Mondis Technology Ltd v. LG Electronics Inc et al

Filing 786

OPINION. Signed by Judge Stanley R. Chesler on 6/1/2023. (sm)

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 1 of 38 PageID: 56827

UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
____________________________________
:
:
:
Plaintiff,
:
:
v.
:
:
LG ELECTRONICS, INC.
:
et al.,
:
:
Defendants.
:
____________________________________:
MONDIS TECHNOLOGY LTD,

Civil Action No. 15-4431 (SRC)

OPINION

CHESLER, U.S.D.J.
This matter comes before the Court on three motions: 1) the motion by Defendants LG
Electronics, Inc. and LG Electronics U.S.A., Inc. (collectively, “LG”) for judgment as a matter
of law under Rule 50(b), a new trial under Rule 59, and/or remittitur regarding damages; 2) the
motion by Plaintiff Mondis Technology Ltd (“Mondis”) for enhanced damages and attorneys’
fees, pursuant to 35 U.S.C. §§ 284 and 285; and 3) Mondis’ motion for prejudgment and
postjudgment interest. For the reasons that follow, LG’s motion for judgment as a matter of
law under Rule 50(b), a new trial under Rule 59, and/or remittitur regarding damages will be
denied; Plaintiff’s motion for enhanced damages and attorneys’ fees, pursuant to 35 U.S.C. §§
284 and 285, will be denied; and Plaintiff’s motion for prejudgment and postjudgment interest
will be granted in part and denied in part.
This case arises from a dispute between Mondis, owner of U.S. Patent No. 7,475,180
(the “’180 patent”), and LG, a television manufacturer, over allegations that LG manufactured
and sold televisions that infringed claims 14 and 15 of the ’180 patent. A jury trial was held in
1

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 2 of 38 PageID: 56828

April of 2019; the jury returned a verdict that claims 14 and 15 of the ’180 patent were valid
and infringed, and that the infringement was willful, and the jury awarded Mondis
compensatory damages of $45 million. The Court subsequently granted LG’s motion to vacate
the damages verdict and Ordered a re-trial on damages. The re-trial was held on February 6
and 7, 2023; the jury awarded Mondis compensatory damages of $14.3 million. The Court now
considers the parties’ post-trial motions arising from the re-trial.
I.

Mondis’ motion for enhanced damages and attorneys’ fees
Mondis moves for enhanced damages, pursuant to 35 U.S.C. § 284, and a declaration that

this is an exceptional case, pursuant to 35 U.S.C. § 285, with an award of attorneys’ fees and
costs. The Court begins its consideration of this motion with a brief review of the history of this
case.
A. The history of the case
In discussing the early history of this case, LG cites a summary written by Mondis in its
opening brief in support of its in limine motions before the first trial. It is a helpful summary of
the early history of the case:
As noted above, Mondis and LG have a long history litigating the ’180 patent and
related DDC patents. In 2007, Mondis sued LG and other defendants in the 565
Case for infringement of DDC patents 6,057,812 (“’812 patent”), 6,247,090
(“’090 patent”), 6,304,236 (“’236 patent”), 6,513,088 (“’088 patent”), 6,549,970
(“’970 patent”), 6,639,588 (“’588 patent”), and 6,686,895 (“’895 patent”), later
adding patents 7,089,342 (“’342 patent”), 7,475,181 (“’181 patent”) and the `180
patent. After LG settled the case with a more-than-$8 million license, trial
proceeded to verdict against Innolux on June 27, 2011. Ex. 11 (verdict sheet). The
jury found that Innolux infringed all of the claims of the ’180 patent asserted in
this case, and infringed all asserted claims of the ’342 patent, ’812 patent, and
’588 patents, as well as one of the three asserted ’090 patent claims. The jury also
found all these infringed claims to be valid. However, the jury found none of the
’088 and ’970 patent claims infringed, and found invalid all of the ’090, ’088 and
’970 patent claims that it also found uninfringed. Ex. 11.
2

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 3 of 38 PageID: 56829

Between the time of the 2011 trial in the 565 case and 2014, Mondis tried to
negotiate a DDC patent license with LG for its televisions. When that effort
failed, Mondis filed this lawsuit on June 21, 2014, in Texas for infringement of
the then-expired ’180, ’088, ’970, ’588 and ’342 patents. About a month earlier,
LG launched a campaign of what became serial ex parte reexaminations to
invalidate the asserted patents. See D.I. 86 at 3. During reexamination the patent
office rejected claims to all of the patents, although eventually, it confirmed
claims 14-16 of the ’180 patent. With the other asserted patents expired, Mondis
chose to forego its still-substantial appeal rights, and move forward expeditiously
with the confirmed claims of the ’180 patent, to avoid further delay.
(Docket Entry No. 331 at 24-25.) In this Opinion, this Court refers to the case which went to a
jury verdict in the District Court for the Eastern District of Texas as the “Texas Case,” to
distinguish it from the instant case which, though filed in that same district, was transferred to
the District of New Jersey and has gone to trial here twice (the “First Trial” and the “Re-trial.”)
The Mondis MIL summary lays out much of the relevant background history, but a few
points need to be added. When Mondis filed the complaint in 2007 that began the Texas Case,
the claims concerned only computer monitors which were alleged to infringe based on their use
of “Plug and Play” technology (also referred to as “DDC” or “DDC2B” technology.) (Texas
Case complaint, Docket Entry No. 1, December 31, 2007.)1 In the original complaint, Mondis
filed suit against three manufacturers of computer monitors, LG, Hon Hai, and Innolux. (Id.)
Thus, when Mondis filed its first patent infringement suit against LG, the complaint did
not allege that LG televisions infringed its patents, nor did it mention the ’180 patent, which had
not yet issued. At the first trial in the instant case, Mr. Alessi, former Director of Product
Development for LG, testified that LG sold televisions with HDMI2 ports as early as the 2005

1

The Court takes judicial notice under Rule 201 of the public record from that litigation, Mondis
v. Innolux et al., Civil Action No. 07-565 JRG (E.D.Tx. 2007.)
2
HDMI ports use the ’180 patent’s technology. (Pl.’s Trial Brief (1st) at 4 (“use of HDMI inputs
3

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 4 of 38 PageID: 56830

model year. (First Trial Tr. 721:4-7.) The ’180 patent issued on January 6, 2009. On March 9,
2009, Mondis filed the first amended complaint in the Texas Case and added claims for
infringement of the ’180 patent by monitors; the claims did not yet target televisions. (Texas
Case Docket Entry No. 103.) At the first trial in the instant case, Mr. Spiro, Director of Mondis,
testified that Mondis first raised the issue of infringement by LG televisions at a meeting with
LG in April of 2009.3 (First Trial Tr. 114:20-117:22; 195:1-17.) Spiro also testified that LG and
Mondis settled the Texas Case in principle in May of 2009, and the settlement was finalized in
September of 2009. (First Trial Tr. 118:19-119:16.) LG was dismissed from the Texas Case on
consent on September 17, 2009. (Texas Case Docket Entry No. 135.) Spiro testified that,
pursuant to the settlement agreement, LG purchased a license to use the DDC patents in
monitors; “about 8.85 million was paid when the license was signed and then over time another
400,000 was paid further.” (First Trial Tr. 111:22-23.)
On January 15, 2010, Mondis filed the third amended complaint in the Texas Case,
adding claims that televisions sold by the remaining defendants infringed the ’090, ’088, ’970,
’342, and ’180 patents. (Texas Case Docket Entry No. 153.) As already described, the Texas
Case went to trial, with the jury finding that the asserted claims of the ’180 patent were valid and
infringed by the televisions of defendant Innolux, and awarding damages. Spiro testified that
Innolux appealed the verdict but ultimately settled with Mondis for the full amount of the
verdict.4 (First Trial Tr. 990:9-15.)

results in practicing the ʼ180 patent because the HDMI specification incorporates and utilizes the
above described VESA and I2C standards.”))
3
The parties stipulated that the damages period ran from April 2, 2009 to February 3, 2014.
(Docket Entry No. 469.)
4
Bratic’s expert report, dated February 5, 2018, states a date of March 5, 2013 for the
4

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 5 of 38 PageID: 56831

The ’180 patent expired on February 3, 2014. As stated in the Mondis MIL summary, in
May of 2014, LG filed the first of a series of reexamination requests with the PTO for the patents
at issue. The following month, Mondis filed the instant suit for infringement of the ’180, ’088,
’970, ’588 and ’342 patents. During reexamination, the PTO rejected all claims in the ’088,
’970, ’588 and ’342 patents. During reexamination of the ’180 patent, the PTO issued an initial
office action rejecting the claims at issue in the ’180 patent, claims 14-16, but ultimately
reversed course and affirmed claims 14-16;5 the remaining claims of the ’180 patent were
rejected on reexamination.
Having reviewed the history of this case, the Court proceeds to consider the motion for an
award of enhanced damages, pursuant to 35 U.S.C. § 284, which states: “the court may increase
the damages up to three times the amount found or assessed.” When considering a motion for

