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CA Federal & State Cases, Combined
immersion AND sony
4 of 4 DOCUMENTS
IMMERSION CORPORATION, Plaintiff, v. SONY COMPUTER
ENTERTAINMENT AMERICA, INC., SONY COMPUTER ENTERTAINMENT,
INC., and MICROSOFT CORPORATION, Defendants.
No. C 02-0710 CW
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
2005 U.S. Dist. LEXIS 4777
January 10, 2005, Decided
SUBSEQUENT HISTORY: Motion granted by Littenberg Krumholz & Mentlik, Westfield, NJ; Sonal N.
Immersion Corp. v. Sony Computer Entm't Am., Inc., Mehta, Redwood Shores, CA.
2005 U.S. Dist. LEXIS 4778 (N.D. Cal., Mar. 24, 2005)
For Sony Computer Entertainment America Inc., Sony
DISPOSITION: The Court denied defendant's motion Computer Entertainment Inc, Counter-claimants:
for judgment as a matter of law and denied plaintiff's Matthew D. Powers, Weil Gotshal & Manges LLP,
motion for judgment as a matter of law. The Court Redwood Shores, CA; Douglas E. Lumish, Douglas E.
denied without prejudice plaintiff's motion for entry of Lumish, Weil Gotshal & Manges LLP, Silicon Valley
judgment and a permanent injunction and denied Office, Redwood Shores Parkway, Redwood Shores,
defendant's motion to strike plaintiff's motion for entry of CA.
judgment. The Court granted plaintiff's motion for
additional discovery but denied plaintiff's motion for For Internet Services LLC, Cross-defendant: Ismail J.
damage. The Court granted plaintiff's motion for Ramsey, Daralyn J. Durie, Mark A. Lemley, Keker &
pre-judgment interest. The Court denied plaintiff's Van Nes LLP, San Francisco, CA.
motion for attorneys' fees and denied defendant's motion
for attorneys' fees. The Court granted plaintiff's motion For Internet Services LLC, Counter-defendant: Daralyn
to strike. J. Durie, Ismail J. Ramsey, Keker [*2] & Van Nes LLP,
San Francisco, CA.
For Internet Services LLC, Cross-claimant: Daralyn J.
Durie, Ismail J. Ramsey, Keker & Van Nes LLP, San
COUNSEL: [*1] For Immersion Corporation, Francisco, CA.
Plaintiff: Morgan Chu, Andrei Iancu, Richard M.
Birnholz, Alan J. Heinrich, Christine Waterman Byrd, JUDGES: CLAUDIA WILKEN, United States District
Eric Eugene Johnson, Esq., Richard Gregory Frenkel, Judge.
Irell & Manella LLP, Los Angeles, CA; John Leo
Wagner, Irell & Manella LLP, Newport Beach, CA. OPINIONBY: CLAUDIA WILKEN
For Sony Computer Entertainment America Inc., Sony OPINION:
Computer Entertainment Inc, Defendants: Edward R.
ORDER DENYING PARTIES' MOTIONS FOR
Reines, Matthew D. Powers, Eugene Y. Mar, Douglas E.
JUDGMENT AS A MATTER OF LAW AND
Lumish, Jeffrey G. Homrig, Matthew M. Sarboraria,
ADDRESSING OTHER MATTERS.
Weil Gotshal & Manges LLP, Redwood Shores, CA;
Gregory S. Gewirtz, Joseph S. Littenberg, Lerner David
2005 U.S. Dist. LEXIS 4777, *
Defendants Sony Computer Entertainment America, denying Sony's motion for summary judgment as to
Inc., (SCEA) and Sony Computer Entertainment, Inc., invalidity, and granting in part and denying in part
(SCEI) (collectively Sony) renew, pursuant to Federal SCEI's motion for summary judgment as to
Rule of Civil Procedure 50(b), their previous motions for non-infringement. The Court granted Immersion's
judgment as a matter of law, on the grounds that no motion for summary judgment as to Sony's affirmative
reasonable jury could have found that SCEI induced defenses of inequitable conduct with respect to the 213
infringement of, or SCEA itself infringed, the patent and granted in part and denied in part Immersion's
patents-in-suit. Sony also moves for judgment as a matter motion regarding Sony's inequitable conduct defense
of law that Immersion failed to present evidence with respect to the prosecution of the 333 patent.
sufficient for an award of damages. Plaintiff Immersion
Corporation (Immersion) opposes the motions, and
cross-moves for judgment as a matter of law on its n1 Immersion has settled its claims against
claims of indirect and willful infringement. Sony Defendant Microsoft Corporation.
opposes Immersion's motions.
n2 The accused games were: A Bug's Life;
Immersion also moves for an award of supplemental Amplitude; Ape Escape; Atlantis: The Lost
damages, entry of judgment and issuance of a permanent Empire; Bloody Roar 2; Cool Boarders 3; Cool
injunction, and an award [*3] of pre-judgment interest. Boarders 4; Cool Boarders 2001; Crash Bash;
Sony opposes these motions, and moves to strike Crash Team Racing; Drakan: The Ancients' Gate;
Immersion's motion for entry of judgment and injunction Emperor's New Groove; Extermination;
as premature. Immersion opposes Sony's motion to FantaVision; Final Fantasy X; Formula One
strike. 2001; The Getaway; Gran Turismo; Gran
Turismo 2; Gran Turismo 3; Grand Theft Auto:
Immersion moves for an award of attorneys' fees
Vice City; Grand Theft Auto 3; Grind Session;
pursuant to 35 U.S.C. § 285. Sony opposes the motion,
ICO; Jak & Daxter; Kinetica; Kingdom Hearts;
and cross-moves for its own award of attorneys' fees.
