Prism Technologies v. Sprint Spectrum L.P.

Filing 590

MEMORANDUM OPINION - The plaintiff, Prism Technologies, LLC (Prism), filed a motion for prejudgment and postjudgment interest to be paid by the defendant, Sprint Spectrum L.P., (Sprint) (Filing No. 489 ). In addition, Prism filed a motion for a n accounting and ongoing royalties (Filing No. 496 ). The two motions have been fully briefed and are ready for disposition. After reviewing the motions, briefs, indices of evidence, and the relevant law, the Court finds as set forth in this Memorandum Opinion. Ordered by Senior Judge Lyle E. Strom. (GJG)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF NEBRASKA
PRISM TECHNOLOGIES, LLC,

)
)
Plaintiff,
)
)
v.
)
)
SPRINT SPECTRUM L.P.,
)
d/b/a SPRINT PCS,
)
)
Defendant.
)
______________________________)

8:12CV123

MEMORANDUM OPINION

This matter is before the Court on two related motions.
The plaintiff, Prism Technologies, LLC (“Prism”), filed a motion
for prejudgment and postjudgment interest to be paid by the
defendant, Sprint Spectrum L.P., (“Sprint”) (Filing No. 489).

In

addition, Prism filed a motion for an accounting and ongoing
royalties (Filing No. 496).

The two motions have been fully

briefed and are ready for disposition.

After reviewing the

motions, briefs, indices of evidence, and the relevant law, the
Court finds as follows.
Background
Prism brought suit against Sprint alleging patent
infringement of U.S. Patent Nos. 8,127,345 and 8,387,155 (the
“Asserted Patents”).

A seven-day trial was held in June of 2015.

On June 23, 2015, the jury returned a verdict is favor of Prism.
The jury awarded Prism $30 million in damages for Sprint’s

infringement of the asserted patents.

Prism moves this Court for

prejudgment and postjudgment interest and for an accounting and
ongoing royalties.
Discussion
I. Motion for Prejudgment and Postjudgment Interest
Prism moves this Court for an award of prejudgment and
postjudgment interest.

Prism suggests that prejudgment interest

should be calculated using the prime rate compounded quarterly.
Prism has submitted a calculation of prejudgment interest
calculated by James E. Malackowski (Filing No. 493, Exhibit 5).
Sprint alleges that the prejudgment interest, if awarded, should
be calculated at the Treasury bond rate, compounded annually.
Both parties agree that postjudgment interest is appropriate
under 28 U.S.C. § 1961.
The Supreme Court has held that prejudgment interest
should ordinarily be awarded in patent cases, but an award is not
automatic.

General Motors Corp. v. Devex Corp., 461 U.S. 648,

103 S.Ct. 2058, 76 L.Ed.2d 211 (1983).

“For example, it may be

appropriate to limit prejudgment interest, or perhaps even deny
it altogether, where the patent owner has been responsible for
undue delay in prosecuting the lawsuit.

There may be other

circumstances in which it may be appropriate not to award
prejudgment interest.”

Bio-Rad Laboratories, Inc. v. Nicolet
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Instrument Corp., 807 F.2d 964, 967 (Fed. Cir. 1986).

Applying

these standards, the Court finds that there are no circumstances
precluding awarding prejudgment interest.

However, the issue

before the Court is what rate to apply to the awarded prejudgment
interest.
Prism alleges that the prime rate is appropriate in
calculating the prejudgment interest owed to Prism.

However,

Sprint claims that a prejudgment interest should be calculated at
the Treasury bond rate.

“Regarding the rate at which prejudgment

interest is calculated, the district court has the discretion to
determine whether to use the prime rate, the prime rate plus a
percentage, the U.S. Treasury rate, state statutory rate,
corporate bond rate, or whatever rate the court deems appropriate
under the circumstances.”

Century Wrecker Corp. v. E.R. Buske

Mfg. Co., Inc., 913 F. Supp. 1256, 1280 (N.D. Iowa 1996).

The

Court finds that the prime rate at 3.25% would best compensates
Prism for Sprint’s infringement.

As a result, the Court will

grant Prism’s motion for prejudgment interest to be calculated at
the prime rate of 3.25% and compounded quarterly, totaling
$2,001,923.
Under 28 U.S.C. § 1961, “interest shall be allowed on
any money judgment in a civil case recovered in a district
court.”

Postjudgment interest “shall be calculated from the date
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of the entry of the judgment, at a rate equal to the weekly
average 1-year constant maturity Treasury yield . . . compounded
annually.”

Id.
Both parties agree that Prism is entitled to

postjudgment interest calculated using the Treasury bond rate
pursuant to 28 U.S.C. § 1961.

Prism alleges that postjudgment

interest should be awarded inclusive of prejudgment interest and
any award of ongoing royalties.

The Court addresses Prism’s

motion for ongoing royalties below.

The Court will grant the

plaintiff’s motion for postjudgment interest which shall be
calculated using the “weekly average 1-year constant maturity
Treasury yield . . . compounded annually” pursuant to 28 U.S.C.
§ 1961.
II. Motion for an Accounting and Ongoing Royalties
Prism moves this Court for an accounting for Sprint’s
infringement after 2014 through the entry of judgment and to have
a royalty set for ongoing infringement through the life of the
Asserted Patents.

Sprint opposes Prism’s motion and alleges that

both an accounting and ongoing royalties are improper.

Sprint

argues that the jury instructions were clear to provide Prism
compensation for past, present, and ongoing infringement.

Prism

claims that an accounting and ongoing royalties would grant Prism
with complete relief from the infringement.
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Under 35 U.S.C. § 284, a prevailing patentee shall be
awarded damages “adequate to compensate for the infringement, but
in no event less than a reasonable royalty for the use made of
the invention by the infringer, together with interest and costs
as fixed by the court.”

The district court has discretion to

determine whether an ongoing royalty would be appropriate.

The

Court finds that the jury instructions were clear in providing
Prism with complete relief from infringement.

The jury was

instructed that, “[T]he damages you award must be adequate to
compensate Prism for the infringement . . . . Your damages award,
if you reach this issue, should put Prism in approximately the
same financial position that it would have been in had the
infringement not occurred.”

(Filing No. 466 at 25).

In

addition, question 2 on the verdict form indicated that the jury
would be awarding damages in the amount of a reasonable royalty.
(See Filing No. 467).

The Court finds that an accounting and

ongoing royalties would be inappropriate because the $30 million
jury verdict represents the jury’s award of a reasonable royalty
to compensate Prism for Sprint’s past, present, and ongoing
infringement.

As a result, the Court will deny Prism’s motion

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for an accounting and ongoing royalties.

A separate order will

be entered in accordance with this memorandum opinion.
DATED this 18th day of December, 2015.
BY THE COURT:
/s/ Lyle E. Strom
____________________________
LYLE E. STROM, Senior Judge
United States District Court

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