U n i t e d S t a t e s D i s t r i c t C o u r t
F o r t h e N o r t h e r n D i s t r i c t o f C a l i f o r n i a
123456789101112131415161718192021222324252627283reached as the result of a supposed meeting between the patentee and the infringer at the timeinfringement began.”
Rite-Hite Corp. v. Kelley Co., Inc.
, 56 F.3d 1538, 1554 (Fed. Cir. 1995)(citations omitted);
see also Polar Bear Productions, Inc. v. Timex Corp.
, 384 F.3d 700, 709 (9thCir. 2004) (applying the hypothetical lost license fee calculation in the context of copyrightinfringement).In support of its argument that damages cannot be based on a hypothetical license, Googlecites an unpublished opinion from this district,
Oracle USA, Inc. v. SAP AG
, No. C07-1658 PJH,2011 WL 3862074 (ND Cal. Sept. 1, 2011) (Hamilton, J.). In
, the district court grantedaccused infringer’s motion as a matter of law to strike the jury’s award of actual damages basedon a hypothetical license calculation. 2011 WL 3862074 at *1. Judge Hamilton gave two reasonsfor her holding:
, the copyright owner did not establish that, but for infringement, it wouldhave licensed the asserted copyrighted works for the use at issue, and
, the copyright ownerdid not present evidence sufficient to value such a license. Judge Hamilton held that the awardeddamages were too speculative in that situation.
at 9–10. In a subsequent opinion, JudgeHamilton shed light on her prior holding by stating, “The court did not hold as a matter of law . . .that copyright damages based upon the amount of a willing buyer would reasonably have paid awilling seller under a hypothetical license are available only if the copyright owner providesevidence of actual licenses it entered into or would have entered into . . . .”
Oracle USA, Inc. v.SAP AG
, No. C07-1658 PJH, Dkt. No. 1088 at 2.The holding in
is distinguishable. Dr. Cockburn had a non-speculative factual basisto value a license for an incompatible version of Java. Dr. Cockburn did so by starting with thereal-world negotiations between Sun and Google for a compatible Java, and then adjusting thatamount up to compensate for the incompatibility. The amount of the upward adjustment wasbased on Sun’s own revenue projections for the value of compatibility. Dr. Cockburn’scalculation was based on real-world facts and not incurably speculative. Google fights thehypothetical by ignoring the legal requirement for a hypothetical negotiation that the licensingagreement must be
as the result of a hypothetical meeting between the parties.
See Rite-Hite Corp.
, 56 F.3d at 1554. Google’s objections are tentatively overruled.
Case3:10-cv-03561-WHA Document642 Filed12/06/11 Page3 of 13