Vringo (VRNG) and Google (NASDAQ:GOOG) are currently briefing the amount of ongoing royalties Google owes to Vringo based upon the jury's finding of infringement. On May 1, Judge Jackson rejected Google's request to depose Vringo's damages expert and ordered Google to respond to Vringo's motion for ongoing royalties by May 13. Vringo will have the opportunity to respond to Google's brief, and Judge Jackson will likely issue his ruling on the amount of ongoing royalties before the middle of June. At that time, adding the ongoing royalties to the $15.8 million in past damages Vringo won at trial, we will finally see the dollar amount Vringo can expect to collect from Google.
That, however, does not mean that Vringo, absent settlement, will collect any money any time soon. Even if Judge Jackson awards ongoing royalties to Vringo, Google has already noticed its appeal to the Federal Circuit. Under Rule 62(d) of the Federal Rules of Civil Procedure, monetary damages may be stayed pending the outcome of an appeal provided the defendant posts a bond. Google will surely post a bond against any payments pending the outcome of its appeal. That means Google will not have to pay any past damages (which includes the $15.8 million Vringo won at trial) or ongoing royalties to Vringo until its appeal is over. And Judge Jackson will have very little discretion to avoid this result.
A recent patent case before Judge Jackson exemplifies how Vringo's case against Google could play out. The case was ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 10-cv-00248 (E.D. Va.). In that case, the defendant, Verizon, lost a jury verdict to ActiveVideo and was ordered to pay past damages of $115 million. In addition, a permanent injunction was ordered against Verizon. Verizon claimed it should not be enjoined because it had designed a non-infringing work-around, (similar to Google's claim in its case against Vringo.) Given this, Judge Jackson agreed to stay enforcement of the injunction on condition that Verizon pay a "sunset" royalty-essentially an ongoing royalty that Verizon must pay until it implements its alleged work-around.
Rather than pay the "sunset" royalty, Verizon asked Judge Jackson to stay any payments pending its appeal to the Federal Circuit. Judge Jackson denied this request. He reasoned that the "sunset" royalty was not an award of money damages, as required to obtain a stay under Rule 62(d). Verizon appealed this decision to the Federal Circuit, which disagreed with Judge Jackson. The Federal Circuit held that regardless of the form of the payment, the "sunset" royalty constituted monetary damages. Accordingly, it was subject to Rule 62(d). Thus, Verizon was entitled to a stay of any obligation to pay the "sunset" royalty pending the outcome of its appeal, provided it posted a bond. ActiveVideo Networks, Inc. v. Verizon Communications, Inc., 2011-1538, -1567, 2012-1129, -1201 (Fed. Cir. April 2, 2012).
ActiveVideo illustrates that Judge Jackson has very little latitude to avoid staying Google's obligation to pay any money-past damages or ongoing royalties-to Vringo until its appeal to the Federal Circuit is resolved. He attempted to do so before, but was reversed by the Federal Circuit. Notably, ActiveVideo was in an even better position than Vringo is in right now (higher jury ruling, sunset royalty, and injunction), yet still had to wait for the appeal to run its course.
In our experience, appeals before the Federal Circuit typically take at least one year, but can take up to two years, or longer, depending on the complexities of the case. That means, Vringo should not expect to see any money hitting its bank account until after resolution of Google's appeal to the Federal Circuit-some time well into 2014. And only, of course, if Google loses its appeal.
Disclosure: I have no positions in any stocks mentioned, but may initiate a short position in VRNG over the next 72 hours.
Additional disclosure: We were long prior to reexamination news, but closed out the position due to increased risks. Some members of Markman Advisors bought put options in advance of Google's response.