V. CONCLUSION For all of the foregoing reasons, S&N’s Motion, seeking to enhance damages in S&N’s favor, should be denied. Case 3:04-cv-00029-MO Document 999 Filed 09/19/11 Page 20 of 22 Page ID#: 36652 Page 17 Arthrex, Inc.’s Memorandum in Opposition to Plaintiffs’ Motion for Enhanced Damages Under 35 U.S.C. § 284 DSMDB‐2975638v2  Dated: September 19, 2011 By: _/s/ Charles W. Saber__________________ Charles W. Saber Salvatore P. Tamburo Megan S. Woodworth DICKSTEIN SHAPIRO LLP 1825 Eye Street NW Washington, DC 20006-5403 Tel: (202) 420-2200 SaberC@dicksteinshapiro.com Case 3:04-cv-00029-MO Document 999 Filed 09/19/11 Page 21 of 22 Page ID#: 36653 CERTIFICATE OF SERVICE I hereby certify that on September 19, 2011, I caused the foregoing ARTHREX’S OPPOSITION TO PLAINTIFFS’ MOTION FOR ENHANCED DAMAGES UNDER 35 U.S.C. §284 to be electronically filed with the Clerk of the Court using the CM/ECF system, which will send notification of such filing to the following counsel of record:: Counsel for Plaintiff Smith & Nephew Inc., et al. Brenna K. Legaard Susan D. Pitchford CHERNOFF, VILHAUER, McCLUNG & STENZEL, LLP 1600 ODS Tower 601 SW Second Avenue Portland, OR 97204 Tel: (503) 227-5631 Fax: (503) 228-4373 Email: brenna@chernofflaw.com sdp@chernofflaw.com John M. Skenyon Mark J. Hebert Michael C. Lynn Gregory R. Booker FISH & RICHARDSON, PC One Marina Park Drive Boston, MA 02110-1878 Tel: (617) 542-5070 Fax: (617) 542-8906 Email: skenyon@fr.com hebert@fr.com lynn@fr.com booker@fr.com Dated: September 19, 2011 By: _/s/ Charles W. Saber___________________ Charles W. Saber DICKSTEIN SHAPIRO LLP 1825 Eye Street NW Washington, DC 20006-5403 Tel: (202) 420-2200 SaberC@dicksteinshapiro.com Case 3:04-cv-00029-MO Docu

An award of damages, and pre-judgment and post-judgment interest; 4. An award of increased damages pursuant to 35 U.S.C. § 284; 5. A judgment that this case is exceptional under 35 U.S.C. § 285 and requiring the TWC Counterclaimants to pay the costs of this action, including all disbursements and attorneys’ fees; and 6.

It does not mean that a patent owner can choose to elect damages under Section 289 and then rely on the non-elected damages section to justify asking for more money. Indeed, as courts have explained, “[s]ection 289 provides an alternative remedy to section 284, for infringement of design patents.” Junker v. HDC Corp., C-07-05094 JCS, 2008 WL 3385819, at *3 (N.D. Cal. July 28, 2008) (emphasis added).

on from the Court that the ’168 patent is invalid and unenforceable. PRAYER FOR RELIEF WHEREFORE, AuthenTec respectfully requests that this Court enter judgment against Atrua as follows: a) For judgment that Atrua has infringed and continues to infringe the ‘248 Patent, the ‘439 Patent, ‘526 Patent, the ‘679 Patent, and the ‘804 Patent; b) For preliminary and permanent injunctions under 35 U.S.C. § 283 against Atrua and its directors, officers, employees, agents, servants, subsidiaries, parents, successors, assigns, attorneys, and all persons acting in concert, on behalf of, in joint venture with, or in partnership with Atrua from further infringing acts; c) For damages to be paid by Atrua adequate to compensate AuthenTec for Atrua’s infringement, including interests, costs, and disbursements as the Court may deem appropriate under 35 U.S.C. § 284; d) For judgment finding that Atrua’s infringement was willful and deliberate, entitling AuthenTec to increased damages under 35 U.S.C. § 284; e) For judgment finding this to be an exceptional case, and awarding AuthenTec attorneys’ fees and costs under 35 U.S.C. § 285; Case 3:08-cv-01423-PJH Document 35-2 Filed 07/30/2008 Page 20 of 22 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Case No. C08-01423 PJH SECOND AMENDED COMPLAINT & DEMAND FOR JURY TRIAL -21- DM_US:21358855_1 HOWREY LLP f) For judgment requiring that Atrua and its officers, agents, servants, employees, owners, and representatives, and all other persons, firms, or corporations in active concert or participation with it, be enjoined and restrained from making false, misleading, unlawful, unfair, and fraudulent statements about Atrua’s products, AuthenTec, and AuthenTec’s products to AuthenTec’s customers, potential customers, and/or potential business partners; g) For judgment requiring that Atrua and its officers, agents, servants, employees, owners, and representatives, an

