United States District Court, D. Colorado
ORDER ON POST-JUDGMENT MOTIONS
WILLIAM J. MARTÍNEZ JUDGE
the Court is XY's Motion to Alter or Amend the Judgment
Under Rule 59(e) (“Rule 59 Motion, ” ECF No.
505), and XY's Motion for Reconsideration Under Rule
60(b)(6) (“Rule 60 Motion, ” ECF No. 544). Both
of these motions challenge portions of this Court's Order
on Post-Trial Motions (“Post-Trial Order, ” ECF
No. 500). Familiarity with the Post-Trial Order is presumed.
For the reasons explained below, the Court denies the Rule 59
Motion. As for the Rule 60 Motion, the Court grants it to the
limited extent that the jury's willfulness finding is
reinstated. The Rule 60 Motion is otherwise denied.
RULE 59 ANALYSIS
brings its Rule 59 Motion specifically under Federal Rule of
Civil Procedure 59(e): “A motion to alter or amend a
judgment must be filed no later than 28 days after the entry
of judgment.” This Rule “was adopted to make
clear that the district court possesses the power to rectify
its own mistakes in the period immediately following the
entry of judgment.” White v. N.H. Dep't of
Emp't Sec., 455 U.S. 445, 450 (1982) (internal
quotation marks omitted; alterations incorporated).
Accordingly, the Court may amend the judgment in its
discretion on account of “(1) an intervening change in
the controlling law, (2) new evidence previously unavailable,
and (3) the need to correct clear error or prevent manifest
injustice.” Servants of the Paraclete v. Does,
204 F.3d 1005, 1012 (10th Cir. 2000). A motion under the
clear error prong of this test “is appropriate where
the court has misapprehended the facts, a party's
position, or the controlling law.” Id.
However, motions to alter or amend the judgment pursuant to
Rule 59(e) “are regarded with disfavor. . . [and are]
‘not appropriate to revisit issues already addressed or
advance arguments that could have been raised in prior
briefing.'” Kerber v. Qwest Group Life Ins.
Plan, 727 F.Supp.2d 1076, 1076 (D. Colo. 2010) (quoting
Servants of the Paraclete, 204 F.3d at 1012).
Post-Trial Order, the Court elected to award XY an ongoing
royalty in lieu of an injunction or a requirement that XY and
Trans Ova negotiate an ongoing royalty amongst themselves.
(ECF No. 500 at 21-23.) The Court found that the jury, in
fixing damages for past infringing sales, had accepted
XY's damages expert's 19% royalty rate. (Id.
at 23.) The Court rejected, however, XY's argument that
the ongoing royalty rate necessarily must exceed the rate set
by the jury for past infringement. (Id. at 24-25.)
The Court found that XY's primary support for its
position-the Federal Circuit's decision in Amado v.
Microsoft Corp., 517 F.3d 1353 (Fed. Cir. 2008)-does not
go as far as XY claims. (Id. at 24.) Applying
various factors, the Court instead set a royalty rate of
12.5% of gross sales, plus 2% for reverse sorting services,
with a minimum per-straw or per-service royalty of $5.
(Id. at 25-28.)
Rule 59 Motion, XY vehemently protests this Court's
decision to award less than 19%, once again citing
Amado. (Compare ECF No. 471 at 3-4
with ECF No. 505 at 3-4.) XY also cites Bianco v.
Globus Medical, Inc., 53 F.Supp.3d 929 (E.D. Tex. 2014),
in which Federal Circuit Judge William C. Bryson, sitting by
designation in the Eastern District of Texas, stated that,
“[a]lthough individual considerations may weigh in
favor of decreasing the ongoing royalty rate relative to that
awarded by the jury, the Court notes that pursuant to
Amado the ultimate ongoing royalty rate should not
be lower than the rate awarded by the jury for pre-verdict
damages.” Id. at 939. XY also cites a
forthcoming scholarly article by Gregory Sidak, chairman of
an expert economics consulting firm, who concludes that none
of the 35 post-Amado district court cases he
surveyed “specified an ongoing royalty below the
jury-determined a reasonable royalty for past damages.”
