Judge Richard G. Andrews recently ruled on several post-trial motions in XpertUniverse, Inc. v. Cisco Systems, Inc., C.A. No. 09-157-RGA (D. Del. Nov. 20, 2013). The Court first denied the defendant’s motion for judgment as a matter of law on infringement, finding that the defendant failed to show that there was insufficient evidence from which the jury could find infringement and support its damages award. The Court also found that the evidence at trial supported the jury’s finding of no invalidity based on the on-sale bar. Next, the Court denied the defendant’s motion for an order that the patents were unenforceable due to inequitable conduct, explaining that the defendant failed to show clear and convincing evidence to support a finding that the plaintiff specifically intended to defraud the PTO.
The Court next addressed the plaintiff’s post-trial motions to alter or amend the judgment, for supplemental damages and an accounting of sales of a new product version, for pre- and post-judgment interest under 35 U.S.C. § 284 and 28 U.S.C. § 1961, and for a permanent injunction or, alternatively, ongoing royalties. Judge Andrews explained that “[a] party seeking to include a new product version in post-verdict relief must prove that the new version is not more than colorably different from the product found to infringe, and that the newly accused product actually infringes.” Id. at 24. The Court found that the new version appeared to be more than colorably different than the accused product, and decided that rather than conducting an evidentiary hearing on whether the new version infringed, it would deny the motion without prejudice to the plaintiff’s filing a new patent infringement suit with respect to the new version . Id. at 25. The Court then granted the motion for pre- judgment interest at the prime rate, compounded quarterly, and post-judgment interest pursuant to 28 U.S.C. § 1961.
The Court denied the plaintiff’s motion for a permanent injunction, finding that the plaintiff failed to show a likelihood of irreparable harm, because the harm alleged had already occurred, and was not prospective harm that could be prevented by an injunction. Id. at 28-29. Further, the plaintiff failed to show that money damages would not compensate it for the alleged harm, or that the balance of harms or public interest favored granting a permanent injunction. Id. at 30-31. With respect to the plaintiff’s alternative request for ongoing royalties, the Court explained that one of the accused products was no longer being sold, and only a new version of the other, which was not shown to infringe, was being sold. The Court therefore denied the request for ongoing royalties. Id. at 31-32. Finally, the Court found no basis to award attorneys’ fees under 35 U.S.C. § 285. Id. at 32-33.