Mentor Graphics Corporation v. EVE-USA, Inc.
3:10-cv-00954
D. Or.Mar 11, 2015Background
- Mentor Graphics sued EVE-USA and Synopsys for patent infringement; a jury (Oct 10, 2014) found Synopsys liable for direct and contributory infringement and awarded lost profits plus a reasonable royalty, totaling roughly $36.7 million for proved and unproved-but-royalty sales.
- After the verdict Mentor moved for an accounting; Synopsys moved for JMOL and a new trial on damages.
- District court held oral argument and addressed: whether a new trial on supplemental damages requires a jury, whether Mentor could seek pre-verdict supplemental damages, and whether JMOL should be granted on various infringement and damages theories.
- The court concluded a jury trial is required to determine supplemental damages (because essential facts post-verdict were not decided by the jury) but declined to resolve a potential res judicata "jury-trial trap" issue until it becomes ripe.
- The court allowed Mentor to seek pre-verdict supplemental damages (finding the jury likely did not consider sales after the discovery cutoff of Dec. 31, 2013).
- Rulings: Mentor’s motion for accounting denied; Synopsys’s JMOL granted only as to contributory infringement (JMOL denied on other claims); Synopsys’s new-trial-on-damages motion denied.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether district court must empanel a jury to decide supplemental damages | Mentor: Court has discretion; district court can decide supplemental damages without a jury (citing SynQor) | Synopsys: Seventh Amendment requires a jury when essential factual issues (e.g., post-verdict market structure) are at stake | Court: Jury trial required because resolving supplemental lost-profits would require factual findings (e.g., whether Intel two-supplier market continued) not decided by the jury |
| Whether ordering a supplemental jury trial would trigger res judicata bar ("jury-trial trap") | Mentor: Ordering a new jury could invoke Federal Circuit res judicata decisions to bar retrial | Synopsys: Will raise res judicata; timing supports dismissal | Court: Issue not ripe—declines to decide now; leaves to later motion practice |
| Whether Mentor may seek pre-verdict supplemental damages (sales after expert cutoff but before verdict) | Mentor: Entitled to damages for pre-verdict period not considered by jury | Synopsys: Verdict form ambiguous; jury may have awarded through trial, so awarding more would invade jury province | Court: Mentor may seek pre-verdict supplemental damages—evidence shows experts and jury focused on sales up to Dec. 31, 2013, so jury likely did not award post-2013 damages |
| Whether contributory infringement was proven | Mentor: Flexible and value-change probes practice the patent; that establishes contributory infringement | Synopsys: Accused probes have substantial non-infringing uses; Mentor failed to prove lack of substantial non-infringing use | Court: JMOL for Synopsys on contributory infringement—Mentor did not prove lack of substantial non-infringing uses |
Key Cases Cited
- SynQor, Inc. v. Artesyn Technologies, Inc., 709 F.3d 1365 (Fed. Cir. 2013) (district court has discretion on supplemental damages; jury right not implicated in all circumstances)
- Apple, Inc. v. Samsung Elecs. Co., Ltd., 926 F. Supp. 2d 1100 (N.D. Cal. 2013) (district court can award supplemental lost profits without a jury when no additional fact-finding is required; cannot set royalty rate without jury)
- In re Bill of Lading Transmission, 681 F.3d 1323 (Fed. Cir. 2012) (contributory infringement requires lack of substantial non-infringing uses)
- Telecordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365 (Fed. Cir. 2010) (district courts have broad discretion to interpret ambiguous verdict forms)
- Metso Minerals, Inc. v. Powerscreen Int’l Distrib. Ltd., 833 F. Supp. 2d 333 (E.D.N.Y. 2011) (awarding supplemental damages for pre-verdict infringement not considered by jury)
- Oscar Mayer Food Corp. v. Conagra, Inc., 869 F. Supp. 656 (W.D. Wis. 1994) (warning against awarding additional damages when unclear whether jury’s award included the disputed period)
- Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201 (Fed. Cir. 2014) (reiterates that damages should reflect value of patented feature absent entire-market-value justification)
- State Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573 (Fed. Cir. 1989) (entire market value rule permits whole-apparatus damages where patented feature drives consumer demand)
- Kori Corp. v. Wilco Marsh Buggies & Draglines, Inc., 761 F.2d 649 (Fed. Cir. 1985) (entire-market-value rule applied when unpatented components are normally sold together with patented component)