Published on:

District Court Denies Accounting and Ongoing Royalty Where Jury Instructions Told Jury to Award Damages That Would Put Patent Holder in Same Financial Position Had Infringement Not Occurred

Prism brought suit against Sprint alleging patent infringement of U.S. Patent Nos. 8,127,345 and 8,387,155 (the “Asserted Patents”). After the jury returned a $30 million award in favor of Prism, Prism filed a motion for an accounting and ongoing royalties. Prism requested an accounting for Sprint’s infringement after 2014 through the entry of judgment and to have a royalty set for ongoing infringement through the life of the Asserted Patents.

Sprint opposed the motion by asserting that both an accounting and ongoing royalties were improper because the jury instructions provided Prism compensation for past, present, and ongoing infringement. Prism responded that an accounting and ongoing royalties would grant Prism complete relief from Sprint’s infringement of the Asserted Patents.

The district court began its analysis by stating that “[u]nder 35 U.S.C. ยง 284, a prevailing patentee shall be awarded damages ‘adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.’ The district court has discretion to determine whether an ongoing royalty would be appropriate.”

Here, the district court agreed with Sprint that “the jury instructions were clear in providing Prism with complete relief from infringement. The jury was instructed that, ‘[T]he damages you award must be adequate to compensate Prism for the infringement . . . . Your damages award, if you reach this issue, should put Prism in approximately the same financial position that it would have been in had the infringement not occurred.’ (Filing No. 466 at 25). In addition, question 2 on the verdict form indicated that the jury would be awarding damages in the amount of a reasonable royalty. (See Filing No. 467).”

As a result of the jury instruction and verdict form, the district court concluded that it would be inappropriate to order an accounting and ongoing royalties “because the $30 million jury verdict represents the jury’s award of a reasonable royalty to compensate Prism for Sprint’s past, present, and ongoing infringement.”

Prism Technologies, LLC v. Sprint Spectrum L.P., Case No. 8:12CV123 (D. Neb. Dec. 18, 2015)

The authors of are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or