Ongoing Royalty

A court may order an ongoing royalty in cases where an injunction is not warranted.

The award of an ongoing royalty instead of a permanent injunction to compensate for future infringement is appropriate in some cases. Paice, 504 F.3d at 1314; see also Shatterproof, 758 F.2d at 628 (upholding a court-ordered royalty based on sales as a remedy for continuing operations).

— Bard Peripheral Vascular v. WL Gore & Associates, 670 F. 3d 1171, 1192 (Fed. Cir. 2012).

The Seventh Amendment does not confer the right to a jury trial on an ongoing royalty.

As such, the fact that monetary relief is at issue in this case does not, standing alone, warrant a jury trial. Accordingly, Paice's argument falls far short of demonstrating that there was any Seventh Amendment violation in the proceedings below.

— Paice LLC v. Toyota Motor Corp., 504 F. 3d 1293, 1316 (Fed. Cir. 2007).

When an ongoing royalty is warranted the court will often give parties an opportunity to negotiate an ongoing license.

In most cases, where the district court determines that a permanent injunction is not warranted, the district court may wish to allow the parties to negotiate a license amongst themselves regarding future use of a patented invention before imposing an ongoing royalty. Should the parties fail to come to an agreement, the district court could step in to assess a reasonable royalty in light of the ongoing infringement.

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

A court is not bound by any reasonable royalty analysis or verdict in setting an ongoing royalty.

the district court, by trebling the amount the jury found to be a reasonable royalty, began with a faulty premise, because as we have noted, that damages award was based on pre-verdict infringement.

— Amado v. Microsoft Corp., 517 F.3d 1353, 1361-62 (Fed. Cir. 2008).

When a reasonable royalty damages include a running royalty for future sales, an ongoing royalty should reflect that amount.

The reasonable royalties awarded to Innogenetics include an upfront entry fee that contemplates or is based upon future sales by Abbott in a long term market. … Abbott acknowledges that such future sales would be subject to the running royalty, a compulsory license. We remand to the district court to delineate the terms of the compulsory license, such as conditioning the future sales of the infringing products on payment of the running royalty

— Innogenetics, N.V. v. Abbott Labs., 512 F.3d 1363, 1380-81 (Fed. Cir. 2008).