Mondis/Innolux settlement agreement. (Docket Entry No. 639 Ex. 2 at ⁋ 113.)
5
On June 30, 2015, the PTO issued a final Office Action in Ex Parte Reexamination that
confirmed claims 14-16 of the ’180 patent, while rejecting other claims from that patent.
(Docket Entry No. 86 Ex. B at 16 (page numbers for Exhibit B are based on the Court’s
numbering, not the PTO’s.)) In the accompanying explanation, the PTO recited the full
reexamination history of the ’180 patent, which had first been challenged in June of 2009. (Id. at
18.) On October 6, 2009, the PTO issued a First Action on the Merits with claims 1-16 and 2129 under rejection. (Id. at 19.) On October 14, 2011, the PTO issued an Action Closing
Prosecution which maintained these rejections. (Id. at 20.) On April 11, 2014, however, this
first reexamination of claims 14-16, and others, was dismissed. (Id. at 21.) Nonetheless, the
reexamination of claims 14-16 continued in two other reexaminations, which were merged. (Id.
at 22.) On March 9, 2015, the PTO issued another First Action on the Merits that rejected claims
14-20, and others. (Id. at 22.) In this merged reexamination, in the Final Office Action dated
June 30, 2015, the PTO then reversed course with regard to claims 14-16, based on the patent
owner’s arguments. The PTO explained, in short, that it agreed that the Schmidt reference did
not disclose certain elements of claims 14-16, and it withdrew the rejection of these claims. (Id.
at 36.) The PTO also explained that it disagreed with the other four arguments of the patent
owner about claims 14-16 and the Schmidt reference. (Id. at 35-39.) One argument had
succeeded, however, and claims 14-16 were confirmed in the final Office Action of June 2015.
(Id. at 46.)
5

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 6 of 38 PageID: 56832

enhanced damages under § 284, the Court applies the principles set forth by the Supreme Court
in Halo:
Section 284 gives district courts the discretion to award enhanced damages
against those guilty of patent infringement. In applying this discretion, district
courts are “to be guided by [the] sound legal principles” developed over nearly
two centuries of application and interpretation of the Patent Act. Those principles
channel the exercise of discretion, limiting the award of enhanced damages to
egregious cases of misconduct beyond typical infringement.
Halo Elecs., Inc. v. Pulse Elecs., Inc., 579 U.S. 93, 110 (2016) (citation omitted.) Prior to the
Halo decision, Federal Circuit law required courts considering an award of enhanced damages to
weigh the nine factors stated in Read Corp. v. Portec, Inc., 970 F.2d 816, 827 (Fed. Cir. 1992).
Following the Halo decision, the Federal Circuit no longer requires consideration of the Read
factors:
[T]he district court is not required to discuss the Read factors. . . . The Halo test
merely requires the district court to consider the particular circumstances of the
case to determine whether it is egregious.
Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369, 1382-83 (Fed. Cir.
2017). Here, Mondis has used the Read framework to argue for enhanced damages. In light of
this, the Court will begin by considering Plaintiff’s application of Read to the issue of enhanced
damages.
B. Mondis contends that the Read factors support an award of enhanced damages
As to the first Read factor, copying, the jury determined that LG willfully infringed the
claims at issue; Mondis contends that this clearly demonstrates that LG copied its designs. LG
argues, in opposition, that it began use of DDC2B technology prior to the issuance of the ’180
patent. The parties did not litigate the question of when LG began to incorporate DDC2B
technology into the designs of its televisions, nor how it developed its DDC2B designs, and so
6

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 7 of 38 PageID: 56833

the Court cannot now determine whether LG did in fact deliberately copy a Mondis or Hitachi
design or arrived at the infringing design by some other route.6 Mondis cites no evidence that
LG copied anything directly from Mondis or Hitachi.
In any case, the ultimate issue is whether Mondis has demonstrated that LG engaged in
“egregious [] misconduct beyond typical infringement.” Halo, 579 U.S. at 110. While the jury
determined that LG’s infringement was willful, and thus beyond typical infringement, Mondis
has not pointed to circumstances that evidence egregious misconduct – conduct that is malicious
or characteristic of a pirate. The Court concludes that the first Read factor reflects the
willfulness finding, but does not do more to tip the balance toward a finding of egregious
misconduct.
The second Read factor asks “whether the infringer, when he knew of the other’s patent
protection, investigated the scope of the patent and formed a good-faith belief that it was invalid
or that it was not infringed.” Read, 970 F.2d at 827. It is undisputed that Mondis informed LG
about the ’180 patent at the start of the period of infringement. Mondis argues, in essence, that
this Court should make an adverse inference against LG because LG has not offered evidence of
if or when it formed such a good-faith belief. This Court declines to make an adverse inference.

It is undisputed that the Video Electronics Standards Association (VESA) established a standard
that used DDC2B technology, and that this occurred prior to the issuance of the ’180 patent. As
already stated, the parties did not litigate the origins of LG’s infringing designs, but this case
appears to present a situation in which LG began use of DDC2B technology before the patent
was issued, the television manufacturing industry adopted a standard which required use of
DDC2B technology before the patent was issued, and the period of infringement began later,
after the patent issued. No evidence was presented that demonstrates that LG began use of the
DDC2B technology with knowledge that the technology was the intellectual property of Hitachi.
Mondis did not establish that LG began use in circumstances indicative of piracy or malicious
intent.
6

7

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 8 of 38 PageID: 56834

Mondis has pointed to no evidence about LG’s investigation of the scope of the patent nor
whether LG had a good-faith belief that the ’180 patent was invalid or not infringed.
The third Read factor concerns the infringer’s behavior as a party to the litigation.
Mondis contends that LG worked to prolong the litigation, asserted meritless positions, filed
duplicative motions, and made improper arguments to the jury. As LG argues in opposition, this
case did not begin until several months after the expiration of the ’180 patent, which ended the
period of infringement. Even if Mondis had support for its allegations of litigation misconduct,
it would need to persuade the Court that there is a nexus between such conduct and the
“egregious infringement behavior” that Halo recognized as essential for enhancement of
damages under § 284.7 Mondis has given the Court no reason to consider LG’s postinfringement conduct of the litigation as “infringement behavior.” LG also cites Spectralytics,
Inc. v. Cordis Corp., 649 F.3d 1336, 1349 (Fed. Cir. 2011): “attorney misconduct or other
aggravation of the litigation process may weigh heavily with respect to attorney fees, but not for
enhancement of damages.”
Furthermore, even if Mondis had persuaded the Court that LG’s post-infringement
litigation conduct should be considered “infringement behavior,” the Court does not agree that
LG’s conduct of the litigation has been egregious. This case has been hard-fought by determined
adversaries, and neither side distinguished itself as either virtuous or malicious. The third Read
factor, LG’s behavior as a party to the litigation, is neutral.
As for the fourth Read factor, LG’s size and financial condition, Mondis argues only that

The Supreme Court stated: “enhanced damages under the Patent Act . . . are not to be meted out
in a typical infringement case, but are instead designed as a ‘punitive’ or ‘vindictive’ sanction for
egregious infringement behavior.” Halo, 579 U.S. at 103.
7

8

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 9 of 38 PageID: 56835

LG is capable of paying an enhanced verdict. LG responds that this is an immaterial
consideration. The Court is not persuaded that, in this case, LG’s size and financial stability
weigh for or against a finding of egregious infringement behavior.
The fifth Read factor is the closeness of the case.8 Mondis argues that it “prevailed on
every major event in the case up through trial.” (Pl.’s Br. at 25.) Mondis also contends, on
various grounds, that LG’s defenses were weak. LG, in opposition, begins by pointing to the
decimation of Plaintiff’s case during reexamination at the USPTO. The Mondis MIL summary,
quoted above, establishes this: in the original Complaint filed by Mondis that initiated this case,
it asserted infringement of five patents, the ’180, ’088, ’970, ’588 and ’342 patents. These
patents were reexamined by the USPTO and, as Mondis concedes, there was a point in the
reexamination process in which every claim of every patent was rejected. Ultimately, Mondis
persuaded the PTO to change its view of the contents of the Schmidt reference, and only claims
14-16 of the ’180 patent were confirmed. (Final Office Action in Ex Parte Reexamination, dated
June 30, 2015, at 21, Ex. B to Walsh Letter of July 24, 2015, Docket Entry No. 86.) Three
claims survived reexamination, but four patents and all the other claims of the ’180 patent did

8

Mondis, in reply, argues that Read factor 5 considers only the issues actually tried, but cites no
Federal Circuit authority in support of this position. The Federal Circuit’s decision in Funai runs
contrary to Plaintiff’s contention: the Federal Circuit reviewed the district court’s analysis of this
factor and found no abuse of discretion, noting that the district court had considered a party’s
success on three pre-trial motions. Funai Elec. Co., Ltd. v. Daewoo Elecs. Corp., 616 F.3d 1357,
1377 (Fed. Cir. 2010). The fifth Read factor says “case,” not “trial.” The instant case began
with five valid patents and the subsequent rejection on reexamination of so many claims is an
objective indicator of the closeness of the case. Moreover, even if Mondis is correct that “case”
in Read means “trial,” the case presented at trial was close enough that the Court would not agree
that LG was in a very weak position at trial. Finally, inasmuch as Halo held that a district court
should exercise its discretion to award enhanced damages, and “we eschew any rigid formula for
awarding enhanced damages under §284,” the Read factors no longer constrain the inquiry. 579
U.S. at 107.
9