Legend of the Dragoon; The Mark of Kri; Medal
Immersion opposes Sony's cross-motion.
of Honor Frontline; Medievil 2; Metal Gear Solid
Immersion moves to strike the September 15, 2004 2; Monster's, Inc.; Sly Cooper and the Thievius
Declaration of Sonal N. Mehta Attaching Racoonus; SOCOM Navy Seals; Speed Punks;
Correspondence Re: Sony's Objections to and Spyro: Ripto's Rage; Spyro: Year of the Dragon;
Designations of Trial Exhibits. Sony does not oppose this Stuart Little 2; Syphon Filter 2; Syphon Filter 3;
motion. The Court accordingly grants Immersion's Tony Hawk's Pro Skater 3; Twisted Metal: Black;
motion to strike. Twisted Metal 4; Twisted Metal: Small Brawl;
Treasure Planet; and War of the Monsters.
These matters were heard on December 10, 2004.
Having considered all of the papers filed by the parties
and oral arguments on the motion, the Court denies the
parties' motions for judgment as a matter of law. The From August 17 through September 21, 2004, a jury
Court denies without prejudice Immersion's request for trial was held on Immersion's claims of infringement,
an injunction and entry of judgment, but orders willful infringement and damages, and Sony's defenses
imposition of a compulsory license and pre-judgment and counterclaims of invalidity of the patents-in-suit
interest as described below. The Court denies both (other than inequitable conduct). At trial, Immersion
parties' motions for attorneys' fees. asserted claims 7, 41 through 46, 49, 50, 53 and 54 of the
213 patent and claims 14 through 18 of the 333 patent.
On September 21, 2004, a panel of eight jurors
Immersion filed its original complaint against Sony
returned a unanimous verdict finding that the Playstation
on February 11, 2002, alleging [*4] that Sony and
consoles and Dualshock controllers in conjunction with
Microsoft Corporation infringed U.S. Patent Nos.
44 of the accused games were covered by the asserted
6,275,213 ('213 patent) and 6,424,333 ('333) owned by
claims of the 213 patent, and that 42 of the accused
Immersion. n1 The patents-in-suit are both entitled
games in conjunction with the consoles and controllers
"Tactile Feedback Man-Machine Interface Device" and
were covered by the asserted claims of the 333 patent. n3
address providing complex tactile sensations to users of
The jury found that SCEA had directly infringed both the
interactive computer applications. Immersion accused
213 and 333 patents, but that SCEI had not directly
Sony's Playstation consoles and DualShock controllers in
infringed. The jury found that SCEI had induced
conjunction with forty-seven Playstation computer
infringement of both patents, but that SCEA had not
games. n2 On March 2, 2004, the Court issued an order
induced infringement of the asserted claims. The jury
2005 U.S. Dist. LEXIS 4777, *
found that the asserted claims of both patents were not doctrine of equivalents by making, using, selling,
invalid due to anticipation, obviousness, or inadequate offering for sale, and importing the accused products. n4
written description. The jury awarded Immersion $ 82
million [*6] as a reasonable royalty for the
infringement of its patents. The jury found that neither n4 In its post-verdict reply brief, Immersion
SCEA nor SCEI had willfully infringed either patent. A appears to abandon its request for JMOL that
bench trial on Sony's inequitable conduct defense with SCEI directly infringed the 213 patent.
respect to the 333 patent is scheduled for January 5, Accordingly, the Court denies this motion.
Sony does not dispute that there was sufficient
evidence from which a rational jury could find that the
n3 The jury found that the games Cool
use of a Playstation console, Dualshock controller, and
Boarders 3, Cool Boarders 2001, and Formula
an accused game constitutes direct infringement
One 2001 did not infringe the asserted claims of
whenever the player encounters the complex vibrations.
the 213 patent and that Amplitude, Emperor's
Instead, Sony contends that, even if direct infringement
New Groove, Gran Turismo 3, Grand Theft Auto:
is possible through use of the system, the sale of
Vice City, and Grant Theft Auto 3 did not
Playstation system components does not directly infringe
infringe the asserted claims of the 333 patent.
the patents. Sony further argues that the verdict is
These findings were consistent with Immersion's
unsupported because there is no direct evidence that
expert's conclusions. See Trial Ex. 992A,
SCEA actually used each game in an infringing [*9]
Summary Chart Summarizing Dr. Colgate's
manner, i.e. encountered one of the events that result in
Opinions on the Accused Games and Events
infringement. See Trial Exhibit 992A, Colgate Summary
Listed by Claim for the 213 and 333 Patents
Chart (listing the events in the game that trigger accused
(hereinafter Colgate Summary Chart).
vibrations, e.g., "A Bugs Life Mushroom Bouncing").
