In XY, LLC v. Trans Ova Genetics, L.C.<\/em><\/a>, [2016-2054, 2016-2136] (May 23, 2018), the Federal Circuit\u00a0affirmed the district court on all issues except the\u00a0ongoing royalty rate, which the court vacated and remanded for recalculation in accordance with its opinion.<\/p>\n XY\u2019s patents relate to the sorting of X- and Y- chromosome- The Federal Circuit affirmed summary judgment on Trans Ova’s antitrust counterclaims, and the denial of post trial motions on the breach of contract issues. The Federal Circuit found no abuse of discretion in the\u00a0in The district court\u00a0calculated\u00a0an ongoing royalty rate for gross sales by averaging the\u00a0jury\u2019s 15% rate with the 10% rate in XY\u2019s prior licenses to In Amado v. Microsoft Corp.<\/em>, the Federal Circuit held that there is a\u00a0\u201cfundamental difference\u201d between \u201ca reasonable royalty\u00a0for pre-verdict infringement and damages for post-verdict\u00a0infringement.\u201d When calculating an ongoing royalty rate, the\u00a0district court should consider the change in the parties\u2019\u00a0bargaining positions, and the resulting change in economic\u00a0circumstances, resulting from the determination of\u00a0liability.\u00a0 When patent claims are held to be\u00a0not invalid and infringed, this amounts to a \u201csubstantial\u00a0shift in the bargaining position of the parties.\u00a0 District courts to consider changed economic circumstances,\u00a0such as changes related to the market for the patented\u00a0products.<\/p>\n The Federal Circuit found that the district court focused on pre-verdict factors that\u00a0were either irrelevant or less relevant than post-verdict\u00a0 factors. In particular, the district court awarded an\u00a0ongoing royalty based on an average between the jury\u2019s\u00a0reasonable royalty for past infringement (15%) and the\u00a0rate established in the parties\u2019 pre-suit license Agreement\u00a0(10%).\u00a0 The Federal Circuited noted that the jury considered and rejected the 10% pre-suit license rate.\u00a0\u00a0The Federal Circuit said that the district court’s focus should\u00a0have been on XY\u2019s improved bargaining position and any\u00a0other changed economic factors, rather than XY’s behavior in the past.\u00a0 Instead, the\u00a0district court identified In XY, LLC v. Trans Ova Genetics, L.C., [2016-2054, 2016-2136] (May 23, 2018), the Federal Circuit\u00a0affirmed the district court on all issues except the\u00a0ongoing royalty rate, which the court vacated and remanded for recalculation in accordance with its opinion. XY\u2019s … Continue reading
\nbearing sperm cells for selective breeding purposes.\u00a0 XY licensed Trans Ova under these patents, but purported to terminate the licenses for breach.\u00a0 XY then sued Trans Ova for patent infringement, later adding counts for breach of contract\u00a0 and unjust enrichment.\u00a0 Trans Ova counter claimed for invalidity, monopolization, and breach of contract.<\/p>\n
\ndenying Trans Ova\u2019s motion for a new trial on the issue of\u00a0patent invalidity,finding the issue as to one patent mooted by its concurrent affirmance of a PTAB decision invalidating the patent.\u00a0 Because XY did not appeal the failure to award damages, the Federal Circuit dismissed as moot, Trans Ova’s appeal of the finding of willfulness.<\/p>\n
\narrive at a rate of 12.5%. For reverse sorting services, the\u00a0district court awarded an ongoing royalty rate of 2%, half\u00a0of the jury\u2019s rate for those services.\u00a0\u00a0A district court\u2019s methodology for calculating\u00a0an ongoing royalty\u00a0 is reviewed under the abuse of discretion\u00a0standard. See ActiveVideo Networks, Inc. v. Verizon\u00a0Commc\u2019ns, Inc.<\/em>, 694 F.3d 1312, 1332 (Fed. Cir. 2012).<\/p>\n
\nno economic factors that would justify the imposition of\u00a0rates that were lower than the jury\u2019s.<\/p>\n","protected":false},"excerpt":{"rendered":"