United States District Court, D. Delaware
E. Farnan and Christine D. Haynes, RICHARDS, LAYTON &
FINGER, P.A., Wilmington, DE; Dominick A. Conde, Christopher
P. Borello and Damien N. Dombrowski, VENABLE LLP, New York,
NY, attorneys for Plaintiff.
B. Blumenfeld and Jeremy A. Tigan, MORRIS, NICHOLS, ARSHT
& TUNNELL LLP, Wilmington, DE; Martin J. Black, Kevin M.
Flannery, Robert Ashbrook, Sharon K. Gagliardi, DECHERT LLP,
Philadelphia, PA; Blake B. Greene, DECHERT LLP, Austin, TX;
Katherine A. Helm, DECHERT LLP, New York, NY, attorneys for
ANDREWS, U.S. DISTRICT JUDGE.
pending before the Court is Plaintiffs Motion for
Supplemental Damages, Enhanced Damages, an Ongoing Royalty,
Pre-and Post-Judgment Interest, and Attorney Fees. (D.I.
338). The parties have fully briefed the issues. (D.I. 339,
344, 350). For the following reasons, I grant the motion as
to supplemental damages, pre-judgment interest, post-judgment
interest, and an ongoing royalty, and deny the motion for
enhanced damages or attorney fees.
27, 2016, Plaintiff Vectura Limited sued Defendants
GlaxoSmithKline LLC and Glaxo Group Limited for direct and
induced infringement of U.S. Patent No. 8, 303, 991
("the '991 patent"). (D.I.I). The '991
patent relates to pharmaceutical compositions for inhalation.
(D.I. 82 at 1). Before trial, Plaintiff narrowed their
infringement case to assert direct infringement of claim 3 of
the '991 patent ("the asserted claim"). (D.I.
307). Plaintiff also pursued a claim of willful infringement
of the asserted claim. (Id. at 11). Defendants
asserted a noninfringement defense and an invalidity defense
under 35 U.S.C. § 103. (Id; D.I. 320 at 2).
of the '991 patent depends from claims 1 and 2. Together,
the claims read as follows:
1. Composite active particles for use in a pharmaceutical
composition for pulmonary administration, each composite
active particle comprising a particle of active material and
particulate additive material on the surface of that particle
of active material, wherein the composite active particles
have a mass median aerodynamic diameter of not more than 10
um, and wherein the additive material promotes the dispersion
of the composite active particles upon actuation of a
2. Composite active particles as claimed in claim 1, wherein
the additive material includes one or more of: an amino acid
or derivative thereof; a peptide or derivative thereof, a
phospholipid or derivative thereof, a surface active
material; or a metal stearate and derivative thereof.
3. Composite active particles as claimed in claim 2, wherein
the additive material includes magnesium stearate.
('991 patent, els. 1-3).
five-day trial, the jury returned the following verdict: (1)
Defendants infringed claim 3 of the '991 patent, (2)
claim 3 was not invalid for obviousness, (3) Plaintiff was
entitled to an ongoing royalty payment of three percent for a
total sum of $89, 712, 069 through December 31, 2018, and (4)
Defendants' infringement was willful. (D.I. 321). The
parties have now filed post-trial motions. Plaintiff requests
the following: (1) an award of supplemental damages at the
jury-determined royalty rate of 3% of U.S. sales of the
accused products from January 1, 2019 to the entry of
judgment on May 16, 2019; (2) enhancement of damages for the
period from August I, 2016 through May 16, 2019 by 33.3% for
Defendants' willful infringement; (3) an ongoing royalty
rate of 4% for post-judgment sales; (4) an award of
pre-judgment interest; (5) an award of post-judgment
interest; and (6) if I decline to enhance the damages award,
an award of reasonable attorney fees. (D.I. 339 at 1).
SUPPLEMENTAL DAMAGES AND INTEREST
jury awarded damages for the period from August 1, 2016 to
December 31, 2018. Supplemental damages cover the period from
January 1, 2019 to May 16, 2019, the date of judgment. (D.I.
339 at 3). Plaintiff seeks supplemental damages at the 3%
royalty rate determined by the jury. (Id.).
argue that Plaintiffs motion for supplemental damages and
interest is time-barred because the motion was filed one day
after the 28-day deadline stated in Federal Rule of Civil
Procedure 59(e). (D.I. 344 at 2). However, the Third Circuit
has recognized that "time limits that are not based on a
statute, such as the one governing Rule 59(e), are not
jurisdictional rules, but claim-processing rules."
Lizardo v. U.S., 619 F.3d 273, 277 (3d Cir. 2010).
"The 'unique circumstances' doctrine has been
applied by courts in certain unique situations, as its name
implies, to contravene the effects of untimely filings."
S.O.I.TEC, S.A. v. MEMC Elec. Materials, Inc., 2011
WL 2748725, at *8 (D. Del. July 13, 2011). The "unique
circumstances" doctrine may be appropriate to provide
relief under such claim-processing rules. As in
S.O.I.TEC, "(1) there was no miscalculation
involved; (2) it is apparent that [Plaintiff] relied on the
parties' agreement in filing its motion on [June 14,
2019]; and (3) there is no indication that either party knew
the one-day extension was inappropriate when requested."
Id. Thus, I determine that Plaintiffs motion for
supplemental damages and interest is not time-barred.
make no other argument regarding the propriety of
supplemental damages beyond asserting two corrections to
Plaintiffs supplemental damages number. (D.I. 344 at 2 n. 2).
Defendants assert that Ms. Schenk used "estimates for
sales for the period from April 1 through May 16" while
Dr. Kerr used actual sales and "did not account for a
deduction for the lesser of 4.5% net sales of £23.56M
annually, which she made in her original damages
calculation." (Id.) Ms. Schenk's
declaration admits that she relied on estimates for sales for
the period from April 1 through May 16. (D.I. 340, ¶ 5).
I will award Plaintiff supplemental damages for the period
from January 1, 2019 through May 16, 2019, based on the
actual sales data for that period and a 3% royalty rate.
interest should be awarded "absent some justification
for withholding such an award." Gen. Motors Corp. v.
Devex Corp., 461 U.S. 648, 657 (1983). Plaintiff seeks
pre-judgment interest at the prime rate, compounded
quarterly. (D.I. 339 at 23). Defendant argues that (1) the
motion should be denied because pre-judgment interest would
be a "windfall" overcompensating Plaintiff for the
use of its patents and (2) if the motion is granted,
pre-judgment interest should be calculated at the Treasury
Bill Rate, compounded quarterly. (D.I. 344 at 26). Defendants
assert that the Treasury rate is more appropriate given
Plaintiffs low borrowing rate. (Id.).
Court has noted that "the prime rate best compensate[s]
a patentee for lost revenues during the period of
infringement because the prime rate represents the cost of
borrowing money, which is a better measure of the harm
suffered as a result of the loss of the use of money over
time." Finjan Software, Ltd. v. Secure Computing
Corp., 2009 WL 2524495, at * 13 (D. Del. Aug. 18, 2009),
aff'd in part, rev'd in part on other
grounds, 626 F.3d 1197 (Fed. Cir. 2010) (citations and
quotation marks omitted). I do not believe Plaintiffs low
borrowing rate counsels otherwise.
will award pre-judgment interest at the prime rate,