A judge in the U.S. District Court in the Eastern District of Texas ordered Samsung Electronic Co. Ltd. and affiliates to pay $20.9 million in damages to Imperium IP Holdings (Cayman) Ltd., a non practicing entity, after approving a near tripling the original $6.97 million jury award because of a finding of willful infringement.
The ruling by Judge Amos Mazzant III cited the U.S. Supreme Court’s ruling in Halo Electronics, Inc. v. Pulse Electronics Inc, giving district court judges discretion to award enhance damages for the most egregious misconduct.
“This ruling may sensitize large companies to issues around willfulness in the post-Halo Electronics era,” said Mark Gober, a senior director at 3LP Advisors in Silicon Valley.
Imperium brought its enforcement action against Samsung and its affiliates in June 2014 alleging infringement of U.S. Patent Nos. 6,271,884, entitled “Image Flicker Reduction with Fluorescent Lighting,” 6,836,290, entitled “Combined Single-Ended and Differential Signaling Interface;” and 7,092,029, entitled “Strobe Lighting System for Digital Images.”
The jury returned a verdict of infringement on all three patents, though it found the ‘290 patent to be invalid as obvious. It awarded $4.87 million for infringement of the ‘884 patent and $2.13 million fro infringement of the ‘029 patent.
According to Law 360, Imperium won settlements from smartphone makers Apple, Nokia, Motorola, RIM, Kyocera Communications Inc., LG Electronics USA Inc. and Sony Ericsson Mobile Communications Inc. in 2013 after suing them in 2011 for alleged infringement of five patents. The ‘884 patent at issue in the suit against Samsung also was at issue in these suits.
In an Aug. 24 opinion, Judge Mazzant found enhancement of damages is appropriate because of Samsung’s misconduct.
The judge said evidence indicates that Samsung “did track and attempt to obtain, despite testimony otherwise, plaintiff’s patents for years before this lawsuit."
He noted Samsung also failed to offer any evidence at trial that it had independently developed and/or acquired the camera technologies at issue in this case.
“Despite knowing of plaintiff’s patents since at least April 2011, defendants never undertook any serious investigation to form a good-faith belief as to non-infringement or invalidity. Instead, defendants used a patent broker to try and purchase the patents from plaintiff without revealing their identity.”
Judge Mazzant noted Samsung “made multiple material misrepresentations under oath. In their sworn response to Interrogatory No. 7, defendants misrepresented that they only knew of plaintiff’s patents when the case started in June 2014. This response remained unchanged until after depositions and other discovery showed this to be incorrect.
he noted that during trial, several defense witnesses “gave false testimony, including testimony that defendants proffered to the jury. Defendants misrepresented key facts bearing on infringement and willfulness, including whether Defendants were tracking Plaintiff’s patents in the first Imperium case, the extent of their discussions about obtaining plaintiff’s patents, and defendants’ alleged pre-suit analysis of them.
Jesse Jenner, a partner with Ropes & Gray in new York, who represented Samsung, couldn’t be reached immediately for comment.
Bill Sigler, a partner with Fisch Sigler LLC, who represented Imperium, also couldn’t be reached immediately for comment.
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