IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF TEXAS
MARSHALL DIVISION
PACT XPP TECHNOLOGIES, AG §
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v. § Case No. 2:07-CV-563-RSP
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XILINX, INC., et al. §
MEMORANDUM ORDER
Before the Court is Plaintiff’s Motion for an Ongoing Royalty and Supplemental Damages (Dkt. No. 404). PACT argues that it is entitled to an ongoing royalty for Xilinx’s and Avnet’s ongoing infringement of the asserted patents in lieu of a permanent injunction. The Federal Circuit has encouraged courts to allow the parties to negotiate a license amongst themselves regarding the future use of a patented technology prior to the court imposing a royalty. See Paice LLC v. Toyota Motor Corp., 504 F.3d 1293, 1315 (Fed. Cir. 2007); Telecordia Techs., Inc. v. Cisco Sys., Inc., 612 F.3d 1365, 1378-79 (Fed. Cir. 2010). Now that the parties’ have the benefit of the Court’s ruling on the post-trial motions, the Court believes that the parties should have an opportunity to mediate their ongoing royalty rate dispute.
Accordingly, to provide finality to the trial, the Court SEVERS PACT’s claim for an ongoing royalty into a separate cause of action. See Fed. R. Civ. P. 21 (“The court may sever any claim against a party.”). The parties are ORDERED to meet and confer to schedule mediation with 45 days of this order to attempt to negotiate a license. Should the parties fail to agree regarding Xilinx’s and Avnet’s future use of PACT’s patents at the mediation, PACT is ORDERED to file the appropriate motion.
2CONCLUSION
PACT’s Motion for an Ongoing Royalty and Supplemental Damages (Dkt. No. 404) is DENIED without prejudice to re-urging after the mediation. The Clerk is directed to assign a new cause number for the severed claim assigned to the undersigned.