Case 6:22-cv-00031-ADA Document 325 Filed 05/30/24 Page 1 of 28
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`
`FLYPSI, INC. (D/B/A FLYP),
`
` Plaintiff,
`
` vs.
`
`GOOGLE LLC,
`
` Defendant.
`
`
` Civil Action No. 6:22-cv-31-ADA
`
`
` JURY TRIAL DEMANDED
`
`
`
`
`
`
`
`
`
`
`FLYP’S MOTION FOR NEW TRIAL ON DAMAGES, OR ALTERNATIVELY,
`MOTION FOR PERMANENT INJUNCTION OR MOTION FOR ONGOING
`ROYALTY
`
`

`

`
`
`
`I.
`II.
`III.
`
`IV.
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`Case 6:22-cv-00031-ADA Document 325 Filed 05/30/24 Page 2 of 28
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`TABLE OF CONTENTS
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`Page
`INTRODUCTION .............................................................................................................. 1
`FACTUAL BACKGROUND ............................................................................................. 2
`LEGAL STANDARD ......................................................................................................... 4
`A.
`Motion for New Trial. ............................................................................................. 4
`B.
`Motion for Permanent Injunction............................................................................ 5
`C.
`Motion for Ongoing Royalty. ................................................................................. 6
`ARGUMENT ...................................................................................................................... 6
`A.
`The Court Should Order a New Trial on Damages................................................. 6
`1.
`This Court should follow Judge Gilstrap’s recent decision ordering a
`new trial based on substantially similar defects in the verdict. ................... 7
`The jury’s “lump sum” finding is unreliable because it was never
`instructed on the meaning of “lump sum” versus “running royalty” or
`the application of those terms to damages for future infringement. ........... 8
`There was no basis in the record for the jury’s award to include
`damages for future infringement. ................................................................ 9
`Flyp is Entitled to a Permanent Injunction. .......................................................... 11
`1.
`Flyp has suffered and will continue to suffer irreparable injury
`without an injunction. ............................................................................... 12
`a.
`Google’s infringement causes irreparable harm not remediable
`by damages.................................................................................... 12
`The direct competition between Flyp and Google weighs
`heavily in favor of finding irreparable injury. .............................. 12
`Flyp’s prior license to Dialpad does not preclude finding
`irreparable injury. .......................................................................... 13
`Flyp’s loss of market share and potential customers supports
`irreparable injury. .......................................................................... 13
`Harm to Flyp’s reputation supports finding irreparable injury. .... 14
`A causal nexus exists between Google’s infringement and the
`Veriharm to Flyp. .......................................................................... 14
`Damages Are Inadequate to Compensate for Flyp’s Injury. ..................... 15
`a.
`The irreparable injury to Flyp will continue without an
`injunction. ..................................................................................... 15
`Flyp’s losses are difficult to quantify............................................ 15
`The benefits from Google’s infringing use cannot be
`quantified. ..................................................................................... 16
`
`B.
`
`2.
`
`3.
`
`2.
`
`b.
`
`c.
`
`d.
`
`e.
`f.
`
`b.
`c.
`
`i
`
`

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`
`V.
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`
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`Case 6:22-cv-00031-ADA Document 325 Filed 05/30/24 Page 3 of 28
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`C.
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`The jury’s damages award is not an adequate legal remedy. ........ 17
`d.
`The Balance of Hardships Favors Injunctive Relief. ................................ 17
`3.
`The Public Interest Weighs in Favor of Injunctive Relief. ....................... 18
`4.
`Alternatively, the Court Should Award an Ongoing Royalty for Future
`Infringement. ......................................................................................................... 19
`1.
`The jury’s “lump sum” finding is legally and factually unsupported. ...... 19
`2.
