Cirba Inc. v. VMware, Inc.

Opinion

MEMORANDUM ORDER

In this Order, the Court addresses all pending motions, including the parties' post-trial motions, and orders a new, consolidated trial to be held (on a date to be determined) not before 2022.

A Brief Description of Relevant Case History

This is a patent infringement suit between competitors in the field of computer infrastructure optimization, including virtual machines. (See C.A. No. 19-742 D.I. 1)¹ On April 25, 2019, Plaintiffs Cirba, Inc. ("Inc.") and Cirba IP, Inc. ("IP" and, together with Inc., hereinafter "Plaintiffs" [*4]  or "Densify") sued VMWARE, Inc. ("VMWARE" or "Defendant") for infringing U.S. Patent Nos. 8,209,687 ("'687 patent") and 9,654,367 ("'367 patent") and for unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125(a), deceptive trade practices under Delaware law, and common law trademark infringement (the latter three claims relating to VMWARE's alleged misuse of the "Densify Marks," i.e., "DENSIFY," "DENSIFICATION," and "DENSIFYING"). (Id.) On May 6, 2019, Plaintiffs moved for a preliminary injunction (DI 11), which the Court denied on August 6, 2019 following an all-day hearing (D.I. 137; see also D.I. 138). Although the Court found a lack of irreparable harm, the Court agreed to hold an expedited trial, to reduce whatever risk there may have been that VMWARE's alleged infringement would cause Plaintiffs further harm before the case could be decided on the merits. (See D.I. 138 at 196-200) Accordingly, the Court presided over a nine-day jury trial in January 2020, which resulted in a verdict largely in favor of Plaintiffs. (See D.I. 550; see also D.I. 58797) Specifically, the jury found: VMWARE willfully infringed the '687 and '367 patents; the '687 patent's claims were not invalid; and VMWARE owed Plaintiffs $235,724,765 in damages for infringement of the '687 patent and $1,112,111 in damages [*5]  for infringement of the '367 patent. (D.I. 550) The jury found that VMWARE was not liable for trademark infringement or for violating the Delaware Deceptive Trade Practices Act. (Id.)

In the meantime, VMWARE filed counterclaims in the 19-742 case (i.e., the case that went to trial on Plaintiffs' patent and trademark allegations in January 2020). (See D.I. 150) In its counterclaims, VMWARE alleges that Inc. infringes four VMWARE patents: U.S. Patent Nos. 8,875,266; 10,069,752; 8,336,049; and 9,521,151. (Id.)

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