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 10 of 38 PageID: 56836

not. The reexamination history provides an objective indicator of the closeness of this case: it
has been a close case, as demonstrated by the undisputed fact that, at one point in time, all claims
at issue were rejected by the PTO during reexamination.
The Court also agrees with LG that it presented substantial defenses to the claims of
infringement for the 3 claims that did survive reexamination. Although the jury was ultimately
not persuaded by LG’s invalidity defense of lack of written description, and its non-infringement
defenses about the communication controller and the identification number, they were colorable
positions. In particular, the issue about the presence of the identification number was a hotly
contested and close one, as evidenced by the oral argument between the parties at the end of day
1 and the start of day 2 of trial. (First Trial Tr. 138-152; 156-172.) Although the jury was not, in
the end, persuaded by LG’s evidence and argument that the part of the Feature Support Byte in
question did not actually identify anything, and therefore was not an identification number, it
was a viable enough argument that Mondis worked hard to convince the Court to bar Dr.
Stevenson’s testimony about his experiments. (Id.) As the Court stated at the end of the parties’
argument on day 2: “it’s the Court’s opinion that the evidence that manipulating these bits has no
impact may very well be relevant to the jury’s determination as to whether or not this is an
identification number or not within the meaning of the claim.” (First Trial Tr. 172:2-7.) Had the
jury been persuaded by LG on this point, it could not have made a finding of infringement, and
LG would have won the case.
As to the sixth and seventh Read factors, the facts are clear. As to the duration of the
misconduct, the sixth factor, there is no dispute that LG infringed for the life of the patent, with
notice of the patent for most of that time. As to remedial action by the defendant, the seventh

10

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 11 of 38 PageID: 56837

factor, it is undisputed that LG took none. The question is the significance of these facts, to be
discussed further below.
As to the eighth Read factor, Defendant’s motivation for harm, Mondis offers a few
paragraphs which cite to no evidence that LG demonstrated a motivation to harm Mondis or
Hitachi. As already noted, the parties did not litigate the question of the origin of LG’s
infringing design.
As to the ninth Read factor, whether Defendant attempted to conceal its misconduct,
Mondis argues that LG, during the course of litigation, attempted to shield a portion of infringing
television sales from discovery. Both Plaintiff’s moving brief and LG’s opposition brief offer
little clarity on this discovery dispute that, Mondis agrees, was resolved before trial. The most
that this Court can say, based on the briefs, is that Mondis has cited no evidence that tends to
show that it is more likely than not that LG actually concealed particular sales data from
discovery. Plaintiff’s brief offers rhetoric, but not evidence of discovery misconduct worthy of
punishment. For example, as evidence, Mondis offers a draft of a letter, dated December 1,
2016, from (LG counsel) Edwards to Magistrate Judge Waldor, describing the discovery dispute.
(Goldberg Dec. Ex. 15.) The draft letter includes descriptions of Plaintiff’s understanding of
LG’s position on various relevant issues, and it described LG as taking the position that Mondis
should specifically identify by model number each model for which it sought sales data. (See,
e.g., id. at 4 (“LG asserted that it was Mondis’ burden, not LG’s, to determine from public
sources all the models that LG sold in the U.S. during the damages period, and whether they had
the infringing features.”)) Mondis also offers the letter, dated April 19, 2017, from (LG counsel)
Beaber to (Mondis counsel) Edwards on this subject. (Goldberg Dec. Ex. 36.) In that letter,

11

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 12 of 38 PageID: 56838

counsel for LG explains that LG’s sales database does not track which models contain an HDMI
port. (Id. at 1.) There appears to have been a dispute between the parties about whose job it was
to figure out which television models contained HDMI ports. (See, e.g., id. at 2.)
These letters show the parties working toward resolution of a discovery dispute, and do
not support the contention that LG deliberately concealed sales data. Mondis has not persuaded
the Court that LG deliberately concealed sales data on infringing televisions. In light of the fact
that it is undisputed that, during the infringement period, LG advertised and sold its televisions to
the public, and that Plug and Play functionality was promoted as a feature, the evidence suggests
that LG did not attempt to conceal its infringement of the ’180 patent.
Lastly, Mondis points to LG’s conduct during pre-litigation license negotiations which, it
contends, demonstrates a pattern of bad faith and dishonesty. Yet the thread that runs through
Plaintiff’s brief review of the negotiation history is that LG agreed to pay for a license for its
computer monitors but did not agree to pay for a license for its televisions. This is not evidence
of egregious infringement misconduct. To the contrary, the fact that LG paid Mondis for a
license for use of the technology in monitors weighs against viewing LG as a pirate.
The Court has considered Plaintiff’s arguments in favor of enhancement of infringement
damages, pursuant to § 284. The Court is satisfied that viewing Mondis’ arguments under the
Read approach hardly makes a compelling case for enhanced damages. The Court proceeds to
consider the motion under the more generalized Halo approach, and likewise concludes that
Mondis has failed to demonstrate that enhanced damages are warranted.
In Halo, the Supreme Court summarized the standard as follows: “Awards of enhanced
damages under the Patent Act over the past 180 years establish that they are not to be meted out

12

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 13 of 38 PageID: 56839

in a typical infringement case, but are instead designed as a ‘punitive’ or ‘vindictive’ sanction for
egregious infringement behavior.” 579 U.S. at 103. Mondis argues: “The Read and other
pertinent factors support enhancement.” (Pl.’s Br. at 13.) Mondis has not, however, cited
evidence from which this Court concludes that it is more likely than not that LG’s infringement
behavior was egregious, within the meaning of Halo. The evidence cited by Mondis supports the
jury’s verdict that LG’s infringement was willful: the evidence supports inferences that, during
the period of infringement, LG knew about the ’180 patent, knew that Mondis believed that LG’s
televisions infringed the ’180 patent, and infringed.
A finding of willfulness alone does not provide sufficient basis for enhancement of
damages. The Federal Circuit has stated:
[A]n award of enhanced damages does not necessarily flow from a willfulness
finding. Discretion remains with the court to determine whether the conduct is
sufficiently egregious to warrant enhanced damages.
Presidio Components, Inc. v. Am. Tech. Ceramics Corp., 875 F.3d 1369, 1382 (Fed. Cir. 2017)
(citations omitted); see also Halo, 579 U.S. at 105 (“The subjective willfulness of a patent
infringer, intentional or knowing, may warrant enhanced damages”) (italics added). Mondis has
demonstrated that LG’s infringement conduct was willful, but not that it was sufficiently
egregious to warrant enhanced damages.
Having considered the particular circumstances of this case, the Court finds scant
evidence to support a finding that LG’s infringement conduct was egregious, within the meaning
of Halo: “willful, wanton, malicious, bad-faith, deliberate, consciously wrongful, flagrant, or—
indeed—characteristic of a pirate.” 579 U.S. at 103-04. Instead, the Court finds that,
considering all the circumstances of this case, LG’s infringement conduct was not egregious.

13

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 14 of 38 PageID: 56840

One circumstance that weighs strongly against the view of LG as a pirate is that LG licensed the
DDC2B technology for use in its computer monitors, paying Mondis almost $9 million for that
license, plus running royalties. This is not the conduct of a pirate.
Nor does the history otherwise support the conclusion that LG’s infringement conduct
was egregious. No evidence has been presented that demonstrates that LG in fact copied any
element of its televisions from Mondis or Hitachi; there is no dispute that the DDC2B
technology had been incorporated into a VESA standard that many television manufacturers
incorporated into their products, well before Mondis filed suit in 2007 against LG and other
manufacturers in Texas with regard to computer monitors. For the majority of the period of
infringement, the claims at issue were under rejection during reexamination at the PTO.9
For purposes of deciding the motion for enhanced damages, it is sufficient to determine
that Mondis has not demonstrated that, considering all the circumstances of the case, it is more
likely than not that LG’s conduct as an infringer was egregious. The Court is not tasked with
determining whether LG’s conduct as an infringer was reasonable, yet it is not difficult to see
LG’s conduct during the period of infringement as consistent with a reasonable belief that LG’s
televisions did not infringe any valid patent. The key historical facts which support this view
have been discussed with regard to the fifth Read factor, the closeness of the case. LG has
contended in this case that its televisions do not infringe any valid patents, and the results of the
USPTO reexamination show not only that this contention was proven largely correct, but that

As previously stated, the history of the reexamination of the ’180 patent shows that, on October
6, 2009, the PTO issued a First Action on the Merits with claims 14 and 15, the claims presently
at issue, under rejection. Until this reexamination was dismissed on April 11, 2014, the PTO had
not reversed or modified the initial rejection of claims 14 and 15.
9

