell apparently relied on the argument that there was new law that should be considered to prevent a manifest injustice. But the district court noted that Marvell had only submitted two new cases that were not previously before the district court and that these cases were nonbinding district court cases that were nearly twenty years old. The district court found neither case persuasive.

In addition, the district court found that there was no new evidence that was not available earlier to the district court. To make this finding, the district court noted that all of the financial information concerning Marvell's sales of chips had been fully discovered and updated. The district court therefore was not impressed with Marvell's attempt to block CMU's use of Marvell's sales information provided during the discovery period. "The Court has reviewed all the briefs and argument in this case, both from the earlier Summary Judgment proceedings and the proceedings presently before the Court. In addition, the Court has reviewed all of the cases cited by both parties, and finds nothing which undermines its previous ruling. Admittedly, there is no case exactly on point. On the other hand, CMU has put forth sufficient facts to support its theory, albeit novel. CMU intends to prove that the alleged infringing method is used during Marvell's sales cycle, which is performed here in the Untied States, where both its engineers and customers are located. (Docket No. 665). CMU seeks damages for this sales cycle infringement by claiming a reasonable royalty rate on all of the chips that are produced during the sales cycle and purchased based on the result of said cycle. (Id.) In this Court's view, one of the simplest ways to determine the value of an infringing use of a patented method during research is to ascertain how many sales were made based on that infringing use. (Docket No. 441); see Lucent Technologies, Inc. v. Gateway, Inc., 580 F.3d 1301, 1324 (Fed. Cir. 2009). Indeed, sales which arise only due to infringement, as in CMU's theory, are a proxy at least as reasonable as estimated hours of use. See Hansen v. Alpine Valley Ski Area, Inc. 718 F.2d 1075, 1080-81 (Fed. Cir. 1983) or the sale of products entirely unrelated to the patent's subject matter. See Trans-World Manufacturing Corp. v. Al Nyman & Sons, Inc. 750 F. 2d 1552, 1569 (Fed. Cir. 1984)."

Finally, the district court noted that it had simply denied Marvell's prior motion for summary judgment and that CMU would still have the burden of proof in front of the jury. "Additionally, as the Court noted at oral argument, it has simply denied Marvell's prior motion for summary judgment; it has never granted summary judgment in favor of CMU's damages theory. (Docket No. 441). CMU still has the burden of proving its damages theory at trial. And, as the Court has reminded the parties on numerous occasions, "vigorous cross-examination, presentation of contrary evidence, and careful instruction on the burden of proof are the traditional and appropriate means of attacking shaky but admissible evidence." Simon v. Weissmann, 301 F. App's 107, 116 (3d Cir. 2008) (quoting Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993)); (Docket Nos. 610, 614)."

Carnegie Mellon University v. Marvell Technology Group, LTD, et al., Case No. 09-290 (W.D. Penn. Nov. 29, 2012)

The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.