IP: Going for broke on damages claims

Lack of damages proofs dooms entire case for both parties in Apple v. Motorola

My last article reviewed the May 22 opinion of 7th Circuit Judge Richard A. Posner, who is sitting by designation in the Northern District of Illinois as the trial judge in Apple Inc. v. Motorola, Inc. In that opinion, Judge Posner applied the Daubert principles to strike patent damages experts for both sides.

After issuing his opinion, Judge Posner questioned whether the case had lost its legs and should be dismissed. On June 22, the court answered his question with a resounding “yes.” The opinion provides an excellent example of what can happen when part of a case is gutted.

Without deciding this jurisdictional question, the court addressed the requirement that it “shall award” the prevailing patentee “damages adequate to compensate for the infringement.” Faced with this “shall award” requirement, Judge Posner focused on the factors set out in Georgia-Pacific Corp. v. United State Plywood Corp. His view on the Georgia-Pacific factors is likely the same as that of every trial attorney who has relied on them in a trial: “Could a judge or jury really balance 15 or more factors and come up with anything resembling an objective assessment?”

On these factors, the court simply remarked that Apple did not present admissible evidence directed to them. Thus, Judge Posner concluded that Apple provided no evidence of any patent infringement damages.

Indeed, the court carried this analysis one step farther, concluding that because the parties failed to present evidence on the actual damages, neither could prove that monetary damages were inadequate. In the words, of the court: “True, neither [party] has presented sufficient evidence of damages to withstand summary judgment—but that is not because damages are impossible to calculate with reasonable certainty and are therefore an inadequate remedy; it’s because the parties have failed to present enough evidence to create a triable issue.”

These failures of proofs meant that neither party could meet the injunction standard.

Contributing Author

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Donald Rupert

Donald W. Rupert is a litigation partner at Marshall, Gerstein & Borun LLP.  For over 35 years, Don has litigated patent and other...

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