14

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 15 of 38 PageID: 56841

Mondis came quite close to having all the patents at issue invalidated. Viewed in hindsight and
in the context of these historical facts, it is not difficult to see LG’s infringement conduct as
consistent with a reasonable belief of no infringement of any valid patent.
In Halo, the Supreme Court exemplified “the most culpable offender[] . . . as the ‘wanton
and malicious pirate’ who intentionally infringes another’s patent—with no doubts about its
validity or any notion of a defense—for no purpose other than to steal the patentee’s business.”
579 U.S. at 104. This is a very helpful example of egregious infringement conduct, and the
evidence of record supports the conclusion that LG’s infringement conduct differed greatly from
this extreme case. First, Mondis does not contend that LG sought to steal its licensing business,
or that LG sought to steal Hitachi’s television business. There is no evidence about how LG
came to use DDC2B technology in its televisions, and thus no evidence that LG copied anything
from Mondis or Hitachi (rather than the VESA standard). Rather, LG purchased from Mondis a
license for use of the technology in monitors, the total opposite of theft.
In arguing for enhanced damages, Mondis contends that LG has offered no exculpatory
evidence that would show a good faith belief in non-infringement or patent invalidity, but that
shifts the burden of proof off of Mondis. On this motion for enhanced damages, Mondis bears
the burden of proof of LG’s egregious infringement conduct, and Mondis has offered no
evidence that LG believed that the ’180 patent was valid and that LG’s televisions infringed. To
the contrary, the evidence shows that, for the majority of the period of infringement, the claims
at issue were under rejection during reexamination at the PTO. After the expiration of the ’180
patent in 2014, and after the PTO dismissed a pending reexamination of the ’180 patent, LG
quickly challenged the validity of the ’180 patent and other patents in the ’090 family by

15

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 16 of 38 PageID: 56842

requesting reexamination. Mondis admits that in one period during reexamination, all claims of
all patents at issue had been rejected by the USPTO. This is not evidence of LG’s beliefs or
motives during the period of infringement, but it still weighs against a conclusion that LG’s
conduct was egregious. Although LG’s requests for reexamination occurred after the expiration
of the ’180 patent, this is circumstantial evidence that LG had doubts about the validity of the
patents, and that these doubts were largely proven to be justified. Mondis has offered no
evidence that LG believed that its televisions infringed any valid patents.
Considering the totality of the circumstances, the Court finds that Mondis has failed to
prove, by a preponderance of the evidence, that LG’s infringement conduct was anywhere close
to the example of egregious misconduct provided by the Supreme Court in Halo. Mondis has not
persuaded the Court that LG’s conduct as an infringer, though willful, is sufficiently culpable as
to deserve punishment, pursuant to 35 U.S.C. § 284.
C. Plaintiff’s motion to declare this an exceptional case
Mondis argues that the Court should declare this to be an exceptional case, pursuant to §
285, on four grounds:
(1) to give life to the jury's finding of willfulness, (2) because of the
unreasonableness of LG's positions and litigation conduct, (3) to ensure proper
compensation to Mondis for the lengthy path to trial, and (4) to deter LG and
others from acting similarly in future cases.
(Pl.’s Br. at 35.) The Supreme Court has held:
[A]n “exceptional” case is simply one that stands out from others with respect to
the substantive strength of a party’s litigating position (considering both the
governing law and the facts of the case) or the unreasonable manner in which the
case was litigated. District courts may determine whether a case is “exceptional”
in the case-by-case exercise of their discretion, considering the totality of the
circumstances. As in the comparable context of the Copyright Act, there is no
precise rule or formula for making these determinations, but instead equitable
16

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 17 of 38 PageID: 56843

discretion should be exercised in light of the considerations we have identified.
Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014).
As to the first element cited by Plaintiff, the jury’s finding of willfulness, in opposition,
LG cites Sionyx LLC v. Hamamatsu Photonics K.K., 981 F.3d 1339, 1355 (Fed. Cir. 2020), in
which the Federal Circuit stated: “While willfulness is among the reasons that a court may find a
case to be exceptional, an attorney fee award is not mandatory when willful infringement has
been found.” Mondis does not argue that the willfulness finding reflects the substantive strength
of its litigating position or unreasonableness in the manner in which the case was litigated, and
thus has failed to connect the willfulness verdict in this case to the Octane standard.
As to the second element cited by Plaintiff, the unreasonableness of LG’s positions and
litigation conduct, the Court has addressed these issues in its discussion of the Read factors. This
has been a close case and neither party has shown a striking imbalance, or advantage, in the
relative strength or weakness of its substantive litigating positions.
As to the third element, to ensure that Mondis receives proper compensation, Octane does
not reference that as a policy goal of § 285. While Octane does include a footnote to a case
under the Copyright Act in which compensation and deterrence goals were relevant, the Supreme
Court’s discussion about § 285 focuses on the losing party’s position in and conduct of the
litigation, not compensation for the winner. 572 U.S. at 554 n.6. The same is true for Plaintiff’s
fourth element, deterrence: Octane does not state that the exceptional case analysis should
incorporate deterrence considerations.
In opposition, LG argues that Mondis does not deserve a fee award, given its own
litigation misconduct, citing Power Mosfet Techs., L.L.C. v. Siemens AG, 378 F.3d 1396, 1415

17

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 18 of 38 PageID: 56844

(Fed. Cir. 2004): “A party subjected to behavior warranting an award of sanctions or fees might
justifiably be denied those fees in a district court’s discretion for the behavior to which it
subjected others.” LG points to the chapter of this litigation involving Bratic’s supplemental
report.
In brief, this chapter begins with the Court’s Opinion and Order of April 22, 2020, which
granted LG’s motion for a new trial, and stated:
This Court grants LG’s motion for a new trial, subject to the following
limitations. At the new trial, the parties may not offer evidence that was not
presented at the previous trial, with one potential exception: should Mondis seek
to offer the expert testimony of Mr. Bratic, based solely on the evidence presented
at the previous trial, Mondis may submit an updated expert report,
which this Court will consider in a Daubert hearing. All expert testimony must
reflect the Federal Circuit law on apportionment, as discussed in the Court’s
Opinion in which it vacated the jury damages verdict.
(Opinion and Order of April 22, 2020 at 9.) In June of 2020, Mondis submitted to LG two new
expert reports, one from Bratic and one from Lamm. (See Docket Entry No. 635 at 1.) A
chapter of the litigation ensued in which LG moved to strike both expert reports. Several rounds
of motions followed in which the Court struck the new Lamm report and parts of the new Bratic
report. This chapter ended in September of 2021, when the Court granted LG’s motion to
exclude what remained of the new Bratic report under Rule 702.
The details of what happened during this chapter are described at length in the Court’s
Opinions and Orders dated July 15, 2020, August 15, 2020, August 18, 2020, October 2, 2020,
November 6, 2020, and September 8, 2021. The long story short is that Mondis was responsible
for the waste of a considerable amount of time. See Mondis Tech. Ltd. v. LG Elecs., Inc., 2020
U.S. Dist. LEXIS 208019, at *4-5 (D.N.J. Nov. 6, 2020) (“This Court has now before it the
fourth round of briefing which has resulted from Plaintiffs’ flagrant disregard of the Opinion &
18

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 19 of 38 PageID: 56845

Order of April 22, 2020. This Court is now presented with two motions for reconsideration after
having been required to minutely parse the Bratic Supplement for compliance with the Court's
Orders. The Court is tired of this nonsense . . .”)
At the end of this chapter, in the Daubert Opinion, this Court stated: “This Court agrees
with LG that ‘Mr. Bratic has squandered his second opportunity to present a legally permissible
damages theory.’” (Opinion and Order of September 8, 2021 at 29.) The Court’s concern now,
however, is not with Mr. Bratic, but with the amount of wasted time and effort that were required
to get to that conclusion. Mondis had persistent difficulty complying with the simple restriction
that the Court imposed in the Opinion and Order of April 22, 2020, when it granted LG’s motion
for a new trial: no new evidence. Time was also wasted by Mondis as Plaintiff offered and
defended reasonable royalty theories that, the Court concluded, were new versions of the
threshold theory that the Court had held to be in violation of the Federal Circuit law of
apportionment. Mondis Tech. Ltd v. LG Elecs., Inc., 407 F. Supp. 3d 482, 501 (D.N.J. 2019).
This Court finds that Mondis has not persuaded that it is entitled to an “exceptional case”
declaration and an award of attorney fees, pursuant to § 285. This is so without consideration of
the chapter of the litigation involving the revised expert reports. As already discussed, this Court
does not consider either party to this case to have had, overall, an exceptionally strong or weak
litigation position, nor to have litigated this case in an exceptionally unreasonable manner,
overall. LG does have a point, however, when it cites Mosfet and urges the Court to consider
Mondis’ own conduct in the litigation: as to the issue of litigation misconduct, what comes
closest to standing out to the Court as “exceptional” in this case was the chapter in which Mondis
struggled to comply with the Opinion and Order of April 22, 2020 – not misconduct by LG.

