9 block buster initial patent damages awards in the US
The number of patent cases filed in the US, on average 4500 to 5500 in the last two year, is way more than any other country in the world. Hence, there is no dearth of patent lawsuits in the US where huge patent damages were awarded to plaintiffs.
Having that in mind, we thought to compile nine initial damages awarded since 1991. Among these nine, eight touched the $1bn mark. Some among these 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.
So let’s have a look why judges awarded big initial patent damages first and how later a defendant decreased the amount. Before moving to details, I would like to quote Quavo.
History repeats itself. So you might wanna pay attention.
1. Idenix vs Gilead Sciences Inc (2016) – $2.54B
Idenix vs Gilead is the most recent iconic case which is full of lessons for plaintiff as damage seeker as well as a defendant for he can learn what mistakes to be avoided in such trails.
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 as damage which was 10% royalty and not lost profit. Gilead’s damage expert countered it with $73 million to $380 million range.
The jury awarded Idenix, after a week and a half trail, what they sought for — 10% of royalty, 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. Pfizer vs Teva Pharmaceuticals (TEVA) & Sun Pharma (2013) – $2.15B
Pfizer vs Teva was another interesting case of recent time where generic drugmakers, for the first time, paid damages for marketing a generic copy of a drug patent of which has yet to expired. 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.
3. Centocor Inc vs Abbott Laboratories (2009) – $1.672B
Centocor had 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 Centocor patent was not satisfying the written description requirement. Prof Jasen of University of Iowa College of Law has covered the case here on his blog Patentlyo.
4. Alcatel-Lucent vs Microsoft (2007) – $1.5B
Alcatel-Lucent awarded $1.53 billion in 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
5. Litton vs Honeywell (1993) – $1.2B
Litton vs Honeywell is one of the most contentious legal battles in 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.
6. Carnegie Mellon University vs Marvell Technology Group (2012) – $1.17B
A federal jury in Pittsburg ordered, in 2012, Marvell to pay CMU $1.17 billion for it found Marvell infringing a pair of patents by CMU related to increasing accuracy of reading data by hard drive circuits.
The CAFC later cut the award to $278 million and further ordered a re-trial over other damages issues. In 2016, both parties decided to settle the case at $750 million than litigating the case further.
7. Apple vs Samsung (2012) – $1.04 billion
This patent war doesn’t need any introduction. Everyone under the sun working in the field of patents knows suing and counter-suing game between Apple and Samsung. Apple sued Samsung in Apr 2011 for patent infringement suit 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 two giants.
8. 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 the 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 antitrust lawsuit against each other.
9. 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 awards.
In October 1990, Kodak was ordered to pay Polaroid $909 million in damages which later get amended to $925 million with interest.
So ignoring patents can be lethal.
Authored By: Vipin Singh, Research Analyst, Market Research