In the patent infringement action brought by Carnegie Mellon University (“Carnegie Mellon” or “CMU”) against Marvell Technology Group, LTD. (“Marvell’), the jury returned a verdict in favor of Carnegie Mellon in the amount of $1.17 billion, finding that Marvell had infringed two patents owned by Carnegie Mellon. The jury also found that Marvell’s infringement of the patents was willful, paving the way for the potential for enhanced damages as well as an award of attorneys’ fees. Marvell has vowed to challenge the damage award before the district court and, if necessary, the Federal Circuit.
A few days before the jury returned its verdict, Carnegie Mellon filed a motion to preclude Marvell from relying on an advice of counsel defense to defend against the charge of willful infringement. Carnegie Mellon filed a motion to strike the testimony of one of Marvell’s witnesses and also to preclude Marvell from relying on an advice of counsel defense.
With respect to the motion to strike, the district court reasoned as follows: “On this point, the Court finds that CMU did not pursue the nature of the communications with patent counsel that Dr. Wu disclosed during his discovery deposition, see Wu Deposition 7/29/10 at 23, at that time by filing a motion to compel him to provide further explication of his answers. CMU also did not challenge the privilege log provided by Marvell during discovery. Because no such motions were brought, the Court has not issued any orders addressing the allegedly privileged communications. (See Civ. A. No. 09-290, Docket Report). Given same, Marvell has not violated any orders of court and the Court finds that the “extreme sanction” of striking evidence is not appropriate. Konstantopoulos v. Westvaco Corp., 112 F.3d 710, 719 (3d Cir. 1997) (quoting Meyers v. Pennypack Woods Home Ownership Ass’n, 559 F.2d 894, 905 (3d Cir. 1977)) (striking of evidence is normally reserved for a “showing of willful deception or ‘flagrant disregard’ of a court order by the proponent of evidence.”). Further, CMU did not make any contemporaneous objection during Dr. Wu’s direct examination and seek to strike his testimony at that time. See 12/11/12 Transcript at 323. Instead, CMU objected during the in camera examination of Dr. Wu on December 13, 2012 and advised the Court that it may be filing a motion in limine at that time. See 12/13/12 Transcript at 74. The present motion, however, was not filed until four days later, on December 17, 2012 at 3:09 p.m. In light of Government of The Virgin Islands v. Archibald, 987 F.2d 180, 184 (3d Cir. 1993), and Rule 103(a)(1) of the Federal Rules of Evidence, and consistent with the Court’s prior rulings as to the motions to strike testimony of Mr. Creighton Hoffman (Docket No. 733), and Dr. Richard Blahut (Docket No. 735), the Court finds that CMU’s motion to strike the challenged testimony of Dr. Wu was not timely and therefore, waived.”
Turning to the issue of the advice of counsel defense, the district court found: “However, CMU’s Motion is granted to the extent that CMU seeks to preclude Marvell from arguing that it sought an opinion of counsel and obtained a favorable opinion of counsel with respect to whether Marvell was infringing the patented methods (Claim 2 of the ‘180 Patent and Claim 4 of the ‘839 Patent) through its NLD-type and MNP-type chips and simulators and its Kavcic-Viterbi simulator. To this end, Marvell has expressly stated throughout this litigation that it is not raising advice of counsel as a defense to the willfulness claims and makes the same assertion in its brief in opposition. (See Docket No. 746 at 3 (“Marvell does not intend to rely on the substance of any communications with counsel”)). Further, the facts presented at trial through the testimony of Dr. Wu do not establish that he received an opinion of counsel, favorable or unfavorable, with respect to these issues. He merely testified that the “prior art,” i.e., the ‘180 Patent and the ‘839 Patent, was given to Marvell’s patent counsel and that he later obtained his own patents (owned by a Marvell-entity). See 12/11/12 Transcript at 323; see also 12/12/12 Transcript at 90. The Court has repeatedly instructed the jury in this case that Marvell’s patents are not a defense to this suit. As such, Marvell cannot now – without putting the actual communications from counsel at issue – argue that its receipt of a patent implies or suggests that Marvell’s counsel returned a favorable opinion that Marvell’s NLD-type and MNP-type chips and simulators and the Kavcic-Viterbi simulator do not practice the patented methods of the asserted claims (claim 2 of the ‘180 Patent and claim 4 of the ‘839 Patent). 2 Therefore, Marvell is precluded from making such an argument during its closing.”
As a result, the district court determined that the following jury instruction was appropriate, taking care to avoid directing an adverse inference from Marvell’s lack of an advice of counsel defense: “In considering under the totality of the circumstances whether Marvell acted willfully, you may consider as one factor the lack of evidence that Marvell obtained a competent legal opinion. However, you may not assume that merely because Marvell did not obtain a legal opinion, the opinion would have been unfavorable. The absence of a lawyer’s opinion, by itself, is insufficient to support a finding of willfulness.”
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Given the size of the verdict and Marvell’s obvious determination to challenge the verdict at the district and before the Federal Circuit, we can expect Marvell to challenge not only the damage calculation but also the finding of willfulness and the jury instruction quoted above.
Carnegie Mellon University v. Marvell Technology Group, LTD. et al., Case No. 09-290 (W.D. Penn. Dec. 20, 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.