Pact XPP Technologies, AG v. Xilinx, Inc., et al

Filing 447

MEMORANDUM ORDER. Signed by Magistrate Judge Roy S. Payne on 9/3/2013. (ch, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
PACT XPP TECHNOLOGIES, AG
v.
XILINX, INC., et al.

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Case No. 2:07-CV-563-RSP

MEMORANDUM ORDER
Before the Court is Plaintiff’s Motion for an Ongoing Royalty and Supplemental
Damages (Dkt. No. 404). PACT argues that it is entitled to an ongoing royalty for Xilinx’s and
Avnet’s ongoing infringement of the asserted patents in lieu of a permanent injunction. The
Federal Circuit has encouraged courts to allow the parties to negotiate a license amongst
themselves regarding the future use of a patented technology prior to the court imposing a
royalty.

See Paice LLC v. Toyota Motor Corp., 504 F.3d 1293, 1315 (Fed. Cir. 2007);

Telecordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1378-79 (Fed. Cir. 2010). Now that
the parties’ have the benefit of the Court’s ruling on the post-trial motions, the Court believes
that the parties should have an opportunity to mediate their ongoing royalty rate dispute.
Accordingly, to provide finality to the trial, the Court SEVERS PACT’s claim for an
ongoing royalty into a separate cause of action. See Fed. R. Civ. P. 21 (“The court may sever
any claim against a party.”). The parties are ORDERED to meet and confer to schedule
mediation with 45 days of this order to attempt to negotiate a license. Should the parties fail to
agree regarding Xilinx’s and Avnet’s future use of PACT’s patents at the mediation, PACT is
ORDERED to file the appropriate motion.

CONCLUSION
PACT’s Motion for an Ongoing Royalty and Supplemental Damages (Dkt. No. 404) is
DENIED without prejudice to re-urging after the mediation. The Clerk is directed to assign a
new cause number for the severed claim assigned to the undersigned.
SIGNED this 3rd day of January, 2012.
SIGNED this 3rd day of September, 2013.

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ROY S. PAYNE
UNITED STATES MAGISTRATE JUDGE

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