Fed. Circ. Affirms OPTi's $3M Patent Win Over Snooping TechBy Matthew Bultman
Law360, New York (February 8, 2016, 4:45 PM ET) -- The Federal Circuit on Monday left in place a $3 million award that VIA Technologies Inc., a maker of computer parts, was ordered to pay after a Texas federal jury found it infringed an OPTi Inc. patent related to predictive snooping technology.
In a one-line order, a three-judge panel affirmed a judgment that U.S. District Judge Rodney Gilstrap entered in September 2013 awarding OPTi $2.1 million in compensatory damages and nearly $974,000 in prejudgment interest.
Jurors months before had found Taiwan-based VIA and its American counterpart infringed OPTi’s “presnoop patent” through sales of chipsets and other computer technology.
Brian A. Carpenter of Buether Joe & Carpenter LLC, an attorney for VIA, told Law360 the company was reviewing the decision and considering its options. An attorney for OPTi declined to comment.
Barring a request for a rehearing or an appeal to the U.S. Supreme Court, the decision likely caps a case that began in July 2010, when OPTi hit Silicon Integrated Systems Corp. and VIA with a lawsuit for patent infringement.
OPTi claimed that SIS and VIA induced third-party manufacturers to make and sell products that infringed two of its presnoop patents. It dropped claims against SIS in 2012 after the two companies reached an undisclosed settlement.
By the time of trial in May 2013, OPTi had also dropped claims against VIA with respect to one of the patents.
Jurors ultimately found VIA directly infringed the remaining patent and induced others to do so, and awarded OPTi $2.11 million in damages. VIA was also ordered to pay OPTi an ongoing royalty as it continues to sell infringing products.
Later, the court held a nonjury trial to hear further evidence presented solely with respect to VIA's defenses of laches and equitable estoppel. The court concluded that VIA did not demonstrate that OPTi’s recovery of damages should be limited.
On appeal, VIA argued that OPTi had failed to show how devices VIA sold copied the patent. It said OPTi used a flawed analysis of the accused devices under the doctrine of equivalents.
In particular, it contended Alan Smith’s expert report grossly “oversimplified” the infringement analysis required by the equivalents doctrine, failing to include any identification or structural differences between the accused devices.
“Dr. Smith simply failed to identify any differences much less make any comparisons between corresponding and accused structures,” Carpenter told the appeals court during oral arguments last week.
That kind of approach to the equivalents analysis has “no precedent,” he added.
Michael L. Brody of Winston & Strawn LLP, attorney for OPTi, fought those characterizations and said Smith analyzed all the structures of the accused devices, comparing them with the patent.
OPTi had also filed a cross-appeal in the case, challenging the jury’s finding that VIA's infringement was not willful. The appeals court affirmed that aspect of the jury's finding on Monday as well.
The patent-in-suit is U.S. Patent Number 5,710,906.
Judges Alan D. Lourie, Timothy B. Dyk and Todd M. Hughes sat on the panel for the Federal Circuit.
OPTi is represented by Michael L. Brody, Geoffrey P. Eaton and James E. McComb of Winston & Strawn LLP.
VIA is represented by Brian A. Carpenter and Eric W. Buether of Buether Joe & Carpenter LLC and Timothy J.H. Craddock of Klemchuk LLP.
The case is OPTi Inc. v. VIA Technologies, Inc., case number 13-1670, in the U.S. Court of Appeals for the Federal Circuit.
--Additional reporting by Jimmy Hoover. Editing by Brian Baresch.
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