Marvell faces record patent damages
A Pittsburgh university has urged a judge to triple the $1.17 billion fine given to Marvell Technology for infringing patents relating to semiconductors.
In December last year a jury said chip-maker Marvell infringed two patents owned by Carnegie Mellon University. The patents are used in technology that allows hard disk drives to read and write data from magnetic disks.
The university filed papers at the US District Court for the Western District of Pennsylvania on Monday, formally asking Judge Nora Barry Fischer to triple the damages because the infringement was wilful. Carnegie said Marvell knowingly and repeatedly copied the patents.
On top of more than $3.5 billion damages, the university wants $321 million in pre-judgment interest, which covers the time between the first infringement (2003) and January this year, when the court formally recognised the jury’s verdict.
Carnegie also wants a permanent injunction, saying Marvell is continuing to sell the technology incorporating the infringed patents.
The university sued the chip-maker in 2009 over two patents acquired in 2001 and 2002. Carnegie said the infringement let Marvell sell billions of chips using the technology.
In December 2012, a jury ordered Marvell to pay damages of $1.17 billion, one of the largest fines in US patent litigation history and nearly twice Marvell’s profit in the latest fiscal year.
The judge, who is set to hear the case on May 1 at the Pittsburgh district court, can increase the damages, even triple them, only if she feels Marvell’s infringement was objectively wilful. Carnegie must clearly and convincingly show that the Marvell acted despite an objectively high likelihood that its actions infringed a valid patent.
An enhancement could lead to the largest ever fine handed down by a jury in US patent litigation history. According to statistics from Lex Machina, which compiles IP litigation data, the largest fine to date is $1.67 billion, from a case between Centocor Ortho Biotech and Abbot Laboratories in 2009.
Michael Powell, partner at Baker Donelson LLP in Atlanta, said he expects the judge to enhance the damages but was unsure whether she would triple them.
“While the jury did not directly find wilful infringement, it said Marvell had knowledge of patents while infringing them, it had no objectively reasonable defences to the infringement claims and it should have known it was infringing the patents. These all suggest wilful infringement.”
“Marvell needs a hail mary pass to avoid enhanced damages,” he said. “This could mean the judge ruling that Marvell’s knowledge of the patents and the infringement was a close call.”
He said a permanent injunction was likely, given the jury’s reasoning about Marvell’s infringing actions: “If the patents are still in force, how can the court not implement an injunction?”
Such an order would force Marvell to design a workaround to avoid infringement.
A lawyer representing Carnegie said Marvell will probably ask the judge to reverse the jury’s ruling from December 2012, ahead of oral arguments in May.
Marvell can appeal to the US Court of Appeals for the Federal Circuit, if the judge upholds the jury’s ruling in May. The law firm representing Marvell, Quinn Emanuel Urquhart LLP, did not respond to a request for comment.
