After the jury concluded that LG Electronics had willfully infringed a patent held by Mondis Technology and awarded $45 million in damages, the district court let stand the willful infringement determination but vacated the damage award of $45 million. The district court concluded that the damage award was based on an invalid theory because it was not properly apportioned under relevant Federal Circuit law. LG Electronics then asserted that Mondis had waived the right to a damage award based on its reliance of an invalid damage theory under Promega Corp. v. Life Techs. Corp., 875 F.3d 651, 666 (Fed. Cir. 2017).
In Promega, the Federal Circuit held:
But, as explained above, a patent owner may waive its right to a damages award when it deliberately abandons valid theories of recovery in a singular pursuit of an ultimately invalid damages theory. When a plaintiff deliberately takes a risk by relying at trial exclusively on a damages theory that ultimately proves unsuccessful, and, when challenged, does not dispute that it failed to present an alternative case for damages, a district court does not abuse its discretion by declining to give that plaintiff multiple chances to correct deficiencies in its arguments or the record.
In asserting that it had not waived its right to a damage award, Mondis relied on LG Electronics’ expert’s testimony that, properly apportioned, Mondis was entitled to damages in the amount of $1.9 million. The district court concluded that this was sufficient evidence from which a jury could determine a reasonable award of damages. Therefore, it would be improper to grant a motion for judgment as a matter of law that there was insufficient evidence to support an award of damages.
The district court also determined that a new trial on the issue of damages would be more appropriate than a remittitur: “Although, at trial, Mondis relied principally on a theory of damages that did not meet the requirements of Federal Circuit law, the record contains substantial evidence from which a reasonable jury could make a damages determination that would be legally valid. The best and most just remedy here is a new trial.”
Accordingly, the district court ordered a new trial on the issue of damages and, although it limited the new trial to the evidence already presented in the first trial, it permitted Mondis to submit a new damage report based solely on that evidence.
Mondis Technology LTD v. LG Electronics, Inc., Case No. 15-4431 (SRC) (D.N.J. April 2020)
The authors of www.PatentLawyerBlog.com are patent trial lawyers at Jeffer Mangels Butler & Mitchell LLP. For more information about this case, contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.