Whitserve, LLC v. Computer Packages, Inc.
694 F.3d 10
| Fed. Cir. | 2012Background
- WhitServe, LLC sued CPi for infringing four WhitServe patents ('468 Family and '007) owned by WhitServe and listing Whitmyer as inventor.
- CPi's products (Desktop EARS, TERMS, CPi Online, Hosted EARS, Hosted PMS) allegedly automate reminders for patent/trademark fee deadlines, with hosted versions on CPi servers.
- The jury found CPi infringed, not anticipated (save for claim 10 of the '007 Patent), willful infringement, and awarded $8,378,145 in damages.
- WhitServe sought post-trial relief (injunction, enhanced damages, prejudgment interest, fees, accounting) which the district court denied as moot or on merits.
- CPi appealed; WhitServe and Whitmyer cross-appealed; the court reviews JMOL de novo and damages under Second Circuit rules, remanding for damages and other relief determinations.
- This appeal consolidates infringement, anticipation, damages, and post-trial relief issues with the panel affirming most findings but vacating damages and remanding on multiple post-trial questions.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Infringement of the '468 Patent under automaticity | WhitServe argues CPi's manual input defeats automatic querying. | CPi contends manual steps do not violate 'automatic' under the claim terms. | Substantial evidence supports infringement; manual steps do not defeat automatic querying. |
| Anticipation of the '007 Patent | WhitServe argues Schrader does not anticipate all '007 elements. | CPi asserts Schrader anticipates claim 10 and maybe more. | Claim 10 anticipated by Schrader; remaining claims not shown to be anticipated. |
| Damages award adequacy | WhitServe contends damages reasonable and supported by Georgia-Pacific factors. | CPi argues damages were unsupported, overbroad, and speculative. | Damages vacated and remanded for a new damages trial; award deemed unsupported. |
| Relief for ongoing infringement (injunction/ongoing royalties) | WhitServe seeks permanent injunction or ongoing royalty to address ongoing infringement. | CPi argues irreparable harm not shown and paid-up license was effectively given. | Remanded for proper consideration of prospective relief and its justification. |
| Prejudgment interest, enhanced damages, fees, and post-trial accounting | WhitServe seeks prejudgment interest, enhanced damages, and fees; accounting for post-verdict harm. | CPi disputes these or contends mootness due to damages ruling. | Remanded for proper consideration and explanation; not all issues resolved. |
Key Cases Cited
- Cross v. N.Y.C. Transit Auth., 417 F.3d 241 (2d Cir. 2005) (evidence standard for JMOL and substantial evidence review)
- AMW Materials Testing, Inc. v. Town of Babylon, 584 F.3d 436 (2d Cir. 2009) (standard for JMOL and post-trial relief review in civil cases)
- Koito Manufacturing Co. v. Turn-Key-Tech, LLC, 381 F.3d 1142 (Fed. Cir. 2004) (general/concise testimony insufficient to show anticipation)
- Lucent Technologies v. Gateway, Inc., 580 F.3d 1301 (Fed. Cir. 2009) (damages proof and Georgia-Pacific factor analysis standards)
- Unisplay, S.A. v. American Electronics & Sign Co., 69 F.3d 512 (Fed. Cir. 1995) (evidentiary sufficiency and damage methodology considerations)
- Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197 (Fed. Cir. 2010) (reasonableness of royalty analysis and evidentiary standards)
- eBay, Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) (injunction standards and equitable discretion)