The patent in question (US patent number
4807115
) relates to former Cornell University professor Hwa C Torng's 1989 invention of a technique for significantly increasing the efficiency and speed of computer processors.
Cornell sued HP in 2001, claiming that the global technology company began infringing on Torng's patent in 1996 by using the patented technology in servers in HP workstations. Torng's patent expired in 2006.
One of Hewlett-Packard's arguments against Cornell's claims of infringement was that Torng's right as patent holder had been exhausted by licences and implied licences that Cornell held with Intel and IBM, since some of the processors in question had been made by the two companies.
However, Cornell's patent counsel, Ed Poplawski of Sidley Austin, said that the jury ultimately concluded that the terms of Intel's licence did not apply to HP's activities and that there was no evidence of an implied licence between the university and IBM.
The issue of patent exhaustion is being hotly debated among the patent community, with a Supreme Court decision expected this month in the landmark case,
Quanta v LG
, which was argued in January this year and could affect the right of patent owners to place restrictions on patent licensees.
In a statement sent to
Managing IP
about the verdict, HP said: "We respect the jury's decision, though we don't agree with it. HP respects the intellectual property rights of other companies and organizations around the world, and likewise protects and enforces its own intellectual property rights. HP and Cornell have maintained a strong relationship over the years, and we look forward to renewing that strong relationship."
Poplawski said that the almost seven-year trial was "difficult for Cornell" and that Hewlett-Packard made the discovery process "especially challenging".
Although Hewlett-Packard is likely to appeal, the case will first move to post-trial motions on laches and other issues. No timeline has yet been set.