J. Gregory Sidak, Ongoing Royalties for Patent
Infringement 12 (Oct. 21, 2015), available at
(last accessed Nov. 8, 2016) (24 Texas Intell. Prop. L.J.
forthcoming 2016) (hereafter,
of course, was raised and previously rejected, and is
therefore not a basis for Rule 59 relief. And although XY did
not previously raise Bianco or the Sidak article,
neither was unavailable at the time of XY's previous
motion to set an ongoing royalty rate, which was filed on
February 29, 2016. (ECF No. 471.) Thus, those authorities
likewise present no basis for Rule 59 relief. Nonetheless,
for clarity, the Court notes the following.
has certainly been interpreted by later courts as requiring
that any ongoing royalty be set no lower than the jury's
past-infringement royalty. But this is largely based on two
considerations. First, Amado endorsed previous
non-precedential statements to the effect that “[o]nce
a judgment of validity and infringement has been entered, . .
. the [royalty] calculus is markedly different because
different economic factors are involved [as compared to a
pre-judgment calculus].” 517 F.3d at 1362. Second,
Amado stated in a footnote that “logically, the
eventual [ongoing royalty] award [in that case] should fall
somewhere between the $0.04 amount the jury found to be an
appropriate pre-verdict reasonably royalty and the $2.00
amount Amado was willing to accept in exchange for a
license.” Id. at 1362 n.2. The first statement
is arguably a holding, but it does not specify that a court
setting an ongoing royalty rate cannot go below the
jury's pre-verdict royalty rate. As for the second
(footnoted) statement, it is not a holding, but an
observation heavily informed by the facts of that case. In
particular, the court does not specify whether the jury's
pre-verdict royalty was “logically” the lowest
possible ongoing royalty because the law dictates it to be
so, because the jury's rate was the lower bound of the
parties' arguments, or because of some other
consideration. See Id. at 1356.
the Sidak article is partially senseless if Amado
amounted to a holding. Sidak, among other things, empirically
explores post-Amado district court decisions to see
whether those courts have “developed a consistent
methodology for determining an ongoing royalty.” Sidak
at 3. He finds none, and therefore proposes “a simple
yet rigorous economic methodology that courts can apply when
determining an ongoing royalty.” Id. Sidak
does not ask, “Can a judge award an ongoing royalty
rate lower than the jury's royalty rate for past
infringement?” His observation that the 35 district
court cases surveyed always award at least the same royalty
rate fixed by the jury was an observation gleaned from his
data and informing his opinions about the proper method of
calculating an ongoing royalty. See Id. at 12. When
it comes to calculating that royalty, Sidak opines that the
post-verdict context “will typically support
the award of an ongoing royalty that exceeds the reasonable
royalty awarded for past infringement, ” id.
at 25-26 (emphasis added), but he nowhere argues that any
other option is categorically off-limits.
these findings and opinions would be misdirected if
Amado indeed held that the jury's pre-verdict
royalty rate is the lower limit. An observation that 35
courts have adopted that lower limit would have no empirical
relevance to Sidak's proposed royalty calculation method,
given that the jury's rate would necessarily be the
starting point under Amado. Nor would there be any
need to discuss whether an ongoing royalty rate can drop
below the pre-verdict royalty rate.
addition, the Court finds that the current trend in Supreme
Court patent cases is to preserve district courts'
traditional equitable discretion as much as possible.
See, e.g., Halo Elecs., Inc. v. Pulse
Elecs., Inc., 136 S.Ct. 1923 (2016); eBay Inc. v.
MercExchange, L.L.C., 547 U.S. 388 (2006). Accordingly,
the Court reaffirms its previous finding that,
notwithstanding other courts' and commentators'
interpretations of Amado, district courts retain the
equitable discretion to set any adequately reasoned ongoing
royalty rate, whether above or below the rate fixed by the
jury for pre-verdict infringement. (See ECF No. 500
the rate the Court selected here, the Court thoroughly
explained its reasoning in the Post-Trial Order. (See
id.) To that reasoning, the Court adds only that-to the
extent Federal Rule of Evidence 408 prevents the Court from
considering the parties' failed license negotiations
(see ECF No. 505 at 9)-the Court would nonetheless
have concluded that XY was not, in reality, a willing
licensor based solely on the jury's finding that both
parties breached their agreement (see ECF No. 500 at