`The Court should order an ongoing royalty for future infringement. ....... 20
`CONCLUSION ................................................................................................................. 20
`
`
`
`
`
`ii
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`

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`Case 6:22-cv-00031-ADA Document 325 Filed 05/30/24 Page 4 of 28
`
`TABLE OF AUTHORITIES
`
`
`
`Page(s)
`
`
`
`Cases
`
`ActiveVideo Networks, Inc. v. Verizon Commc’ns, Inc.,
`694 F.3d 1312 (Fed. Cir. 2012)................................................................................................20
`
`Acumed LLC v. Stryker Corp.,
`551 F.3d 1323 (Fed. Cir. 2008)....................................................................................12, 13, 18
`
`Aero Int’l, Inc. v. U.S. Fire Ins. Co.,
`713 F.2d 1106 (5th Cir. 1983) .........................................................................................5, 6, 11
`
`Alvarez v. McCarthy,
`No. 6-16-CV-00172-ADA, 2020 WL 3545735 (W.D. Tex. June 30, 2020) ............................8
`
`Apple Inc. v. Samsung Electronics Co., Ltd.,
`735 F.3d 1352 (Fed. Cir. 2013)....................................................................................12, 14, 16
`
`Apple Inc. v. Samsung Electronics Co., Ltd.,
`809 F.3d 633 (Fed. Cir. 2015)......................................................................................15, 17, 18
`
`Comcast IP Holdings I, LLC v. Sprint Commc’ns Co., L.P.,
`No. 12-cv-0205, 2015 WL 4730899 (D. Del. Aug. 10, 2015) .................................................19
`
`Douglas Dynamics, LLC v. Buyers Products Co.,
`717 F.3d 1336 (Fed. Cir. 2013)....................................................................................12, 14, 16
`
`eBay Inc. v. MercExchange, LLC,
`547 U.S. 388 (2006) ......................................................................................................... passim
`
`Enplas Display Device Corp. v. Seoul Semiconductor Co., Ltd.,
`909 F.3d 398 (Fed. Cir. 2018)....................................................................................6, 9, 10, 20
`
`G+ Commc’ns, LLC, v. Samsung Electronics Co. Ltd.,
`Civ. No. 2:22-CV-00078-JRG, 2024 WL 896343, *2 (E.D. Tex. March 1,
`2024) ................................................................................................................................ passim
`
`Hatsell v. Dr. Pepper Bottling Co.,
`207 F.3d 269 (5th Cir. 2000) .................................................................................................5, 9
`
`i4i Ltd. P’ship v. Microsoft Corp.,
`670 F. Supp. 2d 568 (E.D. Tex. 2009) ...............................................................................12, 14
`
`Inline Plastics Corp. v. Lacerta Grp., LLC,
`97 F.4th 889 (Fed. Cir. 2024) ................................................................................................5, 9
`
`iii
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`

`

`Case 6:22-cv-00031-ADA Document 325 Filed 05/30/24 Page 5 of 28
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`
`
`Innogenetics, N.V. v. Abbott Laboratories, Inc.,
`512 F.3d 1363 (Fed. Cir. 2008)................................................................................................11
`
`Lucent Technologies, Inc. v. Gateway, Inc.,
`580 F.3d 1301 (Fed. Cir. 2009)............................................................................................9, 16
`
`Mass Engineered Design, Inc. v. Planar Sys., Inc.,
`No. 3:16-CV-1510-SI, 2018 WL 4343398 (D. Or. Sept. 11, 2018) ..............................7, 10, 20
`
`Mentor Graphics Corp. v. Eve-USA, Inc.,
`No. 3:10–CV–954, 2015 WL 1097317 (D. Or. Mar. 11, 2015), aff'd 851 F.3d
`1275 (Fed. Cir. 2017) .........................................................................................................11, 20
`
`Nichia Corp. v. Everlight Americas, Inc.,
`855 F.3d 1328 (Fed. Cir. 2017)................................................................................................13
`
`Nissho-Iwai Co., Ltd. v. Occidental Crude Sales,
`729 F.2d 1530 (5th Cir. 1982) ...............................................................................................5, 8
`
`Paice, LLC v. Toyota Motor Corp.,
`504 F.3d 1293 (Fed. Cir. 2007)......................................................................................6, 19, 20
`
`Robert Bosch LLC v. Pylon Mfg. Corp.,
`659 F.3d 1142 (Fed. Cir. 2011)....................................................................................14, 15, 17
`
`Smith v. Transworld Drilling Co.,
`773 F.2d 610 (5th Cir. 1985) ........................................................................................... passim
`
`Summit 6, LLC v. Samsung Electronics Co., Ltd.,
`802 F.3d 1283 (Fed. Cir. 2015)................................................................................................11
`
`Telcordia Technologies, Inc. v. Cisco Systems, Inc.,
`612 F.3d 1365 (Fed. Cir. 2010)......................................................................................6, 19, 20
`
`WhitServe, LLC v. Computer Packages, Inc.,
`694 F.3d 10 (Fed. Cir. 2012)..........................................................................................6, 10, 20
`
`XY, LLC v. Trans Ova Genetics, L.C.,
`890 F.3d 1282 (Fed. Cir. 2018)................................................................................................20
`
`Statutes
`
`35 U.S.C. § 283 ....................................................................................................................5, 19, 20
`
`35 U.S.C. § 284 ..............................................................................................................................16
`
`Other Authorities
`
`Fed. R. Civ. P. 59(a) ........................................................................................................................4
`
`iv
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`

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`Case 6:22-cv-00031-ADA Document 325 Filed 05/30/24 Page 6 of 28
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`Fed. R. Civ. P. 59(a)(1)(A) ..............................................................................................................1
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`Fed. R. Civ. P. 59(d) ........................................................................................................................7
`
`
`
`v
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`

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`Case 6:22-cv-00031-ADA Document 325 Filed 05/30/24 Page 7 of 28
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`Flyp respectfully asks the Court to order a new trial on damages pursuant to Federal Rule
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`of Civil Procedure 59(a)(1)(A). Alternatively, Flyp asks the Court to find the jury’s award limited
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`to past damages and either enter a permanent injunction against Google to prevent continued
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`infringement of the Asserted Patents or impose an ongoing royalty for Google’s continued
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`infringement.
