A federal judge has upheld a jury judgment that the Hewlett-Packard Company improperly appropriated technology licensed by Cornell University to sequence and process information in early generations of HP computers.
Judge Randall R. Rader refused the company's request to set aside the 2008 patent infringement verdict by a Syracuse jury that HP servers and workstations, starting in the late 1980s, contained technology licensed by Cornell University and a faculty scientist, Hwa C. Torng.
The programming technology was used in HP's PA-8000 microprocessors, servers and workstations, according to Rader. The patent for the technology expired in February 2006. Cornell originally filed its patent infringement action in December 2001.
"Cornell offered evidence that Hewlett-Packard encouraged its customers to use the accused products in an infringing manner through advertisements and other materials, and that Hewlett-Packard knew its customers were using the accused products in an infringing manner," Rader wrote in Cornell University v. Hewlett-Packard Company, 01-cv-1974.
The jury was "well within its right to credit Cornell's witnesses and documentary evidence" that the technology was rightfully patented to Torng and the Cornell Research Foundation, Rader held.
"Cornell presented substantial evidence that the accused products satisfy each element of the assets claims, that HP encouraged its customers to purchase and use these products, and that their normal intended use results in use and performance of the claimed methods," Rader, a judge on the U.S. Court of Appeals for the Federal Circuit sitting by designation in the Northern District, ruled from Washington, D.C.
The technology in question was licensed to the Cornell Research Foundation and to Torng via a 1989 patent. Torng, a Cornell professor emeritus of electrical and computer engineering who retired in 1998, is due a 25 percent share of the value of the patent and of the award, according to the university.
In May 2008, a Northern District jury found that Hewlett-Packard infringed on the Cornell patent and awarded damages of $184 million. In March 2009, Rader reduced the award to $53 million after finding that the company had not made as much money from the computers as the university had claimed and that the jury had incorrectly calculated damages in 2008.
Also last month, Rader ruled that Cornell had properly delayed filing its litigation until licensing discussions with the company were exhausted.
Hewlett-Packard has filed a notice of appeal challenging Rader's ruling and, last Tuesday, Cornell filed a notice to appeal the determination cutting the damage award by more than two-thirds.
Cornell's motions to be granted attorney's fees and interest on the damage award are pending before Rader, according to Edward G. Poplawski, head of a team of attorneys at Sidley Austin Brown & Wood in Los Angeles that is representing Cornell and the Cornell Research Foundation.
"We're gratified that the trial court upheld the jury's decision that HP infringed on a valid Cornell patent, but Cornell respectfully disagrees with the court's reassessment of the damages computed by the jury," Poplawski said in an interview.
The technology in question allowed computers to simultaneously process commands for information rather than sequentially. Computers processing multiple commands are faster than those performing individual tasks in order.
Cornell received U.S. Patent No. 4,807,115, titled "Instruction Issuing Mechanism for Processors With Multiple Functional Units," on Feb. 21, 1989. Torng had invented the device in 1982.
According to Rader's ruling, expert testimony produced by Cornell showed that Torng's technology was "infringed literally and under the doctrine of equivalents" by Hewlett-Packard's supposedly original, competing products. In addition, Rader wrote that Cornell offered evidence that "Hewlett-Packard knew or should have known that its action would induce infringement."
"Further evidence presented by Cornell reveals that Hewlett-Packard knew or should have known that the accused combination was both patented and infringing, and that the accused products had no substantial non-infringing uses," Rader wrote.
Poplawski said his request to have the litigation assigned to a judge who normally sits outside the Northern District was granted by Chief Judge Norman A. Mordue in the interests of hastening the trial.
"We were told last year that it didn't look like we were going to trial until late in 2009, and I have a 76-year-old inventor," Poplawski said. "We spoke with the judge about getting a visiting trial judge."
Cornell counsel James J. Mingle was among the staff attorneys at the university to also represent Cornell.
Lawyers from DLA Piper; Rudnick, Gray Cary of San Diego; Harter, Secrest & Emery of Rochester; and the Fish, Richardson Law Firm of Austin, Texas, are representing Hewlett-Packard.
