Patent Damages
11Apr/140

District of Connecticut blocks late addition of subsidiary, kills Lost Profits

Posted by Justin Barnes

On March 29, 2014, Judge Robert N. Chatigny in the District of Connecticut issued an opinion denying motion for leave to add plaintiff Protegrity’s subsidiary as a co-plaintiff, effectively killing Protegrity’s lost profit claims.  Specifically, the Court found that there was no good cause for adding Protegrity USA, Inc. (PUSA) long after the deadline in the scheduling order.  The Court found that:

7Apr/140

WDPA orders ongoing royalties

Posted by Justin Barnes

On March 31, 2014, Judge Fischer of the Western District of Pennsylvania issued a 72-page opinion in Carnegie Mellon Univ. v. Marvell Tech. Group, Ltd., Case No. CV 09-290.  The opinion covered a number of post-verdict damages issues, including pre-judgment and post-judgment interest, supplemental damages (for sales between the end of discovery and through trial), enhanced damages, and ongoing royalties.  Of particular note are the enhanced damages and ongoing royalties issues.

13Mar/140

NDCA denies summary judgment and Daubert motions on lost profits and reasonable royalty; allows patentee’s entire market value and comparable license theories

Posted by Chris Marchese

On July 18, 2013, Judge Seeborg of the Northern District of California issued an opinion in Interwoven, Inc. v. Vertical Computer Sys., Case No. CV 10-04645 RS (Doc. 191), in which the court denied Interwoven’s motion for summary judgment concerning lost profits and reasonable royalties, and denied Interwoven’s motion to exclude Vertical’s damages expert, Joseph Gemini.

12Mar/140

NDCA denies motion to strike reports for inadequate apportionment in lost profits and reasonable royalty; allows testimony on disputed licenses and offer to license

Posted by Chris Marchese

On February 21, 2014, Judge Alsup of the Northern District of California issued an opinion in Plantronics, Inc. v. Aliph, Inc., Case No. C 09-01714 WHA, in which the court denied motions to strike defendant’s damages experts on lost profits (Matthew R. Lynde) and reasonable royalty (Brian Napper).  The case was a competitor suit involving bluetooth headsets.  The opinion has several interesting issues, but the most significant is the treatment of apportionment and lost profits.  Judge Alsup, in effect, held that the Panduit test only requires proof of demand for the patented product, and thus the plaintiff need not prove demand for the patented feature, thus avoiding the entire market value rule.

20Feb/140

NDCA denies summary judgment based in part on statutory presumption of damages

Posted by Chris Marchese

On February 3, 2014, Judge Seeborg of the Northern District of California issued an opinion in Interwoven, Inc. v. Vertical Computer Systems, Case No. CV 10-04645 RS, in which the court addressed Interwoven’s motion for summary judgment on the issue of damages.  The court granted the motion in part, as to lost profits, but denied the motion for summary judgment based in part on the “statutory presumption of damages upon a finding of infringement ….”  [Slip op. at 10.]  Although the court observed that the evidence submitted by Vertical provided “some thin basis on which a reasonable royalty might be calculated” [id.] the court allowed Vertical to go forward on a reasonable royalty theory based also on its conclusion that the district court must award in an amount no less than a reasonable royalty.

27Jan/140

NDGA rejects two-supplier market theory for lost profits

Posted by Chris Marchese

On January 6, 2014, Judge Duffey of the Northern District of Georgia issued an opinion in Hubbard/Downing, Inc. v. Kevin Heath Enters., Case No. 1:10-cv-1131-WSD (Doc. No. 97), in which the court addressed damages issues stemming from a contempt ruling.  In earlier action, plaintiff accused defendants’ products (neck brace devices for high performance racing vehicles) of infringing plaintiff’s patent. The parties entered into a settlement agreement that required a Consent Order.  Subsequently, plaintiff discovered new neck brace products marketed by defendants, and brought an action for contempt.  The court ruled that the new product “is no more than colorably different than the [prior device that was found to infringe],” and that defendants “knowingly violated the [settlement] agreement and the Consent Order ….”  [Slip op. at 8.] 

21Jan/140

Upcoming webinar: Drafting Patent Claims from a Litigator’s Perspective

Posted by Chris Marchese

Please join me on January 22 for a webinar, “Drafting Patent Claims from a Litigator’s Perspective.” In this first-of-the-season patent-focused webinar hosted by Fish & Richardson, I will cover the importance of:

17Jan/140

EDTX admits plaintiff’s EMVR testimony

Posted by Chris Marchese

On November 14, 2013, Judge Schneider of the Eastern District of Texas issued an opinion in L.C. Eldridge Sales Co. v. Azen Mfg. PTE, Ltd., Case No. 6:11-CV-599 (Doc. No. 290), in which the court ruled on several issues including a motion to exclude opinions of plaintiff’s damages expert, Todd W. Schoettelkotte.  The opinion is brief on this point, but is worth noting for the fact that an expert was allowed to testify on EMVR.  The relevant portion states:

15Jan/140

EDTX allows cost savings approach for royalties, based on cost of entire location network

Posted by Chris Marchese

On November 25, 2013, Judge Davis of the Eastern District of Texas issued an opinion in TracBeam L.L.C. v. AT&T Inc., Case No. 6:11-CV-96 (Doc. No. 551), in which the court ruled on several issues including a motion to exclude opinions of TracBeam’s damages expert, Robert Mills.  According to the court, the parties agreed that an appropriate royalty rate would be based on AT&T’s cost savings from using the patented technology compared to the best available non-infringing alternative.  The issue centered around how to compute the cost savings.  Mr. Mills opined that the cost savings to AT&T was the cost of building a new location network infrastructure at a price of $742M.  AT&T claimed that Mr. Mills wrongly used the cost of AT&T’s entire location network rather than the cost savings based on the value of the patented methods.  AT&T argued that the value of the invention could be assessed by taking “the difference in cost between the redundant system and the existing system.”  Slip op. at 8.

13Jan/140

SDNY grants SJ of no pre-notice damages where plaintiff failed to plead marking

Posted by Chris Marchese

On December 31, 2013, Judge Rakoff of the Southern District of New York issued a summary judgment opinion in Cognex Corp. v. Microscan Systems, Inc., 13 Civ. 2027 (JSR) (Doc. No. 142), in which the court ruled on an issue concerning failure to plead patent marking.  According to the court, the plaintiffs’ complaint plead the date of actual notice but failed to plead compliance with the marking statue.  The defendants moved for summary judgment that plaintiffs could not recover damages prior to actual notice.