United States District Court, D. Delaware
LEONARD P. STARK, District Judge.
Pending before the Court is Defendant Xilinx, Inc.'s Motion for Summary Judgment on Damages and Willfulness. (D.I. 472) For the reasons below, the motion is GRANTED IN PART and DENIED IN PART.
1. This is a patent infringement action originally brought by Intellectual Ventures I and II ("IV") against Xilinx and three other parties. (D.I. 1, 17) All parties except Xilinx have been dismissed. ( See D.I. 214, 259, 514) IV alleges that certain Xilinx products infringe U.S. Patent Nos. 6, 993, 669 ("the '669 Patent"), 5, 687, 325 ("the '325 Patent"), 6, 260, 087 ("the '087 Patent"), and 6, 272, 646 ("the '646 Patent") (collectively, "the Patents-in-Suit"). (D.I. 17) Fact and expert discovery are closed. ( See D.I. 429, 430) The Court issued a claim construction order on July 26, 2013. (D.I. 416) Trial is set for May 12, 2014. (D.I. 111 at 10) The Court heard oral argument on the pending motion on April 2, 2014. ( See Transcript ("Tr."))
2. In the present motion, Xilinx asks the Court to find, as a matter of law, that IV cannot prove:
(a) any damages, because its only support for damages comes from inadmissible expert opinion;
(b) any damages for induced infringement, because IV has no evidence concerning the actual use of the accused products;
(c) pre-suit damages for induced infringement, willful infringement, or enhanced damages;
(d) willful infringement, due to failure to satisfy the objective prong of willfulness; and
(e) that damages should include distributor sales. (DJ. 473 at 1)
3. Concurrent with the present motion for summary judgment, Xilinx filed a Daubert motion to exclude the testimony of Plaintiffs sole damages expert, Michael J. Wagner. (DJ. 470) By separate Memorandum Order, the Court has now granted that motion, thereby excluding Wagner's expert testimony for being unreliable. (DJ. 593) Subsequently, the Court sought the parties' proposals as to how to proceed, and IV represented that "ample proof still exists upon which a jury could calculate royalty damages that are reasonable based on the evidence to be presented at trial." (DJ. 596 at 2) The Court denied IV's request to supplement its damages report and ordered that "the case... proceed to trial on the current schedule and on all issues, subject to" rulings on the pending motions (D.I. 598), including the present motion.
4. Pursuant to Federal Rule of Civil Procedure 56(a), a movant is entitled to summary judgment "if the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law." "One of the principal purposes of the summary judgment rule is to isolate and dispose of factually unsupported claims or defenses." Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).
"When the moving party has carried its burden... the nonmoving party must come forward with "specific facts showing that there is a genuine issue for trial. " Matsushita Elec. Indus. Co., Ltd. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986) (emphasis in original; internal quotation marks omitted). The non-moving party must demonstrate more than "some metaphysical doubt as to the material facts." Id. at 586. "The mere existence of a scintilla of evidence in support of the plaintiffs position will be insufficient." Anderson v. Liberty Lobby, 477 U.S. 242, 252 (1986). "The movant is entitled to summary judgment where the nonmoving party has failed to make a sufficient showing on an essential element of her case with respect to which she has the burden of proof.'" Scheibe v. Fort James Corp., 276 F.Supp.2d 246, 253 (D. Del. 2003) (quoting Celotex, 477 U.S. at 322-23).
5. The Court now addresses each of the five grounds on which Xilinx has moved for summary judgment.
(a) Xilinx first asks for summary judgment that IV cannot prove any damages because IV's only support for damages comes from Wagner's expert opinion, which the Court has now stricken as unreliable. The Court, however, agrees with IV that there is sufficient evidence in the record, independent of Wagner's testimony, from which a jury could find a reasonable royalty. In particular, at least the IV-Xilinx Agreements of March 2005 and March 2008 (D.I. 476 Ex. 7, 8), and the testimony of Xilinx's damages expert, could reasonably be found to establish a reasonable royalty rate. Thus, IV has come forward with "specific facts showing that there is a genuine issue for ...