In March 2021, Intel vs. VLSI made the news when a Texas court ordered Intel to pay $2.18 billion to VLSI for infringing two of its patents. The amount was the second-highest patent damages award in US History.
In the history of initial patent damages awarded in the US, few cases—including the one above—crossed the one billion dollar mark. Yes, a billion+ dollars in initial patent infringement awards.
You are curious to know more? I got you covered.
I’ve compiled a list of all the famous patent infringement cases in which the initial damages awarded have crossed the one billion dollar mark since 1991. Some were settled while pending appeal—CMU vs. Marvell—some are still under appeal, and some got remanded or reduced—Alcatel Lucent vs. Microsoft, for example.
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Let’s now examine why judges awarded large initial patent damages and how a defendant later decreased the amount.
1. Idenix vs Gilead Sciences Inc (2016) – $2.54B
Idenix vs. Gilead is an iconic case that is full of lessons for a plaintiff, a damage seeker, and a defendant. The plaintiff can learn what mistakes to avoid in such trials.
Andrew Carter of Ocean Tomo testified on behalf of Idenix. Using Carter’s analysis, Idenix’s attorney in the opening statement explained why they are seeking $2.54 billion in damages, which was a 10% royalty and not lost profit. Gilead’s damage expert countered it in the $73 million to $380 million range.
The jury awarded Idenix, after a week and a half trial, what they sought, 10% of royalties, for its infringed patent on Hepatitis C. Barry J. Herman of Womble Carlyle Sandridge & Rice LLP reviewed trial transcripts and came up with interesting lessons on how parties can approach a damages case. His analysis can be read here.
2. Intel vs VLSI Technology (2021) – $2.18 Billion
On March 3, 2021, a federal jury in Texas told Intel to pay $2.18 billion to VLSI Technology for infringing its 8 patents related to chip-making technology.
The amount makes it the second-largest patent damage award in the US and the third time a court has ordered a defendant to pay damages over $2 billion in the US. The jury recognized $1.5 billion in damages for one patent and $675 million for another.
Intel pledged to appeal.
One of the patents was originally issued in 2012 to Freescale Semiconductor Inc., and the other in 2010 to SigmaTel Inc. Freescale bought SigmaTel, which was, in turn, bought by NXP in 2015. The two patents were transferred to VLSI in 2019.
VLSI lawyer Morgan Chu of Irell & Manella said the patents cover inventions that increase the power and speed of processors, which is a key element in competition.
3. Pfizer vs Teva Pharmaceuticals (TEVA) & Sun Pharma (2013) – $2.15B
Pfizer vs Teva was another interesting case where generic drugmakers, for the first time, paid damages for marketing a generic copy of a drug patent that had yet to expire. This is also known as ‘at-risk launch.
Teva and Sun Pharma launched generic copies of Pfizer’s blockbuster drug Protonix in 2007 and 2008, respectively. The patent on the drug was going to expire in 2011.
Pfizer awarded $2.15B of which Teva and Sun Pharma agreed to pay $1.6 billion and $550 million respectively. Takeda received 36% of the settlement as the patent was held by Nycomed, Takeda’s Subsidiary, and was licensed to Wyeth, owned by Pfizer.
4. Centocor Inc vs Abbott Laboratories (2009) – $1.672B
Centocor was awarded $1.672 billion in 2009 when the jury found the asserted claims valid and Abbott, the defendant, liable for willful infringement. The Federal Circuit later reversed the decision as the Centocor patent did not satisfy the written description requirement. Prof Jasen of the University of Iowa College of Law has covered the case in detail on his blog Patentlyo.
5. Alcatel-Lucent vs Microsoft (2007) – $1.5B
Alcatel-Lucent awarded $1.53 billion in the final verdict in August 2007 where it claimed that Microsoft’s Windows Media Player infringed its patents. The infringement was filed by Lucent Technologies in 2003 which later in 2006 merged with Alcatel. The infringed patent covered MP3 and MPEG encoding and compression technology.
Later in Sep 2008 after a series of events, the CAFC published its opinion and dismissed the case on two grounds. First, the CAFC found Fraunhofer was a joint developer and thus co-owner of one patent thus lacked standing to sue. Second, Alcatel-Lucent failed to prove that Microsoft used its algorithm in its products. Hence the patent was not infringed.
Something Relevant to You: Have you checked our free patent search guide that can help you conduct a patent search on your own? You can check it here: Patent Searching Guide
6. Litton vs Honeywell (1993) – $1.2B
Litton vs Honeywell is one of the most contentious legal battles in the aerospace industry of recent times. Began in 1990, the litigation took 11 years to settle in 2001.
Litton, in 1990, filed a patent infringement and antitrust lawsuit against Honeywell in the U.S. District Court in Los Angeles. It contended that Honeywell used unfair business practices and also infringed its patent disclosing the use of gyroscopes on airplanes to dominate the aircraft navigational systems market.
The federal jury concluded that Honeywell deprived Litton of $1.2 billion – $830 million till the expiration of the patent and $360 million after the expiration of the patent. The FC later affirmed that Honeywell didn’t infringe Litton’s patent and remanded for consideration of infringement under DOE. The District Court, upon remand, granted SJ and JMOL for non-infringement.
7. Carnegie Mellon University vs Marvell Technology Group (2012) – $1.17B
A federal jury in Pittsburgh ordered, in 2012, Marvell to pay CMU $1.17 billion for finding Marvell had infringed a pair of patents by CMU related to increasing the accuracy of reading data by hard drive circuits.
The CAFC later reduced the award to $278 million and ordered a retrial over other damages issues. In 2016, both parties decided to settle the case for $750 million rather than litigate it further.
8. Apple vs Samsung (2012) – $1.04 billion
This patent war doesn’t need any introduction. Everyone working in the field of patents knows about the lawsuit and counter-suit between Apple and Samsung. Apple sued Samsung in April 2011 for patent infringement, and by July 2012, both companies were involved in 50 lawsuits around the globe.
This webpage has a full history of the smartphone patent war between the two giants.
9. Monsanto Company vs Pioneer Hi-Bred Int’l, Inc. (2012) – $1B
Monsanto awarded damages of $1B for a federal jury found DuPont willfully infringed Monsanto’s patent related to roundup ready soybean technology. DuPont already was a licensee of the patents but it modified the seed which was not part of the licensing agreement.
Later in 2013, both companies entered into a new licensing deal where DuPont agreed to pay Monsanto $1.75 billion. Further, the companies dropped patent infringement and an antitrust lawsuit against each other.
10. Polaroid vs Kodak (1991) – $925M
This again was one of the famous patent battles where huge damages were sought for patent infringement. Polaroid sued Kodak for infringing its 12 patents covering instant photography technology and sought triple damages which were amounted to $12 billion. Various WSJ analysts expected $1.5 billion to $2 billion in awards.
In October 1990, Kodak was ordered to pay Polaroid $909 million in damages, which was later amended to $925 million with interest. This is a little less than a billion dollars, but it is a hefty sum for the 1990s era.
This gets us to the end of our list. Would there be any cases in the future with higher amounts? It’s a matter of time. But do you wonder how these damages are determined? I can help you get answers. Read this next: How Are Damages Determined for Patent Infringement in the US?
Authored By: Vipin Singh, Market Research.