`
`I.
`
`
`
`INTRODUCTION
`
`This Court “has the right—and indeed the duty—to set the verdict aside and order a new
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`trial” if it is not satisfied with the jury’s verdict. Smith v. Transworld Drilling Co., 773 F.2d 610,
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`613 (5th Cir. 1985). Here, the jury’s damages award and its designation of that award as a “lump
`
`sum” are legally and factually unsupportable because the Court did not give the jury any instruction
`
`on the meaning of “lump sum” or “running royalty,” or on how those concepts determine if the
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`award compensates Flyp for future infringement through the life of its patents or only for past
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`infringement up to the time of trial. This lack of instruction renders the verdict unreliable because
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`there is no way to know if the jury correctly understood the meaning of “lump sum” or if it meant
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`for its award to cover future infringement. And if the jury did intend to include future damages,
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`then its award cannot stand under Federal Circuit precedent because there was no evidence from
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`either side quantifying the extent or present-day value of future infringement. A new trial on
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`damages is the proper remedy for these fatal defects in the jury’s verdict.1
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`
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`Alternatively, if the Court does not grant a new trial on damages, then it should deem the
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`legally and factually infirm finding of “lump sum” as applying only to past damages and order a
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`permanent injunction against Google’s continued use of Flyp’s patented technology through the
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`
`1 See G+ Commc’ns, LLC, v. Samsung Elecs. Co. Ltd., Civ. No. 2:22-CV-00078-JRG, 2024 WL
`896343, at *1–*2 (E.D. Tex. March 1, 2024) (ordering new trial based on jury confusion as to
`meaning of lump sum versus running royalty and past versus future damages).
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`1
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`

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`Case 6:22-cv-00031-ADA Document 325 Filed 05/30/24 Page 8 of 28
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`remaining life of the patents. An injunction is necessary because Flyp cannot fairly compete with
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`Google offering its infringing product for free. Without an injunction, Google’s ongoing unfair
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`competition will inflict irreparable harm that cannot adequately be remedied by money damages.
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`Flyp will not only lose substantial market share and much of its customer base from being forced
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`to compete on price against Google’s free product, but will suffer significant reputational harm in
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`the market and more than likely be driven out of business. These considerations, along with the
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`balance of hardships and the public interest, strongly support granting an injunction.
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`Alternatively, if the Court does not order a new trial on damages and does not grant an
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`injunction, then the Court should disregard the jury’s erroneous “lump sum” finding, determine
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`that the jury’s award is limited to damages for past infringement, and award an ongoing royalty
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`for future infringement. For the same reasons as explained above, the “lump sum” finding cannot
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`stand because the jury was not instructed on the meaning of the term or on the issue of past versus
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`future damages. And, even if the jury intended to include future damages, then its award is legally
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`and factually unsupported because no evidence was offered at trial to support any estimate of future
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`infringing use or the value of that use. To adequately compensate Flyp for Google’s future
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`infringement, the Court should order the parties to negotiate a new and substantially higher
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`ongoing royalty or set the royalty rate itself if the parties cannot agree.
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`II.
