Kaufman v. Microsoft Corporation

Filing 212

ORDER DENYING MOTION TO AMEND JUDGMENT. Plaintiff's motion to amend the judgment, ECF No. 189, is denied. The Clerk is directed to terminate the motion. The judgment, ECF No. 192, will remain as it stands. SO ORDERED. (Signed by Judge Alvin K. Hellerstein on 1/25/21) (yv)

Case 1:16-cv-02880-AKH Document 212 Filed 01/25/21 Page 1 of 3

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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MICHAEL PHILIP KAUFMAN,
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Plaintiff,
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-against:
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MICROSOFT CORPORATION
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Defendant.
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ORDER DENYING MOTION
TO AMEND JUDGMENT
16 Civ. 2880 (AKH)

ALVIN K. HELLERSTEIN, U.S.D.J.:
Following trial, a jury returned a verdict that Plaintiff Michael Kaufman
(“Plaintiff” or “Kaufman”) was entitled to $7 million in damages based on Defendant Microsoft
Corporation’s (“Defendant” or “Microsoft”) infringement of his patent, U.S. Patent No.
7,885,981 (the “’981 Patent”). Judgement was entered for Plaintiff in the amount of $7 million.
Plaintiff now moves to amend the judgment to add prejudgment interest, accruing from the date
the ’981 Patent issued, February 8, 2011. Plaintiff’s motion is denied.
The Supreme Court has held that “prejudgment interest should ordinarily be
awarded” to a prevailing plaintiff in a patent infringement action because “[i]n the typical case
an award of prejudgment interest is necessary to ensure that the patent owner is placed in as good
a position as he would have been in had the infringer entered into a reasonable royalty
agreement.” General Motors Corp. v. Devex Corp., 461 U.S. 648, 655-56 (1983); see also
Sensonics, Inc. v. Aerosonic Corp., 81 F.3d 1566, 1574 (Fed. Cir. 1996). In cases awarding
damages based on lump sum royalties, it is typical for the Court, not the jury, to add prejudgment

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interest. Schwendimann v. Arkwright Advanced Coating, Inc., 959 F.3d 1065, 1076 (Fed. Cir.
2020).
Defendant argues this case is an exception. Here, the verdict form on damages
asked the jury, “How much has Mr. Kaufman proved he is entitled to recover?” Ct. Ex. 8. The
jury was instructed, consistently with the evidence, that the measure of damages was the lump
sum payment the parties would have agreed upon in a hypothetical negotiation in 2011,
discounted to present value. Trial Tr. 1166: 21-1167:1. The jury’s answer subsumed interest.
Furthermore, “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.” General Motors, 461 U.S. at 657. Plaintiff does not dispute that he was aware of
Defendant’s alleged infringement in 2011 and gave no notice to Defendant prior to filing this
lawsuit in 2016. His only explanation for the delay is that he is an individual inventor and
needed time to mount a lawsuit, but this vague explanation does not explain waiting five years
before attempting to enforce his rights. Furthermore, Defendant experienced prejudice. Not
only did potential interest continue to mount, but as Defendant’s witness explained at trial, if
Defendant had been aware of the alleged infringement, it might have turned to a cost-effective
workaround to disable the allegedly infringing part of Dynamic Data. Trial Tr. at 623:8-626:25;
see also Lummus Industries, Inc. v. D.M. & E. Corp., 862 F.2d 267, 275 (Fed. Cir. 1988) (noting
that prejudice is required where undue delay justifies withholding of prejudgment interest).
Courts have denied prejudgment interest in cases involving shorter delays. Crystal
Semiconductor Corp. v. TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1362 (Fed. Cir.
2001) (affirming denial of prejudgment interest where there was self-serving delay of two years
in filing suit while plaintiff claimed to have been investigating infringing products).

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Plaintiff’s motion to amend the judgment, ECF No. 189, is denied. The Clerk is
directed to terminate the motion. The judgment, ECF No. 192, will remain as it stands.
SO ORDERED.
Dated:

January 25, 2021
New York, New York

________/s/___________________
ALVIN K. HELLERSTEIN
United States District Judge

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