IP Law Daily, PATENT—D. Del.: Jury award of $5.7 million for remote access software patents vacated, (Oct 3, 2023)

By Brian Craig, J.D.

Lack of substantial evidence exists to support the jury verdict over patents relating to software to remotely access a macOS or iOS device.

In an infringement case brought by Aqua Connect, Inc. relating to software that allows a user to remotely access a macOS or iOS device, the federal district court in Delaware has vacated a jury award of $5.7 million based on the lack of substantial evidence. In granting defendant TeamViewer US, Inc.’s motion for judgment as a matter of law, the court found insufficient evidence of direct infringement and contributory infringement. Because it is unclear whether the $5.7 million awarded by the jury in damages is appropriate without direct infringement based on macOS and without pre-suit indirect infringement, the court granted judgment as a matter of law (Aqua Connect, Inc. v. Teamviewer US, Inc., September 29, 2023, Noreika, M.).

Aqua Connect, Inc. owns U.S. Patent No. RE46,386 (“the ’386 Patent”) and U.S. Patent No. 8,924,502 (“the ’502 Patent”), which generally relate to user sessions running on Mac-derived computer systems. The patents related to software that allows a user to remotely access a macOS or iOS device situated in a different location than the user. The patent owner sued TeamViewer US, Inc. for patent infringement alleging both direct infringement and indirect infringement. Following a five-day jury trial from August 8, 2022 to August 12, 2022, the jury found that TeamViewer directly and indirectly infringement both patents, and awarded $5.7 million in damages. TeamViewer moved for judgment as a matter of law, or in the alternative, a motion for a new trial.

Evidence and claim construction. The court first rejected TeamViewer’s evidentiary and claim construction arguments. The court found it is simply too late to raise a claim construction dispute in the middle of trial through cross-examination of a witness in front of a jury.

Direct infringement. Next, the court found the jury had insufficient evidence in support of direct infringement as to the macOS software. The jury heard substantial evidence from which it could reasonably infer that TeamViewer used the accused iOS software in the United States, thereby committing direct infringement. But the court found no evidence that TeamViewer used the accused macOS software in any act of direct infringement. There is simply no evidence in the record. The patent owner presented evidence of a video that only depicts an iPhone user being remotely assisted with TeamViewer software. The video has nothing to do with macOS software or macOS-running devices. Therefore, the court granted judgment as a matter of law on direct infringement based on the macOS software.

Indirect infringement. The court also found insufficient evidence to support the jury verdict based on pre-suit indirect infringement. The court found sufficient evidence of post-suit indirect infringement. But as to pre-suit induced and contributory infringement, as well as direct infringement based on the accused macOS software, the court found that there is not substantial evidence to support the verdict.

Patent invalidity. The court concluded that TeamViewer failed to meet its burden to prove patent invalidity based on anticipation or obviousness. The jury reasonably could have found that TeamViewer failed to meet its burden to prove invalidity due to anticipation or obviousness by clear and convincing evidence. The court also rejected TeamViewer’s arguments in support of a broadening reissue of the ’386 Patent.

Damages and new trial. Finally, the court concluded that because it cannot discern whether the jury award would remain the same if any of the jury’s various infringement findings change, the entire $5.7 million verdict should be vacated. It is wholly unclear whether the $5.7 million in damages is appropriate without direct infringement based on access to the macOS software and without pre-suit indirect infringement. Because TeamViewer failed to articulate any specific grounds, the court denied the motion for a new trial.

The Case is No. 1:18-cv-01572-MN.

Attorneys: Stamatios Stamoulis (Stamoulis & Weinblatt LLC) and Ryan E. Hatch (Hatch Law, PC) for Aqua Connect, Inc. and Strategic Technology Partners, LLC. Brian A. Biggs (DLA Piper LLP) for Teamviewer US, Inc. and Teamviewer Germany GmbH.

Companies: Aqua Connect, Inc.; Strategic Technology Partners, LLC; Teamviewer US, Inc.; Teamviewer Germany GmbH

Cases: Patent DelawareNews