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`FACTUAL BACKGROUND
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`Flyp brought suit against Google for infringing five of its patents (the “Asserted Patents”).
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`See Dkt. 103 (Flyp’s Second Amended Complaint). Flyp’s patented inventions enable users to
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`reliably make and receive calls using multiple phone numbers on a single mobile device. Tr.
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`129:6–13. In 2017, Google commenced a restart of its moribund Google Voice product, which
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`had lain fallow with little to no updates for many years. Id. 442:8–14; PTX-633. Google made
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`numerous updates and incorporated several new features that infringe on Flyp’s patents, including
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`2
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`

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`new methods for making and receiving outbound and inbound calls. Tr. 131:14–15; 279:8–12;
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`311:3–6. By 2018, despite its substantial marketing efforts, Flyp was repeatedly hearing feedback
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`from potential customers that they would not pay $7.99 per month for Flyp when they could get
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`Google Voice for free. Id. 137:10–20. Today, Google competes directly with Flyp for the same
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`customer base of mobile users,
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`2 (Tr.
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`135:20–136:6, 1155:4–10)—which Flyp is unable to do—making competition virtually impossible
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`and unsustainable. Ex. A, Declaration of Peter Rinfret ¶ 4.
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`Flyp’s infringement claims against Google were tried to a jury on February 20–26, 2024.
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`The evidence established that
`
`
`
` (Tr. 491:4–493:9, 639:10–643:16), but
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`Google’s witnesses insisted it had no way to calculate a dollar value for those benefits. Id. 615:24–
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`616:5, 618:19–619:15, 633:8–15, 1156:9–1157:23. Both sides’ damages experts offered
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`competing models for calculating reasonable royalty damages based on the rate the parties might
`
`have agreed in a hypothetical negotiation at the time infringement began. Id. 445:8–446:15,
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`1097:10–14. Flyp’s expert testified that based on
`
`
`
`, a
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`reasonable royalty for Google’s past infringement up to the time of trial would be either $146.6
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`million or $225.6 million. Id. 501:4–9. Flyp’s expert argued the damages award should take the
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`form of a per-user, per-month running royalty because monthly subscription fees are the standard
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`payment model in the telephone service industry, as well as the payment model used by Flyp and
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`also by Google Voice for its paying customers. Id. 451:7–24.
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`2
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`
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`Tr. 439:7–440:3, 633:16–636:13, 1153:1–5.
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`3
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`Google’s expert based his damages calculation on
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`, and
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`concluded a reasonable royalty would be only $2.35 million. Tr. 1094:13–19, 1105:2–9. He
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`argued the damages award should be a one-time lump sum payment that would compensate Flyp
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`for Google’s future infringement through the life of the patents. Id. 1094:6–22.3 However, he
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`made no attempt to calculate any value for future infringement, instead
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`
`
`. Id. 1103:1–1105:9; DX-361. Indeed, neither side’s
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`expert offered any estimate or methodology to quantify the extent or value of future infringing use,
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`and there was no evidence in the record to support any such calculation.
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`The jury found for Flyp on all liability issues, finding that all of Flyp’s patents were
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`infringed and rejecting all of Google’s defenses. See Dkt. 294 (Verdict Form). The jury awarded
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`$12 million in damages and answered, “lump sum” to an interrogatory asking whether this number
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`“represent[ed] a running royalty or a one-time lump sum.” Id., Questions 6(a) and 6(b). Notably,
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`however, the Court did not give the jury any instruction to explain the meaning of running royalty
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`or lump sum or the effect of those terms on the issue of damages for future infringement. Thus,
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`the interrogatory was unsupported by any corresponding instruction and the jury’s answer was
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`fatally untethered to any legal construct or guidance from the Court.
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`III. LEGAL STANDARD
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`A. Motion for New Trial.
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`The Court may grant a new trial under Federal Rule of Civil Procedure 59(a) “based on its
`
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`3 Google’s expert argued a lump sum was proper because that was the method used in Flyp’s
`license to Dialpad, the only prior example of a license to Flyp’s patents. Tr. 1095:13–1096:15.
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`
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` Id. 144:19–25, 1149:6–1150:3, 1162:14–19.
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`4
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`appraisal of the fairness of the trial and the reliability of the jury’s verdict.” Smith v. Transworld
`
`Drilling Co., 773 F.2d 610, 612–13 (5th Cir. 1985). A new trial should be granted if the verdict is
`
`against the great weight of the evidence, or if prejudicial error was committed. Id. at 613. A new
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`trial is the appropriate remedy for prejudicial errors in jury instructions. Aero Int’l, Inc. v. U.S.