19

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 20 of 38 PageID: 56846

Pursuant to Octane, Plaintiff’s motion for a declaration that this case is exceptional will
be denied.
II.

Mondis’ motion for prejudgment and postjudgment interest
Pursuant to § 284, Mondis seeks roughly $8 million in prejudgment interest on the

damages award. LG, in opposition, argues that an award of prejudgment interest should be
withheld in its entirety because Mondis was not diligent in prosecuting this case.
Section 284 states:
Upon finding for the claimant the court shall award the claimant 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.
35 U.S.C. § 284. The Supreme Court has held: “Prejudgment interest should be awarded under §
284 absent some justification for withholding such an award.” GM Corp. v. Devex Corp., 461
U.S. 648, 657 (1983).
The parties agree that an award of prejudgment interest is a matter entrusted to the
Court’s discretion. Plaintiff’s moving brief, on the whole, cites Federal Circuit law in arguing
for prejudgment interest. LG, in opposition, argues that the Federal Circuit applies regional
circuit law to this issue. See Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1362-63 (Fed.
Cir. 2004) (“We answer this question on an issue by issue basis and will apply the law of the
regional circuit to which district court appeals normally lie, unless the issue pertains to or is
unique to patent law.”) LG contends that the Third Circuit applies the four-factor test stated in
Feather v. United Mine Workers, 711 F.2d 530, 540 (3d Cir. 1983.) Mondis, in reply, does not
disagree, but contends that it is entitled to prejudgment interest under the Feather standard, too.
The issue of which circuit’s law to apply has no material impact on this Court’s
20

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 21 of 38 PageID: 56847

discretionary decision to award prejudgment interest. Mondis and LG do not disagree on the
principle that, in the appropriate case, a court has the discretion to reduce or withhold an award
of prejudgment interest based on a finding of pre-suit delay;10 the question now is whether this
Court should do so. LG argues for a reduction in prejudgment interest on two independent
bases: 1) delay in filing this case; and 2) delays during litigation. The Court declines to reduce
the award of prejudgment interest on the basis of delays during the litigation, once commenced;
both parties contributed to the pace of events during the litigation and the Court sees no equitable
basis for reducing the award of prejudgment interest to Mondis on this ground.
As to the delay in filing the case, as a factual matter, it is undisputed that Mondis accused
LG of infringing the ’180 patent with its televisions in 2009, but did not file suit until 2014, after
the patent had expired. Mondis delayed filing this suit for five years. The only significant

10

In Kaufman v. Microsoft Corp., 34 F.4th 1360, 1374-75 (Fed. Cir. 2022), the Federal Circuit
stated:
The Court added, however, that because interest is “fixed by the court,” a district
court has some discretion to decide whether to award prejudgment interest, and “it
may be appropriate to limit prejudgment interest, or perhaps even to deny it
altogether, where the patent owner has been responsible for undue delay in
prosecuting the lawsuit,” among other potential, unnamed circumstances. . . [T]o
show that delay was undue, a defendant must, at least generally, show that it was
prejudiced.
In Feather v. United Mine Workers, 711 F.2d 530, 540 (3d Cir. 1983), the Third Circuit stated:
[A] district court is to consider four factors in determining whether an award of
prejudgment interest is appropriate:
(1) whether the claimant has been less than diligent in prosecuting the action;
(2) whether the defendant has been unjustly enriched;
(3) whether an award would be compensatory; and
(4) whether countervailing equitable considerations militate against a surcharge.
21

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 22 of 38 PageID: 56848

dispute is about whether this delay justifies reducing or withholding the award of prejudgment
interest.
The Court concludes that the circumstances of this case justify reducing the award of
prejudgment interest because of the 5-year delay in filing. It is clear that Mondis could have
filed the case in 2009; Mondis initiated litigation for infringement by televisions of the ’180
patent in the Texas Case against other manufacturers in 2009. This Court is persuaded that
Mondis chose not to file suit against LG in 2009 as a calculated, strategic decision; the
circumstances support the inference that Mondis waited until the Texas Case had been fully
resolved, as it was by settlement in 2013, before filing suit.11 These circumstances also support
the inference that Mondis waited until it had sufficient certainty about the likely outcome of
television infringement litigation against LG, before filing suit. In June of 2014, Mondis filed
this case. In hindsight, given the outcome of the USPTO reexamination of the asserted DDC2B
patents, to the extent that Mondis delayed filing out of uncertainty about the case against LG,
there was reason for uncertainty.
The Court finds that, considering the circumstances of this case, it would not be equitable
to award Mondis prejudgment interest for the period in which it chose to delay filing. Mondis
delayed filing for strategic reasons, and it would not be fair to make LG pay prejudgment interest

11

It is not clear exactly when in 2013 the Innolux settlement was executed. LG, in its brief in
opposition to the motion for prejudgment interest, states that the settlement occurred in
December of 2013. (Def.’s Opp. Br. re: Interest at 10.) Bratic’s expert report, dated February 5,
2018, states a date of March 5, 2013 for the Mondis/Innolux settlement agreement. (Docket
Entry No. 639 Ex. 2 at ⁋ 113.) In the First Trial, Spiro testified that negotiations restarted in
December 2013 after the Innolux settlement, but did not state the date the Innolux settlement was
executed. (First Trial Tr. 997:4-6.)
22

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 23 of 38 PageID: 56849

for a period in which Mondis delayed filing for its own strategic benefit. Mondis was absolutely
entitled to delay the filing of the case, but LG should not be made to compensate Plaintiff for a
strategic decision made for Plaintiff’s own benefit. As in Crystal Semiconductor Corp. v.
Tritech Microelectronics Int'l, Inc., 246 F.3d 1336, 1362 (Fed. Cir. 2001), the delay was a
litigation tactic that prejudiced LG. Mondis is awarded prejudgment interest running from the
day it filed this case.
The parties also contest the interest rate and the frequency of compounding. Mondis asks
for use of the prime rate, compounded quarterly. LG asks for use of the Treasury Bill rate, with
simple interest, no compounding. LG argues that Mondis has made no demonstration of actual
damages it suffered as a result of not having the royalty payment from LG in 2014, or earlier,
such as interest costs on loans. It is undisputed that Mondis has no employees and is a nonpracticing entity. In the absence of a demonstration that Mondis actually suffered increased
damages related to the disparity between Treasury Bill rates and commercial interest rates, such
as having actually paid to borrow money at commercial interest rates, the Court declines to
award prejudgment interest at the prime rate. Laitram Corp. v. NEC Corp., 115 F.3d 947, 955
(Fed. Cir. 1997) (affirming district court’s award of prejudgment interest at Treasury Bill rate
based on absence of evidence of actual costs at a higher rate.) The award of prejudgment interest
is at the Treasury Bill rate, the same rate referenced in the postjudgment interest statute, 28
U.S.C. § 1961(a). Similarly, in the absence of any demonstration that Mondis is entitled to
quarterly compounding of interest, rather than simple interest, prejudgment interest will be
calculated as simple interest.
The parties agree that the award of postjudgment interest is set by statute, 28 U.S.C. §

23

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 24 of 38 PageID: 56850

1961(a). Postjudgment interest is awarded in conformity with the statutory requirement.
III.

LG’s motion for judgment as a matter of law, a new trial, and remittitur
LG moves for judgment as a matter of law, a new trial, and/or remittitur. LG’s moving

brief spends no time on supporting the motion for a new trial. Under Third Circuit law:
While a court may grant a new trial under Rule 59 ‘for any reason for which a
new trial has heretofore been granted in an action at law in federal court,’ Fed. R.
Civ. P. 59(a)(1)(A), it should do so only when ‘the great weight of the evidence
cuts against the verdict and . . . [ ] a miscarriage of justice would result if the
verdict were to stand.’
Leonard v. Stemtech Int'l, Inc., 834 F.3d 376, 386 (3d Cir. 2016). LG offers no arguments of
any substance that the great weight of the evidence cuts against the verdict or that a miscarriage
of justice would result if the verdict were to stand. There is no basis to grant the motion for a
new trial.
As to the motion for judgment as a matter of law, LG argues that the damages award
should be set aside on two grounds: A) it relies on an unapportioned television ASP that was not
in evidence; and B) it relies on an application of a legally unsupported tripling multiplier.
The Third Circuit has stated:
We will vacate a jury verdict if, “viewing the evidence in the light most favorable
to the nonmovant and giving it the advantage of every fair and reasonable
inference, there is insufficient evidence from which a jury reasonably” could have
reached the result it did. Lightning Lube v. Witco Corp., 4 F.3d 1153, 1166 (3d
Cir. 1993).
Hill v. Reederei F. Laeisz G.M.B.H., 435 F.3d 404, 422 (3d Cir. 2006). Neither of LG’s
arguments succeed in persuading that there is insufficient evidence from which a jury could have
reasonably awarded $14.3 million in damages. The problem for LG, in short, is that the jury
verdict is a “black box” general verdict: all we know is the result, the amount of damages