Despite Sony's assertion to the contrary,
I. Cross-Motions for Judgment as a Matter of Law. circumstantial evidence here was sufficient to permit a
rational jury to infer that SCEA directly infringed the
A motion for judgment as a matter of law after the
patents-in-suit by use. Circumstantial evidence may be
verdict renews the moving party's prior Rule 50(a)
sufficient to prove direct infringement. Moleculon
motion for directed verdict at the [*7] close of all the
Research Corp. v. CBS, Inc., 793 F.2d 1261, 1272 (Fed.
evidence. Fed. R. Civ. P. 50(b). The post-trial motion
Cir. 1986); Metabolite Lab., Inc., v. Lab. Corp. of Am.,
may be raised only as to the same claims and upon the
370 F.3d 1354, 1364-65 (Fed. Cir. 2004). Shuhei
same grounds as the prior motion. Murphy v. City of
Yoshida, a SCEA vice president, testified that SCEA
Long Beach, 914 F.2d 183, 186 (9th Cir. 1990); Collins
tested all of the accused games in the United States, and
v. City of San Diego, 841 F.2d 337, 342 (9th Cir. 1988).
described the high standards and attention to detail of the
Judgment as a matter of law after the verdict may be testers, who use "game cheats" and other means to reach
granted only when the evidence and its inferences, all levels of a game easily. Trial Tr. 1108-1115. Andrew
construed in the light most favorable to the non-moving House, another SCEA executive vice-president, testified
party, permits only one reasonable conclusion as to the that Sony set up "hundreds" of kiosks at one of the most
verdict. Where there is sufficient conflicting evidence, or popular video game trade shows with a Playstation
if reasonable minds could differ over the verdict, console, one or two Dualshock controllers, and a game to
judgment after the verdict is improper. See, e.g., Kern v. play. Trial [*10] Tr. 1833:7-1834:1. Dr. James Colgate
Levolor Lorentzen, Inc., 899 F.2d 772, 775 (9th Cir. testified that he had played all of the accused games, and
1990); Air-Sea Forwarders, Inc. v. Air Asia Co., 880 that infringing vibrations are "widespread" throughout
F.2d 176, 181 (9th Cir. 1989); Peterson v. Kennedy, 771 the games. Trial Tr. 712:4-14 and 708:17-18. From this
F.2d 1244, 1252 (9th Cir. 1985); L.A. Mem'l Coliseum and other circumstantial evidence, the jury could
Comm'n v. NFL, 726 F.2d 1381, 1387 (9th Cir. 1984). reasonably have inferred that it was more likely than not
that SCEA had used each game and encountered the
A. Direct Infringement.
Sony moves for judgment as a matter of law that
Sony also argues that Immersion failed to provide
SCEA did not directly infringe the patents-in-suit, [*8]
proof as to user perception of the claimed vibration, a
literally or under the doctrine of equivalents. Immersion
limitation found in every claim. Sony notes that neither
moves for judgment as a matter of law that SCEI directly
Dr. Colgate nor Dr. Lin performed psychosocial tests of
infringed the patents-in-suit literally and under the
user perception, and that the jurors themselves did not
2005 U.S. Dist. LEXIS 4777, *
play the games. However, Dr. Colgate did testify that he practice the invention because, e.g., the mass-moving
played all of the games and found them to practice every actuators cannot "transmit" vibrations until the system is
limitation of the asserted claims. The jury could operational. The Court finds that the verbs identified by
reasonably have based its decision on Dr. Colgate's Sony describe the purpose and function of the system's
testimony. The jury could also have inferred from that components when used, but do not require that the
the fact that Sony includes the infringing specialized patented invention literally be in motion. This
vibrations in the accused games that users can perceive less-strained approach avoids erroneous construction
those specialized vibrations. [*13] of all claims to be "method" claims. Furthermore,
it is consistent with the text of the patent, which does not
There is also a legally sufficient evidentiary basis
explicitly require a user and instead describes a "system"
from which a rational jury could conclude that SCEA
(claim 7) or "apparatus" (claim 43) as comprising certain
directly infringed the [*11] patents-in-suit by selling the
physical elements with certain purposes, as in an
Playstation system to its customers. Sony contends that,
"eccentric mass mounted on said shaft for transmitting
as a matter of law, SCEA cannot directly infringe claims
vibrations to said sensing body part." 213 patent,
7 and 43 of the 213 patent. n5 Claim 7 discloses a
19:10-11 (emphasis added). Therefore, claims 7 and 43
"system for providing a tactile sensation to a sensing
may be directly infringed by sale of the system or
body part, said system comprising" a means for
generating a variable state signal, a plurality of
mass-moving actuators, and a signal processor. 213 Sony further argues that even if claims 7 and 43 can
Patent 19:5-19. Claim 43 discloses a "vibrotactile unit be directly infringed by sale of the invention, SCEA sold
for generating tactile vibration sensations and in mere components of the invention, not the entire system
communication with a host computer," the unit or apparatus, and therefore did not infringe the patents as
comprising a rotary motor with a shaft, an "eccentric a matter of law. Sony relies heavily on the principle that
mass coupled to said shaft," a separate processor "a patent on a combination is a patent on the assembled
"receiving a signal from said host computer, said signal or functioning whole, not on the separate parts," quoting
used to correlate events within a graphical computer Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518,
simulation running on said host computer. . . ." 213 528, 32 L. Ed. 2d 273, 92 S. Ct. 1700 (1972) (rejecting
Patent 22:50-23:2. view that "substantial manufacture of constituent parts"
constitutes direct infringement where constituent parts
could be assembled into complete invention in less than
n5 Claims 7 and 43 are apparatus claims; all one hour). Sony also relies on [*14] Aro Mfg. Co. v.