`
`Fire Ins. Co., 713 F.2d 1106, 1113 (5th Cir. 1983). “[J]ury instructions must be both legally
`
`correct and sufficiently comprehensive to address factual issues for which there is disputed
`
`evidence of record.” Inline Plastics Corp. v. Lacerta Grp., LLC, 97 F.4th 889, 897–98 (Fed. Cir.
`
`2024). To obtain a new trial based on an erroneous jury instruction, the movant must show (1)
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`“the charge as a whole creates substantial and ineradicable doubt whether the jury has been
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`properly guided in its deliberations,” and (2) the erroneous instruction must have affected the
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`outcome of the case. Hatsell v. Dr. Pepper Bottling Co., 207 F.3d 269, 272 (5th Cir. 2000).
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`The Court has the discretion to order a new trial if it “suspects that the jury verdict reflects
`
`confusion.” Nissho-Iwai Co., Ltd. v. Occidental Crude Sales, 729 F.2d 1530, 1538 (5th Cir. 1982).
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`In determining whether to grant a new trial, the Court weighs all the evidence, but need not view
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`it in the light most favorable to the nonmoving party. Smith, 773 F.2d at 613. “If the trial judge is
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`not satisfied with the verdict of a jury, he has the right—and indeed the duty—to set the verdict
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`aside and order a new trial.” Id.
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`B. Motion for Permanent Injunction.
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`This Court has the equitable discretion to enter a permanent injunction to restrain a party
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`from patent infringement “in accordance with the principles of equity to prevent the violation of
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`any right secured by patent, on such terms as the court deems reasonable.” 35 U.S.C. § 283. A
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`permanent injunction is appropriate where a patentee demonstrates that (1) it has suffered an
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`irreparable injury; (2) remedies available at law, such as monetary damages, are inadequate to
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`compensate for that injury; (3) considering the balance of hardships between the plaintiff and the
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`5
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`Case 6:22-cv-00031-ADA Document 325 Filed 05/30/24 Page 12 of 28
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`defendant, a remedy in equity is warranted; and (4) the public interest would not be disserved by
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`a permanent injunction. eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 394 (2006).
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`C. Motion for Ongoing Royalty.
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`In lieu of an injunction, this Court has the authority to award an ongoing royalty for future
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`infringement if it determines that the jury’s damages award is limited to past infringement. Paice,
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`LLC v. Toyota Motor Corp., 504 F.3d 1293, 1314 (Fed. Cir. 2007); Telcordia Techs., Inc. v. Cisco
`
`Sys., Inc., 612 F.3d 1365, 1378 (Fed. Cir. 2010); WhitServe, LLC v. Comput. Packages, Inc., 694
`
`F.3d 10, 35 (Fed. Cir. 2012). This Court has broad discretion to interpret an ambiguous verdict
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`form, including to determine whether the jury’s award includes damages for future infringement
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`or only past infringement. Telcordia, 612 F.3d at 1378.
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`IV. ARGUMENT
`
`A.
`
`The Court Should Order a New Trial on Damages.
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`Flyp asks the Court to order a new trial on damages. A new trial is warranted because the
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`jury’s damages award and “lump sum” finding were rendered unreliable by a prejudicial lack of
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`proper instruction and were also against the great weight of the evidence. See Smith, 773 F.2d at
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`613; Aero Int’l, 713 F.2d at 1113. The lack of any instruction on the meaning of “lump sum” and
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`“running royalty” makes it impossible to discern what the jury understood “lump sum” to mean,
`
`or whether its $12 million award was intended to compensate Flyp for future infringement through
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`the life of the patents or only for past infringement up to the time of trial. See G+ Commc’ns,
`
`LLC, v. Samsung Elecs. Co. Ltd., Civ. No. 2:22-CV-00078-JRG, 2024 WL 896343, at *1–*2 (E.D.