mely invoked their right to a jury trial. VI. ATTORNEYS’ FEES Should VIZIO prevail in this action, VIZIO will respectfully seek an award of attorneys’ fees pursuant to 35 U.S.C. § 285. VIZIO respectfully submits that at least the following conduct by Nichia would support an award of attorneys’ fees in this action:  Nichia’s continued assertion of patents that are closely related to the patents asserted and held invalid in the Everlight litigation;  Nichia’s refusal to withdraw infringement allegations related to products for which it failed to timely serve an expert report;  Nichia’s refusal to withdraw infringement allegations related to products that were licensed under its agreement with ;  Nichia’s refusal to withdraw the ‘375 patent after failing to obtain any discovery regarding the methods used to manufacture the accused LEDs;  Nichia’s request for a damages award under 35 U.S.C. § 284 for inter partes review defense costs, including attorneys’ fees, when Section 284 does not cover such fees and Nichia has provided no basis as to why such fees were reasonable;  Nichia’s refusal to make the inventors of the asserted patents available for deposition in the United States (requiring VIZIO to successfully move to compel) and then later listing them as trial witnesses that Nichia intends to call at trial. Case 8:16-cv-00545-SJO-MRW Document 243 Filed 02/18/19 Page 47 of 49 Page ID #:14851 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -42- Case No. 8:16-cv-00545-SJO-MRW VIZIO'S REVISED MEMO. OF CONTENTIONS OF FACT AND LAW As other courts have found, the failure to withdraw infringement allegations in the face of a clear non-infringement or invalidity defense merit the award of attorneys’ fees under Section 285.

f attorneys’ fees in this action:  Nichia’s continued assertion of patents that are closely related to the patents asserted and held invalid in the Everlight litigation;  Nichia’s refusal to withdraw infringement allegations related to products for which it failed to timely serve an expert report;  Nichia’s refusal to withdraw infringement allegations related to products that were licensed under its agreement with ;  Nichia’s refusal to withdraw the ‘375 patent after failing to obtain any discovery regarding the methods used to manufacture the accused LEDs; Case 8:16-cv-00545-SJO-MRW Document 220 Filed 11/26/18 Page 47 of 49 Page ID #:13649 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -42- Case No. 8:16-cv-00545-SJO-MRW VIZIO'S MEMO. OF CONTENTIONS OF FACT AND LAW  Nichia’s request for a damages award under 35 U.S.C. § 284 for inter partes review defense costs, including attorneys’ fees, when Section 284 does not cover such fees and Nichia has provided no basis as to why such fees were reasonable;  Nichia’s refusal to make the inventors of the asserted patents available for deposition in the United States (requiring VIZIO to successfully move to compel) and then later listing them as trial witnesses that Nichia intends to call at trial. As other courts have found, the failure to withdraw infringement allegations in the face of a clear non-infringement or invalidity defense merit the award of attorneys’ fees under Section 285.

5 Case No. LACV17-04146 JAK (PLAx) 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 standard for awarding enhanced damages under § 284—and willfulness is an example of behavior that is egregious. Hulu is well aware that willfulness infringement is, by definition, egregious under § 284. Indeed, Hulu’s counsel in this case published an article shortly after the Halo decision, explaining as much: In Halo Electronics Inc. v. Pulse Electronics Inc., the U.S. Supreme Court unanimously overturned the Seagate test for enhanced damages in patent infringement cases under 35 U.S.C. Section 284. . . .

C. VIZIO’s Cases Do Not Support Its Conclusion VIZIO cites to no authority to support its contention that it was improper to include those costs from the IPR in Mr. Jarosz’s damages calculation. In fact, VIZIO’s cases do not deal with IPRs or Section 284 at all. Mahurkar v. C.R. Bard, Inc., 79 F.3d 1572 (Fed. Cir. 1996), deals with a different issue of trying to arbitrarily increase a royalty rate to account for attorneys’ fees incurred from the district court litigation, for which there is a specific statutory provision, Section 285, to apply when those fees would be appropriate.

. Because § 284 does not specify a rate to be used for prejudgment interest, “courts often use the statutory interest rate of the state in which they sit.” Bowling v. Hasbro, Inc., C.A. No. 05-229 S, 2008 WL 4694549 at *208 (D.R.I. 2008) (awarding patentee state statutory rate of 12%).

The jury found willfulness against the Widex Defendant. Moreover, ETG has moved the Court for enhanced damages and attorneys’ fees pursuant to Rules 54 and 59 of the Federal Rules of Civil Procedure and 35 U.S.C. §§ 284-85 (D.I. 531). ETG respectfully requests that the Court allow it to submit its post-judgment calculations once the Court has disposed of ETG’s motions regarding attorneys’ fees and enhanced damages and entered final judgment.