24

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 25 of 38 PageID: 56851

awarded. LG’s two challenges on this motion rest on speculations about the jury’s reasoning,
but LG does not even attempt to demonstrate that, under Third Circuit law, a mere speculative
hypothesis about the jury lacking sufficient evidence is sufficient to support the determination
that there is insufficient evidence from which the jury reasonably could have reached the result it
did. Nor has LG even attempted to persuade that the universe of possible paths to the jury’s
verdict is so limited that its hypotheses are likely possibilities. Instead, LG’s ASP hypothesis,
for example, appears to be one of myriad paths that the jury might have taken to reach the $14.3
million damages verdict.
A. The television ASP hypothesis
1. LG: the television ASP was not in evidence
LG begins its JMOL argument with a reminiscence about one of Bratic’s excluded
theories. (Def.’s Br. at 4.) LG then cites a closing argument Mondis made to the jury, admitting
that the calculation argued by Mondis is crucially different from Bratic’s excluded theory.
Bratic’s excluded theory is a red herring and has nothing to do with the jury’s verdict or LG’s
argument.
LG then presents a formula derived from Plaintiff’s closing argument to the jury, and
states:
While the re-trial jury appears to have rounded the award by reducing it by
$500,000 (to $14.3 million), it is clear that the jury adopted Plaintiffs’ barelymodified theory by using an improper television ASP, and applying a legallyunsupported tripling uplift multiplier. Because these two bases lack sufficient
support in the evidentiary record and the law, the Court should grant JMOL, a
new trial, and/or remittitur.
(Def.’s Br. at 5-6.) This is the foundation of LG’s JMOL argument, and it begins with a glancing
acknowledgement that, in fact, the actual amount the jury awarded is not the amount they would
25

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 26 of 38 PageID: 56852

have awarded if LG’s theory about adopting the Mondis closing argument is correct. Implicit
here is an acknowledgement that, had the jury applied the calculation method urged by Mondis
in closing, it would have arrived at a different damages award. LG tries to minimize the half-amillion-dollar difference as rounding. The Court inquires: what did the jury round and why?12
Does this shed any light on the question of how the jury reached its verdict?
LG’s opening brief proceeds to rely on the proposition that the jury’s damages
calculation relied on a television ASP of $518 – despite its acknowledgement that the jury’s
verdict is inconsistent with the calculation Mondis argued for in closing. It is not until the reply
brief that LG says a little more about these numbers:
But [Plaintiff’s] closing, as quoted in LG’s brief, presented a methodology using
the $518 ASP that would result in $14.8 million. The $14.3 million award
is either a downward adjustment, or the result of rounding the $518 ASP to an
even $500 to output $14,287,484 (essentially $14.3 million). This is no
coincidence.
(Def.’s Reply Br. at 2.) The Court agrees with LG that this is no coincidence – but because
nothing coincides here: at closing, Mondis argued a calculation leading to one number ($14.8
million), and the jury chose something different ($14.3 million.) LG attempts to minimize the
difference as a “downward adjustment” or the result of rounding. The Court observes that
“downward adjustment” is a fudge factor13 here, something that looks like an explanation but is
not one. As for the rounding of $518 to $500, it is pure speculation. LG has offered no evidence
to support the inference that the jury took the figure of $518 from Plaintiff’s closing argument

12

On what basis should the Court conclude that the figure of $14.3 million was the result of
rounding? Wouldn’t the rounded version of that figure be an even $14 million?
13
“A term or factor inserted into a calculation to compensate for anticipated errors, or to
arbitrarily make the result conform to some desired conclusion.” The American Heritage®
Dictionary of the English Language, 5th Edition.
26

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 27 of 38 PageID: 56853

and rounded it to $500, nor even any logical rationale to explain why it might do so. This is
simply playing with numbers to support speculation about the jury’s decision. LG has no
foundation for its theories about the $14.3 million damages verdict. There is no reason to infer
that the jury followed the model proposed by Mondis at closing, nor any other.
From this erroneous premise, LG argues that the ASP of $518 was not in evidence, and
the parties have a robust debate about whether it was or it wasn’t. The Court does not find that
this dispute has any relevance to the question of whether the jury’s damages verdict is supported
by legally sufficient evidence, since the number produced by LG’s ASP $518 theory does not
coincide with the jury’s damages verdict.
The parties appear to agree that, if you take the Mondis closing argument theory, and you
substitute $500 as the television ASP, the end result is $14.3 million, same as the jury verdict.
While this appears to be an accurate observation, what is the significance of this observation for
the motion presently before this Court? As Mondis points out – and LG agrees –, Mr. Hansen,
LG’s reasonable royalty expert, testified that the range of prices for LG’s infringing TVs was
$217-$768,14 and Alessi testified that the range was $300-$700. Mondis argues that both of
those ranges have a midpoint of $500, which is true for the range of $300-$700; the midpoint of
$217-$768 is actually $492.50, not $500. If, in fact, the jury used a $500 ASP, Alessi’s
testimony provides exact evidentiary support for the figure, and the midpoint of Hansen’s price
range is close to $500.
In reply, LG argues that Mondis cannot rely on either Hansen’s or Alessi’s price range
testimony because neither provided any information about the volume distribution of sales prices

14

LG even referred to this range of television prices in its closing argument. (T2 Tr. 263:16-18.)
27

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 28 of 38 PageID: 56854

that would enable someone to calculate an average sales price. LG argues that, if the jury did
rely on those ranges to estimate an ASP, it was mere speculation. In support, LG quotes the
Federal Circuit’s decision Finjan, Inc. v. Blue Coat Sys., 879 F.3d 1299, 1312 (Fed. Cir. 2018),
in which the jury relied on a witness’s statement of a specific figure that “appears to have been
plucked from thin air” with no evidence to support it. In the instant case, however, two
witnesses testified about a television sales price range with a midpoint around $500, and, at
closing, LG reminded the jury about Hansen’s testimony about the television price range. In
Finjan, the Federal Circuit stated: “While any reasonable royalty analysis necessarily involves an
element of approximation and uncertainty, a trier of fact must have some factual basis for a
determination of a reasonable royalty.” Id. Under Finjan, the television price range testimony
need only have given the jury “some factual basis.” The Court finds that there was sufficient
evidence to support a factual determination by the jury of an average television sales price of
$500.
It is at this point that it becomes apparent that LG’s challenge to the legal sufficiency of
the evidence to support the verdict has backfired, and has led to the recognition of a possible
path, supported by sufficient evidence, which the jury could have followed in order to arrive at
the damages verdict of $14.3 million. This is the opposite result that LG intended and, as to the
ASP theory, provides a sound basis to deny LG’s renewed motion for judgment as a matter of
law. The Federal Circuit has stated:
We review decisions on motions for JMOL under the law of the regional circuit. .
. In the Third Circuit, a ‘court may grant a judgment as a matter of law contrary to
the verdict only if the record is critically deficient of the minimum quantum of
evidence to sustain the verdict. The court should grant JMOL ‘sparingly’ and
‘only if, viewing the evidence in the light most favorable to the nonmovant and
giving it the advantage of every fair and reasonable inference, there is insufficient
28

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 29 of 38 PageID: 56855

evidence from which a jury reasonably could find liability.’
SRI Int'l, Inc. v. Cisco Sys., 918 F.3d 1368, 1380 (Fed. Cir. 2019) (citations omitted). This
Court finds that the record is not critically deficient of the minimum quantum of evidence to
sustain the verdict, and, as to LG’s theory that there was insufficient evidence of record of the
television ASP, LG’s motion for judgment as a matter of law must be denied.
2. LG: the TV ASP was not apportioned
LG next argues that the verdict must be set aside because it is based on the entire market
value of televisions, rather than a value which has been apportioned for the value of noninfringing features, as required by Federal Circuit law. This challenge fails from the start,
because, as LG itself wrote in its opening brief, the formula on which Mondis based its closing
argument was derived from the testimony of LG’s expert, “Mr. Hansen’s formula for the
Monitor Agreement.”15 (Def.’s Br. at 5.) It is undisputed that the Mondis/LG monitor licensing
agreement applied a per-unit royalty rate to the average sales price (“ASP”) of the product, and
that Hansen’s formula further apportioned this by dividing by the number of patents covered by
the license.16 This is the approach to apportionment of LG’s expert, and it was LG’s expert that

It is surprising, to say the least, that LG now – at the end of everything – makes an argument
that implies that its own expert’s analysis of the data point he called the “most instructive,” the
Mondis/LG monitor agreement, failed to properly apportion the entire market value of the
product.
16
Both parties presented evidence and argument to the jury in which a reasonable royalty was
calculated by multiplying a product average sales price by a royalty rate. Spiro testified that the
Mondis/LG licensing agreement multiplied an average price per monitor of $126 by a royalty
rate. (T2 Tr. 116:8-13.) Hansen presented a reasonable royalty analysis based on the
Mondis/LG licensing agreement, and at the re-trial, he agreed that he “assumed that in the
negotiation the parties would use the monitor average price of 126 and not the TV average price
of 518.” (T2 Tr. 173:4-8.) Mondis argued to the jury that Spiro and Mondis would not have
agreed to a royalty based on the monitor average price, that it was too low, and that the average
sales price of televisions should be used instead. Even Hansen’s “excess price analysis,” which
15