other asserted claims are method claims. Because Convertible Top Replacement Co., 365 U.S. 336, 344, 5
the Court finds that the jury's verdict is factually L. Ed. 2d 592, 81 S. Ct. 599, 1961 Dec. Comm'r Pat. 635
and legally supported with respect to the asserted (1961) (holding that replacement of essential element of
apparatus claims, it does not address Sony's invention is not an infringing reconstruction of entire
argument that SCEA's sales cannot directly invention) and Decca Ltd. v. United States, 640 F.2d
infringe the asserted method claims as a matter of 1156, 1168, 225 Ct. Cl. 326 (Ct. Cl. 1980) ("Direct
law. infringement does not occur until a system [. . .] has been
constructed and is available for use"). However, the
[*12] Federal Circuit subsequently has interpreted the language
of Deepsouth "to be narrowly construed as applicable
While Sony correctly notes that the entire
only to the issue of the extraterritorial effect" of patent
Playstation system (console, controller and game) is
law. Paper Converting Mach. Co. v. Magna-Graphics
required to comprise the elements of the apparatus
Corp., 745 F.2d 11, 17 (Fed. Cir. 1984). In Paper
claims, it does not follow that only use and not sale of Converting, a manufacturer directly infringed where it
the system constitutes direct infringement. Sony argues constructed and tested an "operable assembly" that fell
that certain claim elements involving verbs in
short of the complete and entire patented combination.
present-participle form necessarily limit practice of the
Id. at 19-20. More recently, the Federal Circuit found a
invention to use; e.g., the system in claim 7 is comprised
manufacturer of a software program potentially liable for
in part of mass-moving actuators for "transmitting
direct infringement of a patent that disclosed an
vibrations," with each of the said mass-moving actuators apparatus for playing fantasy football games on a
comprised of a shaft and eccentric mass for "rotating said computer, including a "means for setting up individual
associated shaft." Defs.' Reply Br. at 4, n.4 (quoting
football franchises; means for drafting" [*15] players,
claim 7 of the 213 patent) (emphasis in brief). According
and so forth. Fantasy Sports Properties, Inc., v.
to Sony's interpretation, these and similar elements of
Sportsline.com, Inc., 287 F.3d 1108, 1111 (Fed. Cir.
claims 7 and 43 effectively require operation in order to
2002) (quoting patent). The elements of the patent
2005 U.S. Dist. LEXIS 4777, *
included both "a computer" and "means" for playing a judgment as a matter of law in favor of SCEI on the
game, yet the product manufactured by the accused same issue.
infringer consisted only of software. A direct
Sony's argument that the jury's finding of no
infringement analysis was nevertheless deemed
inducement of infringement by SCEA mandates
appropriate on the grounds that users needed only to
judgment as a matter of law in favor of SCEI on
activate "means that are already present in the underlying
inducement is not persuasive. The jury's findings are not
software," without having to modify code. Id. at 1118.
necessarily inconsistent. The jury could reasonably have
Contrary to Sony's assertion that the invention in Fantasy
found that SCEI as the parent company induced its
Sports was "just" software, there the accused "product
subsidiary SCEA to infringe directly by using the
[was] software installed on a computer that enables a
Playstation systems. All of Sony's other arguments with
user to play fantasy football games"; users could begin to
respect to the finding of inducement by SCEI merely
play after performing "a few simple steps." Id. at
reiterate Sony's position [*18] that there is no evidence
1118-19. The court rejected the defendants' argument
of any direct infringement and no evidence of intention
that only game customers could directly infringe the
by SCEA or SCEI to cause direct infringement.
patent, in part because, as in claims 7 and 43 of
Immersion's 213 patent, "there is no user participation' or Immersion, on the other hand, moves for judgment
control' limitation in the claims . . . requiring that an as a matter of law that no reasonable jury could have
accused fantasy football game be operated by any found that SCEA did not also induce its customers to
specific entity. [*16] " Id. at 1119. infringe. Immersion argues that just as sufficient
evidence exists to support the jury's finding that SCEA
Here, the jury could reasonably have found that
directly infringed, the evidence the jury heard about
SCEA sells a complete and operable system or apparatus
extensive Sony sales and customer support provides
rather than mere constituent parts, despite the fact that
sufficient circumstantial evidence that Sony customers
most of the consoles, controllers and games are sold
more likely than not directly infringed by playing the
separately. SCEA advertises and sells all the accused
games and encountering the infringing vibration effects.
products as part of the Playstation "system," e.g. Trial
See Moleculon Research Corp. v. CBS, Inc., 793 F.2d
Ex. 746, and frequently highlights compatibility between
1261, 1272 (Fed. Cir. 1986) (upholding district court
system elements. E.g., Trial Ex. 731 (Playstation.com
finding that patent-holder met burden of showing direct
advertisement); see generally Trial Exs. 813-864
infringement by puzzle customers with "circumstantial
(Playstation hardware and games). Playstation users need
evidence of extensive puzzle sales, dissemination of an
perform only a few simple steps to connect the consoles,
instruction sheet teaching the method of restoring the
controllers and games, after which the means to infringe
preselected pattern with each puzzle, and the availability
are present. Trial Ex. 340, PlayStation2 Instruction
of a solution booklet on how to solve the puzzle").
