United States District Court, D. Massachusetts
SIONYX, LLC, and PRESIDENT AND FELLOWS OF HARVARD COLLEGE, Plaintiffs,
HAMAMATSU PHOTONICS K.K., HAMAMATSU CORP., OCEAN OPTICS, INC., and DOES 1-10, Defendants.
ORDER ON PLAINTIFFS' MOTION FOR ENHANCED DAMAGES
PURSUANT TO 35 U.S.C. § 284
Dennis Saylor IV United States District Judge.
have moved post-trial for an award of enhanced damages for
patent infringement pursuant to 35 U.S.C. § 284. Section
284 provides as follows:
Upon finding for the claimant the court shall award the
claimant damages adequate to compensate for the infringement,
but in no event less than a reasonable royalty for the use
made of the invention by the infringer, together with
interest and costs as fixed by the court. When the damages
are not found by a jury, the court shall assess them. In
either event the court may increase the damages up to three
times the amount found or assessed.
35 U.S.C. § 284.
jury in this case awarded $796, 469 in damages for breach of
contract and $580, 640 in damages for unjust enrichment.
Despite finding both that the patent was infringed and that
the infringement was willful, the jury awarded $0 in damages
substance, plaintiffs contend that damages for patent
infringement were “not found by a jury, ” within
the meaning of § 284, and thus it is for the court to
“assess” those damages, which must be no less
than a reasonable royalty. Based on the testimony of their
damages expert, plaintiffs contend that a reasonable royalty
in this case is $490, 889. Furthermore, plaintiffs contend,
because this case involved “willful and egregious
infringement, ” that amount should be trebled.
general matter, “a jury's verdict must be upheld
unless the facts and inferences, viewed in the light most
favorable to the verdict, point so strongly and
overwhelmingly in favor of the movant that a reasonable jury
could not have [returned the verdict].” Astro-Med,
Inc. v. Nihon Kohden America, Inc., 591 F.3d 1 (1st Cir.
2009) (internal citations omitted).
the basis of the jury's damages award is less than
perfectly clear. That lack of clarity, however, is almost
certainly a direct result of the manner in which plaintiffs
presented their damages claims.
damages calculations were presented by an expert witness,
Pauline Booth. Booth testified that plaintiffs' damages
included (1) $3, 672, 492 for breach of contract (consisting
of $2, 025, 105 for the loss of the Nikon relationship and
$1, 647, 387 for the loss of compensation from HPK); (2)
$580, 640 for unjust enrichment damages; and (3) $490, 889
for patent infringement. (Docket No. 764 at 27). She further
testified, however, that she “would expect that there
would be a certain amount of overlap” between the
damages attributable to the “breach of the
confidentiality agreement” and the damages attributable
to “the patent infringement.” (Id. at
29). Indeed, she testified that a jury might face “a
choice between those two” types of damages.
(Id.). She did not indicate what the amount of that
overlap might be. She did, however, note that the
“unjust enrichment part” of the damages was
“kind of separate” from the damages due for
breach of contract and patent infringement. (Id. at
Booth nor any other witness for the plaintiffs provided any
further clarification as to how the jury might go about
determining the amount of the overlap in order to render a
verdict that was both fair and non-duplicative. Counsel for
plaintiffs, in his closing argument and proposed jury
instructions, likewise failed to offer any actual or proposed
direction to the jury as to how to resolve that issue. The
jury was thus faced with this problem: (1) there was evidence
of contract damages; (2) there was evidence of patent
infringement damages; (3) those damages overlapped, in whole
or in part; (4) the jury was not permitted to award
duplicative damages; and (5) the jury was given no guidance
as to how to allocate damages between the two
the circumstances, it is certainly reasonable to interpret
the jury's verdict as a rational attempt to award damages
for both breach of contract and patent infringement while
avoiding an award of duplicative damages. Again, the jury
awarded $796, 469 for breach of contract; $580, 640 for
unjust enrichment; and (although it found that HPK had
willfully infringed '467 patent) $0 for patent
infringement. The most rational explanation is that the jury
believed that the patent infringement damages overlapped
entirely with the contract damages, and that the infringement
damages are thus subsumed within the contract damages award.
Certainly it is not unreasonable to interpret the verdict as
reflecting a finding that the $796, 469 includes the entire
$490, 889 plaintiffs sought as patent infringement damages,
plus an additional $305, 580 as breach of contract damages.
The fact that the jury separately awarded plaintiffs the
exact amount they sought as unjust enrichment ($580, 640)
reinforces that conclusion.
short, the facts and inferences, viewed in the light most
favorable to the verdict, suggest that the jury did in fact
assess patent-infringement damages. At a minimum, the
evidence does not point so strongly and overwhelmingly in the
opposite direction that a reasonable jury could not have
returned the verdict. The Court therefore will not
“assess” additional damages for patent
infringement under § 284.
the Court will also decline to treble the award of patent
damages to reflect HPK's willful conduct. To begin, it is
impossible to ascertain precisely what the jury found those
damages were, so it is impossible to treble that amount. To
the extent the jury specified the amount in the verdict form,
it was $0, which of course cannot be trebled. Finally,
section 284 provides that, upon a finding of willfulness, the
court “may increase the damages up to three
times the amount found or assessed.” 35 U.S.C. §
284 (emphasis added). “An award of enhanced damages,
” however, “does not necessarily flow from a
willfulness finding.” Presidio Components, Inc. v.
American Technical Ceramics Corp., 875 F.3d 1369, 1382
(Fed. Cir. 2017). “In determining whether enhanced
damages are appropriate, courts should consider the overall
circumstances of the case.” Id. It is
therefore unnecessary to overturn the verdict as a matter of
and for the foregoing reasons, plaintiffs' motion for
enhanced damages ...