In February 2015, a Delaware Jury sided with Intellectual Ventures in its case against Symantec — finding that the security software company was infringing two IV patents and awarding $17 million in damages. U.S. Patent Nos. 6,073,142 and 5,987,610.
In an interesting post-verdict letter, Judge Stark has noted that the damages may have to be reduced because of the lack of evidence that the patented features “drove demand” for the accused products. [1-10-cv-01067-LPS-691-PRIMARY DOCUMENT]. I should note here that the letter is expressly not (yet) an order.
At trial, Intellectual Ventures damages expert (Michael Wagner) took the risky strategy of presenting only testimony relating to damages under the entire market value rule and did not offer a fallback reasonable royalty position. That approach kept choices simple for the jury, but now it seems that the entire-market-value calculation likely lacks sufficient supporting evidence. If that testimony is disregarded then the only fall-back position is the damage evidence presented by Symantec’s expert. Although that figure is currently under seal, it is most certainly significantly less than the $17 million award.
Judge Stark has also ordered post-trial briefing on whether the asserted claims lack patentable subject matter under Section 101 with the hope of resolving that issue before a second trial where IV is asserting the same patents against Trend Micro. Obviously, a Section 101 ruling could eliminate the damage award in full.
= = = = =
About half of the award was associated with Symantec’s infringement of Claim 7 of the ‘610 patent. Claim 7 is a dependent claim (from claim 1), but I have rewritten it below in its equivalent independent form:
7. A virus screening method comprising the steps of:routing a call between a calling party and a called party of a telephone network;receiving, within the telephone network, computer data from a first party selected from the group consisting of the calling party and the called party;detecting, within the telephone network, a virus in the computer data; andin response to detecting the virus, inhibiting communication of at least a portion of the computer data from the telephone network to a second party selected from the group consisting of the calling party and the called party; and further comprising the step of determining that virus screening is to be applied to the call based upon at least one of an identification code of the calling party and an identification code of the called party.