Manual. The instruction manual notes that the system
Immersion also argues that SCEA fulfilled the other
features "a vibration function when the function is
elements of inducement: that [*19] SCEA took actions
supported by the software title," and that the function can
that actually induced its customers' direct infringement
be set to either on or off. Id. at 11. One accused game
and that SCEA knew or should have known that taking
was sold already bundled with the hardware. Trial Tr.
those actions would induce direct infringement. See 35
1093:19-1094:14. A reasonable jury could therefore have
U.S.C. § 271(b); Metabolite Laboratories, Inc. v.
found that SCEA's actions were more than mere sale of
Laboratories Corp. of America, 370 F.3d 1354, 1365
constituent parts. The fact that consumers may use the
(Fed. Cir. 2004) (requiring proof of intent as element of
system [*17] in a non-infringing manner (e.g., they may
choose to play non-infringing games or turn off the
vibration function) does not alter the direct infringement However, the fact that the jury could reasonably
analysis. Cf. Dynacore Holdings Corp. v. U.S. Philips have rendered a verdict that SCEA induced its customers
Corp., 363 F.3d 1263, 1276 (Fed. Cir. 2004) (discussing to infringe the patents is not enough for Immersion to
circumstances in which sellers may be liable for indirect meet its burden with respect to its motion for judgment
infringement based on goods lawfully sold with as a matter of law. The grant or denial of a motion for
substantial non-infringing uses). judgment as a matter of law is "a procedural issue not
unique to patent law, reviewed under the law of the
B. Indirect Infringement.
regional circuit in which the appeal from the district
The jury found that SCEI induced infringement of court would usually lie." Summit Tech., Inc., v. Nidek
both the 213 and 333 patents, but that SCEA did not. Co., Ltd., 363 F.3d 1219 (Fed. Cir. 2004) (citing
Sony moves for adjudication that the jury's indirect Riverwood Int'l Corp. v. R.A. Jones & Co., Inc., 324 F.3d
infringement verdict in favor of SCEA warrants 1346, 1352 (Fed. Cir. 2003); BBA Nonwovens
Simpsonville, Inc. v. Superior Nonwovens, LLC, 303
2005 U.S. Dist. LEXIS 4777, *
F.3d 1332, 1336 (Fed. Cir. 2002). In the Ninth Circuit, The jury was instructed to calculate damages in the
the [*20] standard for JMOL, like the standard for form of a reasonable royalty, and was told to consider the
summary judgment, requires that the Court find that fifteen Georgia-Pacific factors in its determination. See
reasonable minds could come to only one conclusion September 14, 2004 Final Jury Instructions at 24-26
with respect to elements of the verdict. See Kendall (quoting Georgia-Pacific Corp. v. United States Plywood
Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d Corp., 318 F.Supp. 1116, 1120 (S.D.N.Y. 1970)). The
1042 (9th Cir. 1998) (upholding district court's refusal to jury found that Immersion was entitled to $ 82 million
enter JMOL in favor of plaintiff on trademark compensation for Sony's patent infringement. This award
infringement claim where genuine issues of fact existed represented 1.37 percent of Sony's total United States
as to an element of claim). Immersion urges the Court to sales of all Playstation consoles, DualShock controllers,
follow Minnesota Mining and Mfg. Co. v. Chemque, Inc., and accused games. It is less than the $ 299.3 million that
303 F.3d 1294, 1304-05 (Fed. Cir. 2002) and enter Immersion's expert proposed based on a five percent
judgment as a matter of law based on a jury's conclusion royalty rate on these sales, but more than the $ 9.4
that was in turn based on disputed evidence. In million Sony proposal based on two percent of sales of
Minnesota Mining, the Federal Circuit reversed a district the DualShock controllers [*23] only. See Trial Ex.
court's denial of JMOL on inducement where the jury 423A.
found that defendant Chemque directly infringed but did
Sony contends that the jury's royalty award was
not also induce infringement; however, this holding is
unfounded because the jury improperly included in its
inapposite. The standard used in that context by the
royalty base sales of every accused console, controller,
Federal Circuit was whether the jury's failure to find
and game, when all of these units have non-infringing
inducement was "supported by substantial evidence." Id.
uses. For instance, the consoles and controllers may be
at 1304. Applying Ninth Circuit law, this Court instead
used with non-accused games that have no vibration
considers whether the evidence, [*21] construed in the
function; the consoles may be used with non-accused
light most favorable to SCEA, permits only one
third party controllers; and users of the accused games
reasonable conclusion as to inducement. In Minnesota
may turn the vibration function off. However, as
Mining, defendant Chemque did not even argue that it
described in Section IA, use is not a required element of
had not known that its customers would infringe,
all the asserted claims.
attempting instead to contest the jury's underlying
infringement finding as inconsistent, a position the Sony's reliance on Jacobs v. Nintendo of America
Federal Circuit found to be barred by estoppel. Id. at for the proposition that the jury's award was unfounded is
1305, 1302-1303. The Federal Circuit began its unavailing. The non-infringing use doctrine articulated in
inducement analysis with the assumption "we must Jacobs applies "when a patentee or its licensee sells an
accept that claim 9 is infringed," and found that article and the question is whether the sale carries with it
Chemque failed to provide substantial evidence that it a license to engage in conduct that would infringe the
had not committed the other elements of inducement. Id. patent owner's rights." 370 F.3d 1097, 1100 (Fed. Cir.
