Circuit judges ruled on 4 August that Marvell should only pay royalties on the chips imported or sold in America in its tussle with Carnegie Mellon University (CMU) over imported disk drives.
CMU sued Marvell in 2012 for infringing patents related to two hard disk drives. The US District Court for the Western District of Pennsylvania awarded CMU $1.17 billion as a reasonable royalty for infringement in May 2014.
The district court added a 23 percent enhancement of the past damages award based on Marvell’s willfulness, increasing the damages amount to $1.54 billion for past infringement and a royalty at 50 cents per Marvell-sold chip.
In Marvell’s appeal at the Federal Circuit, the judges reversed the grant of enhanced damages under the willfulness standard “which does not require that Marvell had a reasonable defence in mind when it committed its past infringement.”
The Federal Circuit also ordered a partial new trial to determine where some of the chips used in the hard disk drive patents were sold.
“We conclude that a partial new trial is needed to determine the location of the “sale” of those chips.
Marvell will now pay $278.4 million for past royalties, plus the amount owed after the verdict has been announced, reducing the initial award by $1.25 billion.
CMU has not publicly responded to the new damages award.