CAFC: Damage Recovery for Infringing Sales Precluded Later Recovery for Infringing Use

AIPLATalk193Glenayre Electronics v. Jackson (Fed. Cir. 2006, 04–1568).

Jackson won a $12 million jury verdict for infringement.  However, those damages were remitted by the court who found that “the jury’s $12,000,000 damages award reflects a whopping royalty rate of 30%, a rate five times greater than the very highest rate disclosed in any license agreement offered into evidence.” Instead, the lower court found that the maximum reasonable royalty would be 6% of sales plus a $250,000 lump-sum payment, and proposed a remittitur to $2.65 million as an alternative to a new trial. Jackson accepted the new award, but also pursued claims against Glenayre for indirect infringement based on activity of its customers. The lower court refused to allow those claims to proceed — finding that Jackson had been fully compensated by the initial verdict.

On appeal, the CAFC found that Jackson could not “double dip.”

Jackson’s theory is that he has an absolute, inviolable right to pursue an additional damages award based on Glenayre’s customers’ use of infringing products sold by Glenayre, even though he has already collected compensation for direct infringement by Glenayre because of the same sales. We disagree.

It is possible that a plaintiff could get separate damages for sales and use.  However, in this case, Jackson had presented evidence of customer use during the original trial, and the CAFC found that those damages were included within the $2.65 million award calculation.

Judge Newman dissents:

The district court, today affirmed by the panel majority, incorrectly held that there cannot be contributory infringement by a direct infringer. From this ruling and its flawed premises, I respectfully dissent. . .

The panel majority departs in major ways from precedent, in holding that, as a matter of law, there is no liability for a manufacturer’s contributory infringement, or even for direct infringement by users of an infringing device, when damages have been accepted that are limited to the manufacturer’s direct infringement. See Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964) (Aro II). . .  

The [Supreme] Court (in Birdsell) established that while sales by the patentee or an authorized licensee can trigger the first sale doctrine, the collection of damages for infringement does not. Payment of damages by an infringing manufacturer is not an automatic “implied license” to itself or others to continue the infringement.