at 1304. Here, in contrast, the elements of inducement 2004). Sony is clearly not an Immersion licensee.
are in dispute. For instance, the jury could reasonably
Sony also argues that the award was unfounded due
have found that, despite Sony's knowledge of the patents,
Immersion failed to meet its burden to prove the to the lack of direct proof of infringement. As concluded
necessary intent element of inducement, on the grounds above, the jury could reasonably [*24] have found that
SCEA directly infringes based on circumstantial
that SCEA's good faith belief that its customers did not
evidence of its use and sale of the Playstation system.
infringe meant that SCEA was not aware, nor should it
have been aware, of its customers' infringing acts. Even Sony's expert failed to gather direct data on
Therefore, the Court cannot enter judgment as a matter actual use of the accused vibration function, instead
of law in favor of Immersion with respect [*22] to its basing his calculations on sales of all controllers, some
claim of inducement of infringement by SCEA. of which may be used to play non-infringing games or
games with the vibration function turned off. Immersion
For the foregoing reasons, the Court denies
did present evidence that nine of the top ten best-selling
Immersion and Sony's motions for judgment as a matter
Playstation games were accused, and that the number of
of law with respect to infringement.
accused games sold exceeds the number of consoles sold
C. Damages. by 15 million.
Sony moves for judgment as a matter of law that The jury could therefore reasonably use the entire
Immersion failed to present evidence that proved its Playstation system as a royalty base. The jury may have
claim for damages to a reasonable certainty. Immersion taken account of the fact that the Playstation system does
opposes this motion. have non-infringing uses when it awarded a relatively
2005 U.S. Dist. LEXIS 4777, *
low royalty rate of 1.37 percent. The jury also may have 30, 2004 and awarding supplemental damages on those
calculated damages using a higher rate but a smaller infringing sales.
royalty base. For these reasons, the Court denies Sony's
The sales data and expert testimony available to the
motion for judgment as a matter of law with respect to
jury from which to calculate damages included only
the jury's damages award.
Playstation sales up to June 30, 2004. Therefore, the
D. Willful Infringement Court finds that Immersion is entitled to compensation
based on Sony's sales of infringing systems from July 1
Immersion moves for judgment as a matter of law
onward. The cases cited by Sony [*27] suggesting that
that SCEI and SCEA willfully infringed the
such an award is unavailable are inapposite, because
patents-in-suit. Sony opposes this motion. [*25]
continued payments on sales after June 30 will not be
In order to prove that SCEI or SCEA willfully punitive and will be proved upon Sony's production of
infringed the patents, Immersion would have had to up-to-date sales data. See, e.g., Beatrice Foods v. New
prove that it was highly likely that SCEI and SCEA had England Printing and Lithographing Co., 923 F.2d 1576
"no reasonable basis" for believing that their products do (Fed. Cir. 1991) (rejecting district court's award of treble
not infringe or that the patents were invalid. See Final damages in order to enhance what it thought was
Jury Instructions at 14. The jury was instructed to inadequate compensation); Oscar Mayer Foods Corp. v.
consider five factors, including whether SCEI or SCEA Conagra, Inc., 869 F. Supp. 656 (W.D. Wisc. 1994)
intentionally copied an Immersion product and whether (rejecting plaintiff's request for supplemental pre-trial
they had a good faith belief that the patents were invalid damages as not proved and therefore an invasion of jury's
or not infringed. Id. role). In lieu of awarding Immersion supplemental
damages for the period from July 1 to the present, 2004,
Contrary to Immersion's characterization (see Pl.'s the Court imposes a compulsory license and orders Sony
Reply Supp. Pl.'s Mot. JMOL at 9 n.3), the jury had to pay Immersion a 1.37 percent compulsory license fee
ample evidence to support its finding of no willful
based on sales from July 1, 2004, until judgment enters.
infringement. Shinichi Okamoto, former Sony Chief
These fees will be paid directly to Immersion; no escrow
Technology Officer responsible for development of the
account will be required. In order to enable Immersion to
Playstation consoles and DualShock controllers, testified calculate the fee, the Court granted Immersion's request
that Sony developed the Playstation products without for supplemental discovery. Sony was ordered to provide
copying Immersion's technology. Trial Tr.
Immersion with its sales data from June 30, 2004 until
1551:7-1553:11, 1593:8-1594:5. The jury heard Sony's
[*28] September 30, 2004 within ten days of the
vigorous defenses of non-infringement and invalidity. A
December 10 hearing, that is, by December 27, 2004. If
jury could reasonably have found that Immersion failed
Sony has not already provided this data it must do so
to prove that it was highly likely that SCEI and SCEA within three days of the date of this order, and pay the
willfully infringed the 213 and 333 patents. license fee on those sales forthwith. Sony shall continue
For [*26] the foregoing reasons, the Court denies to provide Immersion with its sales data, and pay the
Immersion's motion for judgment as a matter of law on license fee, ten days after the close of each quarter for as
the issue of willful infringement. long as the compulsory license remains in effect.