29

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 30 of 38 PageID: 56856

characterized this data point as the “most instructive.” (Re-trial Tr. 219:10-14.)
Leading up to the re-trial, and at the re-trial itself, the parties litigated many questions
about how Mondis could make use of Hansen’s testimony. In particular, at sidebars during the
re-trial, the parties debated the question of what Mondis would be allowed to argue to the jury
about the ASP value Hansen used, and this Court ruled that Mondis could argue that the ASP
used by Hansen was too low and that, in the hypothetical negotiation, Mondis would take the
position that that the ASP should be $518.
THE COURT: I am going to bar you from arguing that the 518 ASP rate should
be a base. You were allowed to examine Mr. Hansen and cross him on why he did
not use the ASP rate; but there's no evidence in the case that the ASP rate is, in
fact, a reasonable start for the hypothetical negotiation. So while you can impeach
and discredit Mr. Hansen, you can't turn around and, in fact, attempt to
affirmatively use his testimony as a basis for your calculation with a 518 ASP
rate, because he never, in fact, endorses a 518 ASP rate in any way, shape, or
form.
MR. BLACK: But, Your Honor, we don't need Mr. Hansen's endorsement if
there's record evidence which we have from Mr. Spiro, from a real-world witness
and a negotiator, that that's how the program rate was developed. We also have
the evidence that they used the ASP of the product, both in the program and
specifically in an agreement between Mondis and LG. It's a fair argument to say
that when they sat down at the table, that they would have used the price of the
actual product at issue. In fact, I don't think the evidence supports any other
conclusion. And that the jury should, therefore, be able to consider that they
would have negotiated over the ASP of the televisions, rather than the ASP of the
monitors.

LG cites as if Hansen opined that further apportionment was needed (he did not do so), was
based on a “product average selling price.” (T2 Tr. 216:25-217:1.) It is worth noting that
Hansen’s ultimate conclusion that $.10/unit was the reasonable royalty implies a belief that his
excess price analysis estimate of $.09/unit was too low. (T2 Tr. 218:23-219:2.) When Hansen
identified the two data points he found “most instructive,” he did not mention his excess price
analysis. (T2 Tr. 219:10-23.) The Court does not agree that Hansen testified that further
apportionment of the entire market value was needed, and, to the extent that LG reads his excess
price analysis as advocating the importance of doing so, a reasonable jury could have concluded
that Hansen believed that that analysis gave a royalty estimate that was too low.
30

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 31 of 38 PageID: 56857

THE COURT: Thank you, Mr. Black. I'm not going to let you do the math on 518
ASP.
MR. BLACK: Am I allowed to tell the jury that -- am I allowed to argue the point
that when they sat down at the negotiation, that the evidence in the case suggested
they would have started with the television price, rather than the monitor price?
That is supported in the record. In fact, it's largely undisputed.
THE COURT: Yes, you can.
(Re-trial Tr. 211:13-212:19.) The sidebar continued:
MR. BLACK: I won't do the math. Can I use this slide, which was 30, then? I'm
sorry. I think that's consistent with what I just said. I would say you may consider
these facts that LG says 126. We think the negotiation would have been 518. They
say .25. We think .75.
THE COURT: At this point, no. Okay. Let's see how the further examination of
Mr. Hansen goes, but at this point that's essentially doing what your other slide
does. It's doing the math for them.
MR. BLACK: Okay. Can I -- well, okay. I'm allowed to say that -- that the
negotiation, Mr. Spiro would have presented the 518 and the .75 percent, and they
would have had Mr. Lamm's evidence that the '180 is really important, you must
apportion -- you've got -- I can do that. I just can't use the slides.
THE COURT: That, you can do.
(Re-trial Tr. 213:18-214:8.) Another sidebar on the subject occurred shortly after:
THE COURT: Fine. And, Mr. Black, just to clarify. All right. You can argue to
the jury that Mr. Hansen's base figure, the 220 or whatever it is, is low. But what
you can't argue for is that your 500 and whatever it is ASP is the correct figure.
You can argue that the record reflects that Mr. Hansen was too low. You can
determine if he was too low, what would be the appropriate base.
MR. BLACK: I'm trying real hard here, Your Honor. This is not easy. So what I
would like -- intend to do, then, is say that the parties walk into the negotiating
room, we know what Mr. Spiro's position is, 518 at .75. He's got to give on the
issue because he doesn't have as many patents anymore. That's his position. LG's
position is whatever it is Mr. Hansen says. We think that Mr. Hansen did not give
full credit to the evidence in the case because his 220 was too low, his multiplier
was too low, whatever, that's okay.

31

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 32 of 38 PageID: 56858

THE COURT: That you can do. And you can do -- and based upon the evidence,
you can determine whether or not your position is correct, which is it should be
higher.
(Re-trial Tr. 227:2-21.)
In its closing argument, Mondis stated:
So I'm going to close the case the way I opened it. I'm going to tell you it's an
undisputed fact that there are 19,049,978 infringing televisions. You'll have to
construct the hypothetical negotiation. I'm not going to give you a number, I'm not
going to give you an answer.
...
But you're entitled to consider what would have happened in that negotiation. Mr.
Spiro would have walked in and he would have said, look at the Mondis/LG
monitor agreement we had. That's the base. We have to start there. My program
rates, as you know, were . 75 percent for the 2B family. We use the ASP 518, and
I got to make an adjustment. That's his position.
He might not win. You'll decide. You'll tell us. You're entitled to consider that the
2B family has to be reduced to the '180 patent. And that Mr. Hansen divided by
five or six. And that Mr. Lamm said that the '180 patent is the most important of
all.
(Re-trial Tr. 300:15-301:10.)
In short, LG offered its expert, Hansen, who testified that, in the hypothetical negotiation,
the parties would agree to a royalty based on multiplying the monitor ASP by a royalty rate and
adjusting for the number of patents covered. Mondis presented evidence about the position that
Mondis and Spiro would take at the beginning of the hypothetical negotiation, that the ASP
should be the television ASP, not the monitor ASP. Having presented this case, LG cannot now
complain that further apportionment of the ASP was needed; LG cannot have it both ways.17
The Court rejects LG’s argument that the jury’s verdict is based on reasoning that failed to

17

To some extent, LG appears to belatedly argue that it is fine to use the product ASP without
further apportionment for unclaimed features when it is a lower number, but not fine when it is a
higher number.
32

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 33 of 38 PageID: 56859

properly apportion the entire market value of the televisions.
LG’s brief also argues that Mondis flouted the Court’s rulings in arguing to the jury that
they should substitute the TV ASP for the monitor ASP in Hansen’s formula. As just discussed,
the Court has reviewed both the rulings and Plaintiff’s closing argument and disagrees with LG
on this point. The record shows that the Court and the parties were very careful at the re-trial
about how the jury would encounter evidence and argument about the television average sales
price. This Court was careful to prohibit Mondis from making any suggestion to the jury that
Hansen had endorsed the use of any television average sales price. Mondis complied and argued
only that Spiro would have started the hypothetical negotiation with the $518 average sales price
as a starting position. Spiro testified that, during license negotiations, he used the product
average sales price as the base. (Re-trial Tr. 106:3-24.) Plaintiff’s closing argument about how
Spiro would have approached the hypothetical negotiation is supported by the evidence and did
not violate the prohibition against suggesting that Hansen endorsed use of the television sales
price.
LG also argues that Mondis’ closing argument urged the jury to make a royalty
calculation without the guidance of an expert. The jury’s damages verdict is limited by the
evidence, not by the opinions of the experts. Finjan, Inc. v. Blue Coat Sys., 879 F.3d 1299, 1313
n.2 (Fed. Cir. 2018); Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1328 (Fed. Cir. 2014) (“if the
record evidence does not fully support either party’s royalty estimate, the fact finder must still
determine what constitutes a reasonable royalty from the record evidence”); i4i Ltd. P’ship v.
Microsoft Corp., 598 F.3d 831, 856 (Fed. Cir. 2010) (“Questions about what facts are most
relevant or reliable to calculating a reasonable royalty are for the jury. The jury was entitled to

