Patent Damages
18Jul/160

Southern District of Florida Finds Defendant Failed to Meet its Burden With Laches Defense

The Southern District of Florida, in Arctic Cat Inc. v. Bombardier Recreational Products, Inc., Case No. 14-cv-62369 (Judge Bloom) (May 31, 2016), denied Defendant’s Motion for Judgment as a Matter of Law on laches, and found Defendant had failed to meet its burden of proving the defense.

Defendant contended the doctrine of laches precluded Plaintiff’s recovery of post-filing damages.  The evidence during the Plaintiff’s case-in-chief showed that Plaintiff knew Defendant was selling personal watercrafts more than 10 years before Plaintiff filed suit.  Defendant argued that Plaintiff should be charged with constructive knowledge of Defendant’s sale of personal watercrafts with the accused technology because well over 6 years before suit was filed (a) Defendant openly distributed product information clearly disclosing the use of the accused technology; (b) operator’s guides and published articles were publically available clearly disclosing the use of the accused technology; and (c) Defendant’s website included product information saying its products included the accused technology.

14Jul/160

District of Minnesota Orders Production of License Negotiation Documents and Sanctions

The District of Minnesota, in Luminara Worldwide, LLC v. Liown Electronics Co. Ltd. et al., Case No. 14-3103 (Magistrate Judge Noel) (May 18, 2016), granted Defendant’s motion to compel documents related to Plaintiff’s withheld patent license.  Defendant served discovery seeking Plaintiff’s license agreements related to the asserted patent.  Plaintiff did not produce its Memorandum of Understanding or Waiver Agreement with Flipo which included Plaintiff’s agreement to release Flipo and its customer from infringement liability and Plaintiff’s waiver of its enforcement rights against Flipo.  Subsequently, Defendant’s CEO had a conversation with Flipo’s CEO at a trade show in which Flipo’s CEO said that Flipo had taken a license to Plaintiff’s patent.  After a specific request, Plaintiff produced the Memorandum of Understanding and the Waiver Agreement with Flipo, but refused to product all documents related to the those two agreements. 

14Jul/160

District of Minnesota Orders Additional Expert Discovery and Sanctions Based on Information Not Produced During Discovery

The District of Minnesota, in Luminara Worldwide, LLC v. Liown Electronics Co. Ltd. et al., Case No. 14-3103 (Magistrate Judge Noel) (May 18, 2016), agreed that Plaintiff should have produced its manufacturing capacity data on which its damages expert relied for his lost profits analysis during discovery.  The Court allowed Defendants to take further discovery and supplement their expert report.  The Court declined to exclude the data because there was enough time before trial to complete the additional discovery.  The Court denied Defendants’ motion to strike the history of the technology at issue from the Plaintiff’s report, leaving it for cross-examination.

In this case, Defendants moved to strike Plaintiff’s expert report regarding damages because the damages expert presented theories based on evidence Plaintiff withheld during fact discovery. 

14Jul/160

District of Connecticut Declines to Exclude Survey, Finding Alleged Deficiencies Go To Weight, Not Admissibility

The District of Connecticut, in Gerber Scientific International, Inc. v. Roland DGA Corp., et al., Case No. 3:06cv2024 (Judge Covello) (June 27, 2016), denied Defendant’s Summary Judgment of No Lost Profits.  Plaintiff’s damages expert presented a lost profits theory relying solely on a survey.  Defendant contended that the survey was “unreliable, untrustworthy, and prejudicial.”  (Slip op. at 1).  The Court noted that there is a split in authority over the proper consequence for unreliable or untrustworthy survey evidence.  “While some courts . . . believe such flaws are proper grounds for exclusion, others view methodological errors as affecting only the weight of the evidence.” Schering Corp. v. Pfizer, 189 F.3d 218, 225-26 (2d Cir. 1999).

While the Court agreed that “indications of unreliability and/or untrustworthiness may result in the exclusion of a survey,” the Court held that “the deficiencies alleged by [Defendant] in this case are not clearly egregious or sufficiently prejudicial to warrant exclusion at this time.”  (Slip op. at 1).