B. Injunction and Entry of Judgment.
II. Supplemental Damages, Permanent Injunction, and
Pre-Judgment Interest. Immersion correctly notes that injunctive relief is
the "general rule [to remedy infringement] . . . absent a
Immersion moves for additional discovery and an
sound reason for denying it." Richardson v. Suzuki Motor
award of supplemental damages, pre-judgment interest,
Co., Ltd., 868 F.2d 1226, 1246-47 (Fed. Cir. 1989)
entry of judgment and an immediate permanent
(reversing trial court's denial of injunction against
injunction against Sony's manufacture, use, sale, and defendant Suzuki's sale of motocross bicycles and noting
import of Sony Playstation consoles, Dualshock that appeal process would take "several years" and patent
controllers, and infringing games. Sony opposes an
expired in four years); see also W.L. Gore & Assoc. v.
award of supplemental damages or pre-judgment interest,
Garlock, Inc., 842 F.2d 1275, 1281 (Fed. Cir. 1988)
opposes entry of judgment as premature and opposes any
(directing district court to enter injunction against sale of
injunction, proposing instead that the Court order a
packing material); Eli Lilly & Co. v. Medtronic, Inc., 696
compulsory license. F. Supp. 1033, 7 U.S.P.Q.2d 1439, 1445 (E.D. Pa. 1988),
A. Supplemental Damages. rev'd on other grounds, 872 F.2d 402 (Fed. Cir. 1989)
[*29] (entering permanent injunction against sale of
Immersion seeks an order directing Sony to provide defibrillator). Nevertheless, the decision to award
updated sales data on the infringing products since June injunctive relief is clearly left to the Court's discretion.
2005 U.S. Dist. LEXIS 4777, *
See 35 U.S.C. § 283 (courts "may grant injunctions in (1983) (holding that district court has general authority
accordance with the principles of equity" to prevent to award pre-judgment interest as an ordinary matter).
violation of patent rights); Roche Prods. v. Bolar Pharm. Courts are afforded discretion to decide the interest rate
Co., 733 F.2d 858 (Fed. Cir. 1984), superceded by to be used. Studiengesellschaft Kohle, m.b.H. v. Dart
statute on other grounds, (refusing to order district court Indus., Inc., 862 F.2d 1564, 1580 (Fed. Cir. 1988).
to enter permanent injunction and noting that adequacy
Sony argues that the jury must have included interest
of money damages could obviate need for equitable
in its $ 82 million award. But just as the jury's damages
award was necessarily based on sales only up to June 30,
Immersion presents no evidence that it will suffer the expert testimony the jury heard regarding damages
actual irreparable harm if an injunction does not issue did not include a calculation of interest owed. The Court
immediately. Immersion is not a direct competitor of finds that an award of pre-judgment interest is therefore
Sony. Immersion has previously stated its intention to appropriate, and can be fairly calculated over time by
license its patents freely. The Federal Circuit has held assuming that the [*32] jury's damage award was
that evidence showing that the patent holder is willing to determined based on sales of Sony's Playstation
license its patent rights "suggests that any injury suffered consoles, DualShock controllers and infringing games.
by [the patent holder] would be compensable in damages The 1.5 percent per month interest rate Immersion
assessed as part of the final judgment in the case." High suggests is inappropriate because it is punitive rather
Tech Med. Instrumentation, Inc. v. New Image Indus., than compensatory, while Sony's proposition of the
Inc., 49 F.3d 1551, 1557 (Fed. Cir. 1995) [*30] Treasury bill rate assumes an unnecessarily low
(reversing grant of preliminary injunction). Here, money estimation of the returns Immersion would have earned if
damages will provide an adequate remedy for a royalty agreement had been in place. Accordingly, the
Immersion's injury, at least for the present. Court awards Immersion pre-judgment interest at the
prime rate. Interest for each quarter's sales will begin to
Thus, in lieu of an injunction at this time, as noted
accrue at the end of that quarter based on that quarter's
above, the Court imposes a compulsory license and
Sony sales data, calculated at the prime rate as of the end
orders that Sony pay Immersion a fee of 1.37 percent on
of that quarter. Thereafter, the interest will be
sales of all Playstation consoles, Dualshock controllers
and games found by the jury to infringe. For the reasons
discussed above, the license will be effective as of July
IV. Attorneys' Fees.
1, 2004, and will continue until the date of judgment. At
that time, pursuant to Federal Rule of Civil Procedure Immersion moves for a determination pursuant to 35
62(c), the Court will enter a permanent injunction, which U.S.C. § 285 that this is an "exceptional case" and
it may stay pending appeal, in which case the therefore it is entitled to attorneys' fees, and for an award
compulsory license will remain in effect. Sony will be pursuant to Federal Rule of Civil Procedure 37(c)(2) of
enjoined from manufacturing, using, selling, and reasonable attorneys' fees incurred proving matters that
importing the infringing Sony Playstation system, Sony should have admitted in response to Immersion's
including Playstation consoles, Dualshock controllers, requests for admissions (RFAs). Sony opposes this
and the infringing games. This could be accomplished by motion, and counter-moves [*33] for an award of
removing the software library that enables the infringing attorneys' fees pursuant to § 285 with respect to
vibration and disabling the vibration function on the Immersion's claims of infringement of U.S. Patent No.
controllers and in the games. The Court will not require a 5,889,672 ('672 patent). Immersion opposes that motion.
recall, but Sony will pay the license fee on all products
Immersion argues that Sony engaged in a pattern of
placed in [*31] the stream of commerce.
repeated misconduct that increased the cost of litigation,
Entry of judgment is premature at this time because including discovery abuses, late production of
Sony's defense of inequitable conduct is still pending. documents, and frivolous defenses and refusals to reply
fully and candidly to requests for admissions.