33

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 34 of 38 PageID: 56860

hear the expert testimony and decide for itself what to accept or reject.”)
B. The uplift multiplier
LG argues that the trial record lacks sufficient evidence to support use of the uplift
multiplier (or uncertainty discount) by the jury. Again, given the “black box” nature of the jury
verdict, we have no idea how the jury arrived at the damages verdict and whether the jury used
any uplift multiplier; LG simply assumes that the jury must have. Mondis responds,
persuasively, that LG has raised this argument in this case repeatedly, and this Court has rejected
it repeatedly; the Court did so broadly in the Opinion on LG’s first JMOL (Docket Entry No. 558
at 22-29),18 and denied LG’s first re-trial in limine motion, which sought to exclude Hansen’s
testimony about the uplift in the Varian case (ruling in the Opinion of January 10, 2023, that the
subject could be raised for the purpose of impeachment of Hansen.) At the re-trial, both Spiro
and Hansen testified at some length about the principles and application of the uncertainty
discount; LG acknowledges Spiro’s testimony, but argues that there is no evidence that anyone
ever actually accepted an uplifted rate. Hansen testified that he recognized the principle
underlying the uncertainty discount19 and that he considered the impact of the condition of
certainty or uncertainty as he considered the data in his analysis (see Re-trial Tr. 163-66.) Asked
whether he had made an adjustment to reflect the fact that the hypothetical negotiation would
occur under conditions of certainty that the patent is valid and infringed, Hansen replied: “I dealt

In deciding the LG’s motion for JMOL after the first trial, the Court’s analysis of the evidence
for the uncertainty discount included testimony from Bratic, who did not appear at the re-trial.
The Court discussed both Bratic’s testimony about the Innolux verdict and settlement, as well as
Spiro’s. Bratic did not testify at re-trial, but Spiro and Hansen did testify again about the Innolux
verdict and settlement.
19
“I'm familiar with the concept that a patent that is determined to be valid and infringed is more
valuable.” (T2 Tr. 176:10-11.)
18

34

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 35 of 38 PageID: 56861

with that on the broad scope of my analysis on an overall basis.” (Re-trial Tr. 166:21-22.) A
reasonable jury hearing Hansen’s testimony could well have understood the expert to agree with
the valuation principle on which the uncertainty discount is based, to have considered conditions
of certainty or uncertainty when evaluating the comparable license data, to have agreed that he
“dealt with that on the broad scope” of his analysis, and to have declined to explain in any detail
just how he did so. (See, generally, Re-trial Tr. 163-67, 174-77.) LG even mentioned Plaintiff’s
position on the uplift in its closing argument. (Re-trial Tr. 270:16-18.)
Furthermore, the Mondis/LG license and the TPV license were in evidence and
demonstrated the use of pre-litigation discounted rates; both Hansen and Spiro testified that the
later-occurring Innolux settlement was at the full rate awarded by the jury. In its closing
argument, LG even reminded the jury that the Innolux jury verdict was at .75%.20 (Re-trial Tr.
269:11-22.) While there is no way to know whether or not the jury applied an upward
adjustment to account for the hypothetical negotiation’s condition of certainty, there was
sufficient evidence in the record to support its doing so.
LG also argues that Mondis improperly used the Hansen/Varian evidence substantively,
contrary to the Court’s limitation to impeachment purposes only, in the closing argument:
Now, another thing about the uplift, the uncertainty discount removal issue. Mr.
20

LG also argues that the jury verdict was tainted by the admission of the evidence of the
Innolux verdict and settlement, and by Plaintiff’s “misuse” of this evidence. (Def.’s Br. at 31.)
As Mondis points out in opposition, the admissibility of the Innolux evidence has been litigated
repeatedly in this case, most recently in the in limine Opinion of January 10, 2023, when this
Court ruled that, at re-trial, the Innolux evidence would be admitted or excluded to the same
extent as in the first trial. Mondis Tech. Ltd. v. LG Elecs., Inc., 2023 U.S. Dist. LEXIS 4160, at
*12 (D.N.J. Jan. 10, 2023). See also Mondis Tech. Ltd. v. LG Elecs., Inc., 2021 U.S. Dist.
LEXIS 169919, at *19 (D.N.J. Sep. 8, 2021) (“The decision that the Innolux verdict is
admissible as relevant to the reasonable royalty analysis is nothing new in this case.”) This is the
law of the case, and the Court declines to relitigate the settled issue.
35

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 36 of 38 PageID: 56862

Hansen testified, I asked him: Isn't it true that you applied a three times
uncertainty adjustment to the Stanford license in the Varian case? Yes or no.
Well, the man just didn't want to answer that yes or no. The answer was yes. So
he said I applied a particular clause that was three times as indicative of the
upward influence for a patent that has been determined to be valid and infringed.
And then I said: In the previous proceeding in this case, you said an upward
evaluation of something that's appropriate and it's upward -- up to the jury to
decide how much that should be in this case, based on the facts that you've heard.
Correct? You said yes, it's the jury's decision. Correct? I did. The jury decides the
damages. So in the end he applied a three X rate in another case. It's appropriate
for you to consider that, as well as his credibility when he said he did every single
one of his analyses that came to $0.10 without doing any adjustment for
uncertainty. And what that means is that Mr. Spiro's efforts to warn LG and to tell
them what the terms of negotiation would be back in '08 would have been for
naught if you accept Mr. Hansen.
(Re-trial Tr. 295:10-296:6.) As the record shows, Mondis directed this closing argument to the
issue of Hansen’s credibility. A reasonable jury could hear about Hansen’s clear Varian
testimony on the subject of the uncertainty adjustment and compare it to his testimony in this
case, in order to make an inference about his credibility on the subject of the uncertainty
adjustment in this case. A reasonable jury could have decided that Hansen’s testimony about the
role of the uncertainty adjustment in his analysis in this case was vague and of uncertain
credibility, or deserving of less weight. The evidence of record contains legally sufficient
evidence for the jury to decide that the condition of certainty in the hypothetical negotiation
warranted a tripling uplift to the royalty rate, even though Hansen did not agree that this was
warranted in this case. LG did not object to Plaintiff’s closing argument at trial.
Although the JMOL standard to be applied in this case is a matter of Third Circuit law,
the Federal Circuit has stated:
[W]e will not set aside a general verdict simply because the jury might have
decided on a ground that was supported by insufficient evidence. We will uphold
such a verdict if there was sufficient evidence to support any of the plaintiff's
alternative factual theories; we assume the jury considered all the evidence and
36

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 37 of 38 PageID: 56863

relied upon a factual theory for which the burden of proof was satisfied.
i4i Ltd., 598 F.3d at 849-50 (citation omitted). In the end, LG’s JMOL arguments ask this Court
to do what the Federal Circuit has declared it will not do: “set aside a general verdict simply
because the jury might have decided on a ground that was supported by insufficient evidence.”
LG has failed to persuade the Court that the re-trial damages verdict is not supported by
legally sufficient evidence. Instead, consideration of LG’s motion spotlights the support for the
verdict in the evidence. LG’s approach demonstrates at least a recognition of a path the jury
could have taken to arrive at its determination of a reasonable royalty, using the calculation
Mondis argued in closing, but with a $500 ASP. LG challenged two elements of this possible
calculation, and the Court has found that the two challenged elements of that calculation are
supported by legally sufficient evidence. Pursuant to i4i Ltd., the Court assumes that “the jury
considered all the evidence and relied upon a factual theory for which the burden of proof was
satisfied.” Id.
In McGinley, the Federal Circuit discussed issues quite similar to the ones raised by LG’s
JMOL motion:
Due to the “black box” nature of the jury's verdict, it is impossible to determine
which of the above pieces of evidence, alone or in combination, carried the day in
the jury room, and how much weight was assigned to each piece. All that can be
said with certainty is that -- as a whole -- the evidence enumerated above (all of
which was admittedly before the jury) constitutes substantial evidence to support
the jury's verdict. . . . But when a dispositive element of the factual equation, here
whether to combine or modify key references, so clearly could have been decided
by the jury in McGinley’s favor, it is not our place to elide the vagaries of a black
box jury verdict by overriding the jury’s decision. Our law does not compel the
use of special verdicts in these cases, and so long as the parties are content to give
the jury unfettered room to operate on dispositive factual issues within the scope
of a general verdict request, we must be mindful of our role as an appellate court
and respect the verdict reached . . .

37

Case 2:15-cv-04431-SRC-CLW Document 786 Filed 06/01/23 Page 38 of 38 PageID: 56864

McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1356 (Fed. Cir. 2001). In the instant case, LG
has directed its argument to two “dispositive elements” – the television ASP and the uncertainty
adjustment. The Court has considered the evidence at trial and finds that, as to the two key
elements picked out by LG: 1) while the $518 television ASP does not appear to have been a
dispositive element, there was legally sufficient evidence for the jury to find a $500 television
ASP; and 2) as to the uncertainty adjustment, there was legally sufficient evidence for the jury to
make findings in Plaintiff’s favor. These findings support the jury’s damages award. The jury’s
verdict is supported by legally sufficient evidence and must be respected.
LG argues, in the alternative, that the Court should remit the damages award to Hansen’s
$1.9 million. The evidence at trial supports the jury’s award as it stands.
In conclusion, LG’s motion for judgment as a matter of law under Rule 50(b), a new trial
under Rule 59, and/or remittitur regarding damages is denied; Plaintiff’s motion for enhanced
damages and attorneys’ fees, pursuant to 35 U.S.C. §§ 284 and 285, is denied; and Plaintiff’s
motion for prejudgment and postjudgment interest is granted in part and denied in part.

s/ Stanley R. Chesler
Stanley R. Chesler, U.S.D.J.
Dated: June 1, 2023

38