`
`Tex. March 1, 2024). And if the jury did intend to cover future infringement, then its award was
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`both legally improper and against the great weight of the evidence given that neither side’s expert
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`offered any estimate as to how future infringement could be quantified, and there was no evidence
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`in the record from which the jury could have calculated a present-day value for future use. See
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`6
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`Enplas Display Device Corp. v. Seoul Semiconductor Co., Ltd., 909 F.3d 398, 415 (Fed. Cir. 2018)
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`(holding that a lump sum award covering future infringement “must be based on an estimate of the
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`extent of future sales of accused products”); cf. Mass Engineered Design, Inc. v. Planar Sys., Inc.,
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`No. 3:16-CV-1510-SI, 2018 WL 4343398, at *4–*5 (D. Or. Sept. 11, 2018) (concluding jury award
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`was limited to damages for past infringement, where neither side presented any expert testimony
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`or evidence “relating to anticipated future sales, any future infringement, or any calculated lump
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`sum involving both past and future infringement”).
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`1.
`
`This Court should follow Judge Gilstrap’s recent decision ordering a
`new trial based on substantially similar defects in the verdict.
`
`Two months ago, Judge Gilstrap sua sponte ordered a new trial on damages in a case that
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`presented substantially similar defects in the jury’s verdict. See G+ Commc’ns, 2024 WL 896343,
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`at *1–*2. As in this case, the jury was asked to specify whether its damages award was a running
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`royalty or a lump sum. Id. at *1; compare Dkt. 294 (Verdict Form, Question 6(b)). The G+ jury
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`answered that it was a “running royalty.” Id. However, the parties’ counsel never explained the
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`difference between lump sum and running royalty during trial, and neither side’s damages experts
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`“substantially” addressed the issue. Id. at *2. Nonetheless, Judge Gilstrap attempted to fill
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`counsel’s gap by instructing the jury on the difference between a lump sum and a running royalty,
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`including that a running royalty would only compensate for past infringement whereas a lump sum
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`would compensate for both past and future infringement. Id. at *2 & n.3. But even with the
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`instruction, Judge Gilstrap had “material concerns” about jury confusion—specifically, that the
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`jury may have intended its damages award to cover future infringement, and erroneously thought
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`that answering “running royalty” (instead of “lump sum”) would accomplish that result. Id. at *1–
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`*2. Because the likelihood of confusion rendered the jury’s damages verdict “not sufficiently
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`reliable,” id. at *2, Judge Gilstrap exercised his power under Federal Rule of Civil Procedure 59(d)
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`7
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`Case 6:22-cv-00031-ADA Document 325 Filed 05/30/24 Page 14 of 28
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`to order a new trial on damages “based on [his] appraisal of the fairness of the trial and the
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`reliability of the jury’s verdict.” Id. at *1 (quoting Smith, 773 F.2d at 612–13).
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`Here, the risk of jury confusion is considerably higher, and the verdict is even more
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`unreliable because (unlike in G+) the Court failed to give the jury any corresponding instruction
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`on the meanings of “lump sum” and “running royalty,” or on applying those concepts in
`
`determining whether the damages award covers future as well as past infringement. Thus, there is
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`no way to know what the jury understood “lump sum” to mean, or whether the jury intended its
`
`award to compensate for future infringement. For this reason alone, the Court “has the right—and
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`indeed the duty—to set the verdict aside and order a new trial” on damages. See Smith, 773 F.2d
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`at 613.
`
`2.
`
`The jury’s “lump sum” finding is unreliable because it was never
`instructed on the meaning of “lump sum” versus “running royalty” or
`the application of those terms to damages for future infringement.
`
`The Court should order a new trial on damages because the lack of proper jury instructions
`
`created a risk of jury confusion and rendered the jury’s findings on damages unreliable. This Court
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`has the discretion to grant a new trial if, among other things, “substantial errors occurred in . . . the
`
`giving or refusal of instructions.” Alvarez v. McCarthy, No. 6-16-CV-00172-ADA, 2020 WL
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`3545735, at *1 (W.D. Tex. June 30, 2020) (Albright, J.); see Nissho-Iwai Co., Ltd. v. Occidental
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`Crude Sales, 729 F.2d 1530, 1538 (5th Cir. 1982) (holding court has discretion to order a new trial
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`if it “suspects that the jury verdict reflects confusion”); G+, 2024 WL 896343, at *1–*2.
