February 2013
Russ August & Kabat Obtains $20 Million Judgment in Patent Case Affirmed by Federal Circuit
Russ, August & Kabat attorneys Marc A. Fenster, Jules L. Kabat, Alexander C.D. Giza, Adam S. Hoffman, and Benjamin T. Wang won a $20 million judgment after a jury trial that was affirmed by the United Sates Court of Appeals for the Federal Circuit, on February 8, 2013, in favor of their client, Clear With Computers, LLC against Hyundai Motor America, Inc.
Hyundai appealed an $11.5 million jury verdict finding that its website and related systems infringed U.S. Patent No. 7,606,739, and that the patent was neither invalid in light of the prior art nor for lack of written description. The patent generally relates to systems and methods for preparing customized sales proposals.
The jury verdict was the result of a week-long trial in the Eastern District of Texas before Chief Judge Leonard Davis. Clear With Computers was represented by Russ August & Kabat attorneys Fenster, Kabat, Giza, Hoffman, and Wang. Hyundai was represented by a team of 10 attorneys primarily from the international law firm of Winston & Strawn and led by Gene Schaerr, chair of the firm’s appellate practice.
On appeal, Hyundai challenged the jury’s verdict of numerous grounds. Hyundai argued that Clear With Computers failed to present any evidence that Hyundai’s website was of “particular interest to the customer” as required by the claims, and that Hyundai performed all of the steps of the claims. Hyundai also argued that prior art systems from the Ford Motor Co. and Buick, supported by evidence and testimony from the designers of those systems, invalidated the patent, and that the patent was invalid for lack of written description. Hyundai also challenged the damages verdict as based on evidence with no nexus to the patented technology. And Hyundai challenged the jury instructions on invalidity and the District Court’s rejection of its attempt to impugn the character of a Clear With Computer witness at trial.
Oral argument on the appeal took place on February 5, 2013, before Circuit Judges Moore, Clevenger, and O’Malley. Fenster argued for Clear With Computers, and Schaerr argued for Hyundai. Three days later the Court affirmed the jury verdict on all grounds in favor of Russ August & Kabat client Clear With Computers in a per curiam judgment. The Court also awarded Clear With Computers costs on appeal. All told, the Court’s decision results in a $20 million award consisting of the $11.5 million trial verdict awarded by the jury, royalties going forward for the life of the patent, interest, and costs.