31May/160

District of Delaware allows 13% apportionment methodology

The District of Delaware, in ART+COM InnovationPool GMBH v. Google Inc., (Judge Dyk) (May 16, 2016), denied Defendant’s motion for reconsideration, allowing Plaintiff’s apportionment theory to proceed to the jury.

Plaintiff’s expert, James Nawrocki, calculated per-session damages. Defendant argued that Mr. Nawrocki’s theory included improper categories of revenue in the royalty base and an unsupportable 13% apportionment. (slip op. at 5). With regard to the categories of revenue, Defendant argued that Mr. Nawrocki should not have started with the revenue from the entire Geo Product group. The Court said:

20Apr/160

EDTX denies Daubert motions involving apportionment, entire market value rule, license agreements, and patent valuations

Posted by Chris Marchese

The Eastern District of Texas, in Core Wireless Licensing SARL v. LG Electronics, Inc. et al, Case No. 2-14-cv-00911 (Judge Payne) (March 19, 2016), addressed motions filed by both parties seeking to exclude the other party’s damages expert’s opinions and testimony. LG, the alleged infringer, filed a motion to exclude the opinions of Core’s damages expert, Dr. Stephen Magee, on Daubert and untimeliness grounds. Similarly, Core, the patent owner, sought to exclude the opinions of LG’s damages expert, Dr. Thomas Vander Veen, on the same grounds. The court concluded that both experts’ opinions were reliable under FRE 702, and thus denied both parties’ Daubert motions. The court also concluded that the parties’ late disclosures were harmless and denied the parties’ motions to exclude the adverse party’s supplemental report for untimeliness.

5Apr/160

DDE rules on settlement agreements, foreign sales, and non-infringing alternatives

Posted by Chris Marchese

The District of Delaware, in M2M Sols. LLC v. Enfora, Inc., Case No. 12-32-RGA (Judge Andrews) (March 9, 2016), considered, in part, plaintiff's Daubert motion and defendants' summary judgment motion (MSJ) on damages issues.  The court granted plaintiff's Daubert motion, and granted in-part and denied in part defendants' MSJ.

4Apr/160

EDTX denies Daubert motion re plaintiff’s apportionment and analytical approaches

Posted by Chris Marchese

The Eastern District of Texas, in Metaswitch Networks Ltd. v. Genband US LLC, Case No. 2:14-cv-00744 (Judge Payne) (March 5, 2016), addressed defendant Genband's Daubert motion seeking to strike plaintiff's expert Mr. Sims’ opinions relating to apportionment, royalty base calculation, and the application of the "analytical approach."  The court concluded that Mr. Sims' opinions were reliable under FRE 702 and thus, denied Genband's Daubert motion.

 

15Mar/160

EDTX issues Daubert ruling on FRAND damages including “top down” approach

Posted by Chris Marchese

The Eastern District of Texas, in Metaswitch Networks Ltd. V. Genband US LLC, Case No. 2:14-cv-00744 (Judge Payne) (March 7, 2015), addressed a number of issues in a FRAND case involving an IETF standard.  Specifically, defendant moved under Daubert to exclude certain opinions of plaintiff’s damages expert Matthew R. Lynde.  The court granted in part and denied in part the motion.

1Mar/160

District of Delaware allows damages experts to rely on distributor agreements, cross licenses and collaboration agreements as relevant comparable agreements

The District of Delaware, in Amgen Inc. et al. v. Sanofi, et al., 14-1317 (Judge Robinson) (February 18, 2016), considered the parties’ respective Daubert motions relating to the damages experts.  Both experts agreed that there were no comparable bare license agreements.  (slip op. at 5).  In an effort to base their opinions on “some modicum of real world data,” Plaintiff’s expert relied on distributor fees as comparable, while Defendant’s expert relied on cross-license agreements and collaboration agreements as comparable.  (Id.)  The Court determined that both experts “adequately explained in their reports the relevance of their respective data vis a vis the various Georgia-Pacific factors.”  (Id.) The Court, however, excluded from Defendant’s expert’s report an acquisition agreement and a settlement agreement because they were “business arrangements . . . too far afield from a bare patent license to be relevant comparables.” (Id.)