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`Here, the Court required the jury to answer an interrogatory specifying whether its award
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`was a running royalty or a lump sum (Verdict Form, Question 6(b)).4 However, the Court did not
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`4 Flyp objected to that interrogatory. Tr. 1359:2–4 (“And with respect to Question 6, we object to
`the question requiring the jury to elect either a lump sum or a running royalty.”). Google proposed
`the following instruction, which the Court did not adopt:
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`Case 6:22-cv-00031-ADA Document 325 Filed 05/30/24 Page 15 of 28
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`give the jury any corresponding instruction on the meaning of running royalty versus lump sum,
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`or on the differences between those terms as to whether a damages award compensates for future
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`infringement as well as past conduct. Absent such an instruction, the jury’s findings are unreliable
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`because it is impossible to know what the jury understood “lump sum” to mean, or whether the
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`jury intended its award to compensate for future infringement through the life of the patents or
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`only for past infringement up to the time of trial. See G+, 2024 WL 896343, at *2. Thus, a new
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`trial on damages is warranted because the absence of a proper instruction “clearly affected the
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`outcome of the case” as to damages, and “creates substantial and ineradicable doubt whether the
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`jury has been properly guided in its deliberations.” Hatsell, 207 F.3d at 272.
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`3.
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`There was no basis in the record for the jury’s award to include
`damages for future infringement.
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`If the jury did mean for its damages award to cover future infringement, then a new trial is
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`warranted for the additional reason that the verdict on damages is both legally unsupported and
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`contrary to the great weight of the evidence. See Smith, 773 F.2d at 613; Inline Plastics, 97 F.4th
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`at 898. Federal Circuit law requires that when a damages award purports to be a lump sum
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`covering future infringement, it “must be based on an estimate of the extent of future sales of
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`accused products.” Enplas, 909 F.3d at 415 (emphasis added); cf. Lucent Techs., Inc. v. Gateway,
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`Inc., 580 F.3d 1301, 1327 (Fed. Cir. 2009) (holding lump-sum calculation should “consider the
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`
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`Dkt. 270 at Ex. N2. Flyp also objected to Google’s proposed instruction. Id. But because the
`Court did include the interrogatory, it was error not to instruct the jury on how to answer it.
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`expected or estimated usage” of the invention). That requirement was not met in this case, where
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`neither party offered any estimate on the extent or value of Google’s future infringing use or how
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`that value should be discounted back to a present-day value for purposes of a damages award, and
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`the trial record contains no evidence from which the jury could have made any such determination.
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`Flyp’s damages expert based his calculation of
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`. Tr. 452:9–20; see PTX-370 at 18 (showing
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`
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`a lump sum award would be “for the life of the patents” (Tr. 1094:13–22) but offered no estimate
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`). Google’s damages expert made the conclusory remark that
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`for future use, instead basing his damages calculation on
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`. See Tr. 1103:1–1105:9 and DX-361 (
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`); DDX-004 at 18 (showing
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`) (Ex. D).
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`The parties’ failure to account for the extent of future usage or the present-day value of
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`such future use left the jury with no legal or factual basis to award damages for future
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`infringement.5 See Enplas, 909 F.3d at 415. Courts in similar circumstances have routinely
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`limited damages awards to past infringement where the record did not support any estimate of
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`future infringement. See, e.g., WhitServe, 694 F.3d at 35 (trial court determined jury’s award was
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`only for past infringement where parties had limited their damages arguments to past
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`infringement); Mass Engineered Design, 2018 WL 4343398, at *5 (concluding jury awarded
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`damages only for past infringement because “[n]o evidence was presented relating to anticipated
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`future sales, any future infringement, or any calculated lump sum involving both past and future
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`5 To the extent any evidence at all was presented at trial on the lump sum/running royalty and
`future infringement issues, the Court “need not view it in the light most favorable to [Google].”
`See Smith, 773 F.2d at 613.
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`infringement”); cf. Mentor Graphics Corp. v. Eve-USA, Inc., No. 3:10–CV–954, 2015 WL
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`1097317, at *3 (D. Or. Mar. 11, 2015), aff’d 851 F.3d 1275 (Fed. Cir. 2017) (concluding jury did
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`not award damages for period between close of discovery and entry of verdict because “both sides’
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`experts limited their damages calculations to sales and market conditions up to and including [the
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`close of discovery]” and “[n]either expert included models or a proposed methodology for how
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`those calculations could be projected into the future”).6 The harm in this case is even more
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`egregious, and compels a new trial because the complete absence of proof on future infringement
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`was compounded by the lack of any instruction on lump sum versus running royalty or past versus
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`future damages. See Aero Int’l, 713 F.2d at 1113 (new trial is proper remedy for prejudicial errors
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`in jury instructions).
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`B.
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`Flyp