C. Pre-Judgment Interest.
Title 35 U.S.C. § 285 provides that the court in
Finally, Immersion asks the Court to award
"exceptional cases may award reasonable attorney fees to
the prevailing party" in a patent case. See Reactive
Patent claimants are entitled to compensatory Metals and Alloys Corp. v. ESM, Inc., 769 F.2d 1578,
damages that are no less than a reasonable royalty 1582-83 (Fed. Cir. 1985) (noting that district court
"together with interest and costs as fixed by the court." decision to award attorneys' fees is reviewable for abuse
35 U.S.C. § 284; see General Motors Corp. v. Devex of discretion). The types of conduct which can form a
Corp., 461 U.S. 648, 76 L. Ed. 2d 211, 103 S. Ct. 2058 basis for finding a case exceptional include "willful
2005 U.S. Dist. LEXIS 4777, *
infringement, inequitable conduct before the PTO, attorneys' fees to "the prevailing party" in exceptional
misconduct during litigation, vexatious or unjustified cases. In order to be a prevailing party, the Federal
litigation, and frivolous suit." Beckman Instruments, Inc. Circuit has recently ruled that "one must receive at least
v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. some relief on the merits." Inland Steel Co. v. LTV Steel
1989) (affirming district court award of attorneys' fees Co., 364 F.3d 1318, 1320 (Fed. Cir. 2004). While
[*34] where defendant engaged in vexatious conduct Immersion may be estopped from reasserting its 672
and repeatedly violated permanent injunction). When the patent infringement claims against Sony, this estoppel
alleged misconduct relates to the discovery process, does not constitute "relief on the merits." None of the
courts rarely grant attorneys' fees pursuant to § 285 cases Sony cites suggests that a defendant against whom
absent a serious breach, such as dishonest responses or a verdict has been entered is entitled to prevailing party
failure to comply with discovery orders. See White status as to a claim that was voluntarily dropped from the
Consolidated Industries, Inc. v. Vega Servo-Control, case by the plaintiff.
Inc., 713 F.2d 788, 791 (Fed. Cir. 1983) (upholding
Accordingly, both parties' motions for attorneys' fees
denial of request for attorneys' fees pursuant to § 285
and Rule 37(c) despite allegedly "egregious" failure to
disclose information); Arbrook, Inc. v. Am. Hosp. Supply CONCLUSION
Corp., 645 F.2d 273, 279 (5th Cir. 1981) ("we reject the
For the foregoing reasons, the Court DENIES Sony's
contention that the plaintiffs' alleged improper conduct
motion for judgment as a matter of law and DENIES
during discovery supports a fee award. Assuming such
Immersion's motion for judgment as a matter of law
improprieties took place, the proper remedy lies under
(Docket No. 1223).
Fed. R. Civ. P. 37 and not under § 285.").
The Court is disturbed by the discovery conduct in The Court DENIES without prejudice Immersion's
this case. The proper remedy for discovery abuses, motion for entry of judgment and a permanent injunction
(Docket No. 1309), and DENIES Sony's motion to strike
however, is sanctions pursuant to Federal Rule of Civil
Immersion's motion for entry of judgment (Docket No.
Procedure 37. Immersion sought such sanctions only
1359). Instead, the Court imposes a compulsory license
once and was denied. Furthermore, it appears that both
parties participated in this misconduct to at [*35] least on Sony as described [*37] above. The Court GRANTS
some extent; in granting a motion to compel by Sony, Immersion's motion for additional discovery but
DENIES Immersion's motion for damages based on Sony
Magistrate Judge Brazil noted generally that he was
sales as of July 1, 2004 (Docket No. 1332), in favor of
"extremely DISAPPOINTED by the present inability of
compensation by way of the compulsory license. The
counsel to professionally resolve discovery disputes."
Court GRANTS Immersion's motion for pre-judgment
February 3, 2004 Order Granting Defs.' Mot. Compel
(emphasis in the original). The Court finds that Sony's interest (Docket No. 1314). The Court DENIES
discovery conduct and willful delays do not render this Immersion's motion for attorneys' fees (Docket No.
1410) and DENIES Sony's motion for attorneys' fees
case "exceptional" under § 285. Nor do the numerous
(Docket No. 1427).
defenses asserted by Sony warrant an award of attorneys'
fees. See Stickle v. Heublein, Inc., 716 F.2d 1550 (Fed. The Court GRANTS Immersion's motion to strike
Cir. 1983) (finding that "disclosure [of] the entire litany (Docket No. 1270) the September 15, 2004 Declaration
of defenses commonly asserted in patent cases" does not of Sonal N. Mehta. The Mehta Declaration (Docket No.
constitute vexatious litigation). 1262) shall be stricken from the record and Sony shall
resubmit only email correspondence sent to the Court
Similarly, Sony's refusals to admit certain facts in its
responses to Immersion's RFAs do not warrant attorneys'
fees. Sony's refusals and its justifications thereof were IT IS SO ORDERED.
aggressively unhelpful, but this Court cannot say they
were entirely unreasonable, because they were based on Dated: January 10, 2005
the arguments Sony did present as a defense, e.g. the
existence of non-infringing uses. CLAUDIA WILKEN
On the other hand, Sony is clearly not entitled to United States District Judge
attorneys' fees. Title 35 U.S.C. § 285 [*36] limits
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