SAN FRANCISCO (LN) — U.S. District Judge William Orrick issued the order on May 14, resolving a dispute between GoPro and Contour IP Holding, LLC, over patents covering technology for point-of-view digital video cameras. The ruling wipes out the damages award the jury had granted Contour based on a prior summary judgment finding that GoPro infringed the patent.
The jury had returned a verdict on Oct. 10, 2025, finding that GoPro’s products did not infringe on any of the claims presented at trial. However, the jury found that dependent claims 12 of U.S. Patent No. 8,890,954 and 6 of U.S. Patent No. 8,896,694 were invalid as anticipated and obvious.
Critically, the jury found that independent claim 11 of the ’954 Patent was valid. Because Judge Orrick had previously ruled that GoPro infringed claim 11, the jury awarded Contour $8.2 million in damages for that infringement.
The verdict contained a logical inconsistency: the jury found claim 12 invalid while finding the independent claim 11, from which claim 12 depends, valid. Under patent law, a dependent claim cannot be invalid if the independent claim it relies on is valid.
GoPro moved for judgment as a matter of law on the validity of claim 11, arguing the jury’s finding was unreasonable in light of the evidence. Contour argued for a new trial on all issues, claiming the verdict was inconsistent across the board.
Judge Orrick agreed with GoPro that the verdict was inconsistent but rejected Contour’s request for a broad new trial. He determined that the inconsistency was limited to the validity of claim 11.
The judge then reviewed the evidence on obviousness. He concluded that while there was substantial evidence to support the jury’s finding that claim 11 was not anticipated by GoPro’s prior invention, the claim was invalid as obvious.
GoPro’s case for obviousness relied on a combination of prior art references: the "Boland" reference and Ambarella A5 or A5s camera processors. Judge Orrick found that GoPro’s expert, Dr. Almeroth, provided substantial, unrebutted evidence that a person of ordinary skill would have been motivated to combine these references.
Contour’s expert, Dr. Hu, failed to substantially address the combination of Boland and Ambarella in her testimony, offering only a general conclusion that the invention was novel.
The judge also rejected Contour’s arguments based on secondary considerations of nonobviousness. He gave little weight to Contour’s industry awards, noting they praised the artistic aspect of the ContourGPS rather than the specific patented features. He also dismissed Contour’s argument that GoPro’s failure to develop a similar product earlier supported nonobviousness, noting that GoPro succeeded once it acquired the Ambarella chip.
Regarding GoPro’s alleged copying of Contour’s products, the judge found the evidence equivocal and insufficient to prove nonobviousness without more compelling objective indicia.
With claim 11 now ruled invalid, the basis for the infringement finding and the $8.2 million damages award disappeared.
"Because the ’954 Patent is invalid, there can be no finding that the Live Preview Group 1 Products infringed on the ’954 Patent and the jury’s damages finding must be struck," Judge Orrick wrote.
GoPro’s motion for a conditional new trial on obviousness, to take effect if the JMOL is reversed on appeal, was granted.
Contour’s motion for a new trial and judgment as a matter of law was denied.