U.S. District Judge Alan Albright significantly reduced the damages award from $9.2 million to $1 million in favor of GlobalFoundries, ruling that the plaintiff’s damages model was legally unreliable.
In July 2025, an Austin federal jury returned a $9.2 million verdict for Katana Silicon Technologies after a five-day trial, finding GlobalFoundries infringed only one claim of the patent.
Katana alleged the design GlobalFoundries used for its transistor products infringed its patent covering semiconductor manufacturing and chip packaging technologies.
The case was originally filed in Waco but was moved to Austin before U.S. Western District of Texas Judge Alan Albright. GlobalFoundries asked for the transfer because it has an office in Austin.
When the case was originally filed in February 2022, Katana alleged infringement of two patents and was seeking $45 million in damages. By the time the case went to trial, the jury was asked to determine if GlobalFoundries had infringed three claims in one patent. Katana asked jurors to award nearly $20 million in damages.
Judge Albright found substantial evidence supported the jury’s infringement finding. He further found that Katana’s damages theory was not supported by substantial evidence.
He wrote that Katana’s damages expert failed to allocate the numerical license among the licensed patents.
“An expert’s failure to allocate license consideration among the several rights conveyed by a comparable license is not a mere weight issue for the jury. It renders the resulting royalty figure unreliable as a matter of patent damages law,” Judge Albright wrote in his 57-page opinion.
Judge Albright wrote that he was troubled by the apportionment theory at the pretrial hearing but reserved judgment.
“First, the Court’s pretrial statement was a caution identifying a potential vulnerability, not a determination that Katana’s theory was baseless or inadmissible,” Judge Albright wrote.
He had denied GlobalFoundries’ motion to exclude.
“The deficiencies identified above are not simply garden variety disputes about competing expert opinions that the jury was free to resolve either way,” Judge Albright wrote. “Each is a failure of proof on a predicate legal question within the province of the Court: whether an expert has properly allocated the consideration paid under a comparable license among the variety of rights the license conveys; whether the proponent of a comparable license has established the comparability required to rely on built-in apportionment; and whether a patentee has satisfied the demanding requirements of the entire market value rule. These are not questions of fact for a jury.”
Judge Albright wrote that the proper remedy is reducing the judgment to $1 million without a new trial.
“Katana advanced a damages theory that the Court had held admissible over GlobalFoundries’ challenge. That the theory ultimately proved legally insufficient makes it unsuccessful, not improper,” Judge Albright wrote. “Nothing in this Part should be read as a determination that this case is exceptional under 35 U.S.C. § 285, that Katana or its counsel acted in bad faith, or that sanctions of any kind are warranted.”
The court denied GlobalFoundries’ request to be designated the prevailing party. The semiconductor manufacturer also sought its fees under the court’s inherent authority and claimed a “pattern of litigation abuses,” which was denied.
“Katana’s litigation was not ‘patently meritless’ in any facet, let alone every facet. Katana defeated two petitions for inter partes review at institution, obtained a reexamination certificate confirming the challenged claims, defeated summary judgment and a Daubert motion, obtained a jury verdict of validity and infringement, and has now defended that verdict against a renewed motion for judgment as a matter of law,” Judge Albright wrote.
While Judge Albright found Katana is entitled to prejudgment interest, he wrote that it accrues from May 2018, not April 2015.
Attorneys representing the defendant are Paige Arnette Amstutz, Lauren Christine Ditty and Robert Pierce Earle of Scott Douglass & McConnico, Lowell Jacobson of Devlin Law Firm and Joseph J. Rumpler and Allan Soobert of Paul Hastings.
Attorneys representing the plaintiff are Scott Breedlove, Omer Salik, E. Leon Carter and Howard L. Lim of Carter Arnett.
The case number is 1:22-cv-00852.