Federal Judiciary

Partiual summary judgment granted in Marshall patent case set to start trial tomorrow

By Michael Smith

O2 Micro International Limited v. Rohm Co., LTD., et al, 2:05-cv-211 (E.D. Tex. Feb. 21, 2008)
Judge: Chad Everingham
Holding: Defendant's Motion for Partial Summary Judgment GRANTED in part.
The 02 Micro v. Rohm case is about to crank up for trial in Judge Everingham's court in Marshall tomorrow.  This morning Judge Everingham entered an granting in part and denying in part Rohm's motion for partial summary judgment of (1) no damages for all Rohm inverter controller integrated circuits sold to Sony and (2) no infringement for all Rohm inverter controller integrated circuits sold to Sony after April 1, 2007.
The Court denied the motion insofar as it requested summary judgment of no damages for all Rohm inverter controller integrated circuits sold to Sony prior to April 1, 2007. The basis for the motion was that the plaintiff had supposedly been fully compensated for all infringement by virtue of a lump sum payment made by Sony in a settlement and license agreement. Rohm contended that the payment was made in full compensation for infringement prior to April 1, 2007, and that, under the one satisfaction rule, the plaintiff is not entitled to any additional recovery from Rohm. The Court disagreed, quoting the Supreme Court as having recognized that ?[w]here a private release of past infringement which does not purport to release others is involved, the adequacy of the compensation must always be a question of fact.? Aro Mfg. Co. v. Convertible Top Replacement Co, 377 U.S. 476, 513 (1976). The court concluded that fact issues exist on the issue of full satisfaction.
But, "that fact issues exist on the question of full satisfaction does not mean that the jury will answer them," the Court went on.  "The one satisfaction rule is an equitable doctrine, applied to reduce a plaintiff?s recovery from a non-settling defendant to prevent the plaintiff from recovering excessive compensation for a single indivisible injury. (Internal citations omitted).  In the court?s view, the jury should determine the full amount of damages, if any, suffered by the plaintiff as a result of the alleged infringement. Thereafter, the court will apply the equitable doctrine and make factual findings to determine the nature and extent of any credit enjoyed by Rohm because of the Sony settlement. As a result, the parties are barred from referring to the Sony settlement, directly or indirectly, in the presence of the jury."
Judge Everingham then granted the motion for summary judgment with respect to Rohm?s liability for contributory infringement after April 1, 2007, as he was persuaded that Sony?s sales of products incorporating Rohm inverter controllers are licensed sales and, as such, are non-infringing. Absent direct infringement by Sony, therefore, Rohm could not be liable for contributory infringement as it related to Sony. In view of the conditional nature of Sony?s license, however, the dismissal of this portion of the plaintiff?s claim was without prejudice to re-urge it, should Sony fail to comply with the terms of its license agreement in the future.

Full post as published by Eastern District of Texas Federal Court Practice on February 21, 2008 (boomark / email).