Not a Lexis Advance subscriber? Try it out for free.

Uniloc USA, Inc. v. Microsoft Corp.

United States Court of Appeals for the Federal Circuit

January 4, 2011, Decided

2010-1035, 2010-1055

Opinion

 [***1207]  [*1295]   Linn, Circuit Judge.

Uniloc USA, Inc. and Uniloc Singapore Private Limited (collectively, "Uniloc") appeal from the decision of the United States District Court for the District of Rhode Island granting Microsoft Corporation's ("Microsoft") motion for judgment as a matter of law ("JMOL") of non-infringement and no willful infringement  [**2] of asserted claims of Uniloc's U.S. Patent No. 5,490,216 ("'216 patent"), and, in the alternative, granting a new trial on infringement and willfulness. Uniloc USA, Inc. v. Microsoft Corp., 640 F. Supp. 2d 150 (D.R.I. Sept. 29, 2009) ("Uniloc II"). Uniloc also appeals the district court's alternative grant of a new trial on damages. Microsoft cross-appeals the district court's denial of its motion for JMOL of invalidity of the '216 patent. Id. at 179-83.

Because the jury's verdict on infringement was supported by substantial evidence, this court reverses the district court's grant of JMOL of non-infringement; this court also reverses the district court's alternative grant of a new trial on infringement as an abuse of discretion. Because the jury's verdict on willfulness was not supported by substantial evidence, this court affirms the district court's grant of JMOL of no willfulness; the district court's alternative grant of a new trial for willfulness is thus rendered moot. Because the jury's damages award was fundamentally tainted by the use of a legally inadequate methodology, this court affirms the grant of a new trial on damages. Finally, because the district court did not abuse  [**3] its discretion in determining that the jury verdict of no invalidity of the '216 patent [*1296]  was supported by substantial evidence, we affirm the district court's denial of Microsoft's motion for JMOL of invalidity.

I. Background

Read The Full CaseNot a Lexis Advance subscriber? Try it out for free.

Full case includes Shepard's, Headnotes, Legal Analytics from Lex Machina, and more.

632 F.3d 1292 *; 2011 U.S. App. LEXIS 11 **; 98 U.S.P.Q.2D (BNA) 1203 ***

UNILOC USA, INC. AND UNILOC SINGAPORE PRIVATE LIMITED, Plaintiffs-Appellants, v. MICROSOFT CORPORATION, Defendant-Cross Appellant.

Subsequent History: Rehearing denied by Uniloc USA, Inc. v. Microsoft Corp., 2011 U.S. App. LEXIS 7629 (Fed. Cir., Mar. 22, 2011)

Rehearing denied by, Rehearing, en banc, denied by Uniloc USA, Inc. v. Microsoft Corp., 420 Fed. Appx. 992, 2011 U.S. App. LEXIS 9928 (Fed. Cir., May 16, 2011)

Prior History:  [**1] Appeal from the United States District Court for the District of Rhode Island in Case No. 03-CV-0440, Judge William E. Smith.

Uniloc USA, Inc. v. Microsoft Corp., 640 F. Supp. 2d 150, 2009 U.S. Dist. LEXIS 89813 (D.R.I., 2009)

Disposition: AFFIRMED-IN-PART, REVERSED-IN-PART, VACATED-IN-PART, and REMANDED.

CORE TERMS

Microsoft, licensee, algorithm, license, infringement, patent, district court, user, software, damages, Activation, market value, generating, royalty, summation, products, new trial, hash, royalty rate, remote, calculation, registration, percent rule, negotiation, patentee, output, argues, hypothetical, invalidity, affirms

Patent Law, Infringement Actions, Burdens of Proof, Jurisdiction & Review, Standards of Review, Substantial Evidence, Civil Procedure, Trials, Judgment as Matter of Law, Postverdict Judgment, De Novo Review, Claim Interpretation, Means Plus Function Clauses, Jury Trials, Province of Court & Jury, Evidence, Admissibility, Expert Witnesses, Daubert Standard, Credibility of Witnesses, General Overview, Appeals, Abuse of Discretion, Judgments, Relief From Judgments, Motions for New Trials, Remedies, Damages, Increased Damages, Measure of Damages, Patentholder Losses, Reasonable Royalties, Burdens of Proof, Allocation, Expert Witnesses, Reviewability of Lower Court Decisions, Preservation for Review, Procedural Matters, Objections & Offers of Proof, Objections, Defenses, Patent Invalidity, Presumption of Validity, Grounds, Fact & Law Issues, Nonobviousness, Evidence