Facts

ViaSat, Inc. filed suit against Acacia Communications, Inc. in relation to an agreement reached between the parties in 2009 under which ViaSat licensed its soft decision forward error correction technology to Acacia.

PLAINTIFF'S CONTENTIONS: ViaSat contended that under the licensing agreement, Acacia was forbidden from using any of Viasat's confidential soft decision forward error correction design information for any purpose other than making products on which Acacia paid royalties, and that Acacia breached the license agreement by copying Viasat's technical specifications and incorporating the encoding and decoding technologies reflected in those specifications into Acacia's later generation products, on which it did not pay royalties. Viasat alleged that Acacia breached its confidentiality obligations and the use restrictions under the license agreement by incorporating Viasat's licensed materials into Acacia's unlicensed products. Viasat contended that Acacia's breaches of the license agreement required Acacia to pay damages in the amount of royalties specified in the agreement, and that Acacia misappropriated Viasat's trade secrets by using them without any right to do so.

DEFENDANT'S CONTENTIONS: Acacia alleged that it redesigned ViaSat's technology and only used some of the same labels as ViaSat, which was permitted under the licensing agreement. Acacia also claimed its engineers designed new soft decision forward error correction technology, so the technology in products after the first generation did not fall under the agreement and no royalties on sales of those products were owed to ViaSat. Acacia counterclaimed against ViaSat for breach of contract and conversion.

Damages

ViaSat sought $34 million in unpaid royalties, $13 million in late fees, and $288.9 million in damages attributable to Acacia's misappropriation of ViaSat's trade secrets.

Result

The jury found that Acacia breached the licensing agreement and willfully and maliciously misappropriated ViaSat's trade secrets. The jury determined ViaSat was entitled to just over $49.3 million in damages. Further, the jury found that ViaSat misappropriated Acacia's trade secrets but did not act willfully, and Acacia was entitled to $1 in damages.