VIA Asks Fed. Circ. To Gut $3M IP Award Over Chipset
Share us on: By Jimmy Hoover
Law360, Washington (February 1, 2016, 4:55 PM ET) -- Manufacturer VIA Technologies pressed a Federal Circuit panel Monday to nix a $3 million judgment against it for infringing OPTi’s computer chipset patent, arguing OPTi failed to show how devices VIA sold copied the patent.
The expert testimony OPTi relied on to convince a jury that VIA infringed its “presnoop patents” through sales of logic chipsets, motherboards and other technology, used a flawed analysis of the accused devices under the infringement theory known as the doctrine of equivalents, VIA told the panel.
According to VIA, Dr. 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,” Brian A. Carpenter of Buether Joe & Carpenter LLC, an attorney for VIA, said
That kind of approach to the equivalents analysis has “no precedent,” he added.
Michael L. Brody, of Winston & Strawn LLP, fought those characterizations Monday, saying Dr. Smith conducted a lengthy analysis of all the structures of the accused devices, comparing them to the patent.
“It was a classic means plus function analysis,” Brody said. “We respectfully submit that the jury’s determination on that was fine.”
Following a trial in May 2013, a Texas federal jury handed a $2.1 million verdict to OPTi in the suit brought against VIA for infringing patents related to predictive snooping technology, ruling that VIA infringed one of the patents. The jury found that Taiwan-based VIA and its American counterpart directly infringed and induced others to infringe OPTi’s U.S. Patent Number 5,710,906 and, despite VIA's efforts, that the disputed claim in the patent was not invalid. A federal judge handed down a final judgment, including total damages more than $3 million, in September.
On July 30, 2010, 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 whose operations infringe the presnoop patents and said the alleged infringements were willful and deliberate.
OPTi listed SIS’s SiS964 Southbridge and VIA’s VT8237A Southbridge among the products that allegedly infringed U.S. Patent Numbers 5,710,906 and 6,405,291. The company sought triple damages for willful patent infringement, as well as a permanent injunction and attorneys’ fees, according to the original complaint.
In October of last year, U.S. District Judge Rodney Gilstrap granted OPTi’s and SIS’s joint motion to dismiss the claims against SIS with prejudice after the companies announced a settlement for an undisclosed amount.
In January, OPTi and VIA agreed to dismiss all claims and counterclaims regarding U.S. Patent Number 6,405,291. By the time of trial in May, OPTi was alleging that VIA alone infringed and induced infringement of claim 26 of the ‘906 patent.
The jury sided with OPTi, finding that VIA directly infringed the '906 patent and induced others to do so. The jury awarded OPTi $2,111,405 in damages to compensate for VIA's infringement. VIA also will be required to pay OPTi an ongoing royalty as it continues to sell infringing products, according to court documents.
At the conclusion of the jury trial, 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, and U.S. District Judge Rodney Gilstrap affirmed that finding Monday, awarding OPTi $2.1 million in compensatory damages and nearly $974,000 in pre-judgment interest.
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 David McAfee. Editing by Ben Gu |
