Patent Damages
2Jul/140

CDCA excludes reasonable royalty testimony due to unreliable license analysis

Posted by Chris Marchese

On April 21, 2014, Judge Guilford of the Central District of California issued an opinion on Daubert motions.  The case is Universal Electronics, Inc. v. Universal Remote Control, Inc., Case No. SA-CV 12-00329 AG (JPRx).  The parties had filed several motions to exclude evidence on a wide array of issues.  One motion of interest relates to plaintiff’s damages expert’s opinions on reasonable royalty.  The expert, Frank Bernatowicz, had reached a “baseline” royalty rate of 3% using allegedly comparable licenses as a benchmark.  Defendant moved to exclude the royalty opinions contending that Bernatowicz’s license analysis was flawed.  The court agreed and excluded Bernatowicz’s testimony on reasonable royalty damages.

30Jun/140

EDTX excludes expert who attempted to apportion the royalty base by claim elements; allows do-over

Posted by Chris Marchese

On June 21, 2014, Judge Davis of the Eastern District of Texas issued an opinion on a Daubert motion.  The case is Thinkoptics, Inc. v. Nintendo of America, Inc., Case No. 6:11-CV-455.  Thinkoptics moved to exclude the testimony of Nintento’s damages expert, Professor Daniel J. Slottje.  The court granted the motion, but also allowed a do-over. 

26Jun/140

NDCA does not require “further” apportionment of smallest saleable unit

Posted by Justin Barnes

On June 20, 2014, Judge Rogers of the Northern District of California issued a Daubert opinion in MediaTek Inc. v. Freescale Semiconductor, Inc., Case No. 11-cv-5341 YGR, addressing numerous grounds raised by the Defendant.  The discussion on royalty rate and market share were very short and not particularly noteworthy, but the royalty base discussion addressed an issue that is of considerable importance and relevance to other cases.   

4Jun/140

MDPA approves smallest salable unit as base; allows lump sum agreements as evidence of running royalty

Posted by Chris Marchese

On May 27, 2014, Judge Caldwell of the Middle District of Pennsylvania issued an opinion on a motion for reconsideration of an earlier Daubert opinion.  The case is Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC, Civil No. 1:09-CV-1685.  The court addressed defendants’ motion to exclude opinions by plaintiff’s damages expert, Julie L. Davis, on two issues:  (1) whether Ms. Davis’ use of the smallest salable patent-practicing unit (“SSU”) as the royalty base violated the entire market value rule (“EMVR”); and (2) whether Ms. Davis’ use of lump sum agreements as evidence of a running royalty rate should be allowed.  The court ruled in plaintiff’s favor on both issues.

3Jun/140

CDCA denies motion to compel production of settlement agreements

Posted by Chris Marchese

On May 29, 2014, Magistrate Judge Mumm of the Central District of California issued a discovery order in In re Katz Interactive Call Processing Litigation, Case No. 07-ML-1816 RGK (FFMx), addressing defendant Echostar’s motion to compel production of settlement agreements by plaintiff.  The issue is a narrow one, but points out the importance of crafting damages-related discovery requests sufficiently broad to capture all kinds of agreements.  The court reviewed the document requests at issue and concluded they were intended to cover license agreements.  The court reasoned that the requests only addressed settlement agreements to the extent they included a license.  The settlement agreements at issue were related to expired patents, and the court concluded they “are not sufficiently related to license agreements to be fairly within the contemplation of the discovery requests.”  Slip op. at 2. The court thus denied Echostar’s motion.

 

28May/140

EDTX excludes opinions on non-comparable licenses

Posted by Justin Barnes

On May 9, 2014, Judge Davis of the Eastern District of Texas issued a Daubertopinion in Tracbeam, L.L.C. v. Google, Inc., Case No. 6:13-cv-00093-LED, addressing numerous motions to exclude from both parties.  The Court denied the vast majority of the motions, but granted-in-part motions brought by both sides as to reliance on “comparable” license agreements.

15May/140

Case Law Trends for Patent Damages

Posted by Chris Marchese

Please join me on Thursday, May 29th, when I speak about “Case Law Trends for Patent Damages” at the Law Seminars International “Litigating Patent Damages” Conference at the San Francisco Marriott Union Square Hotel.  My presentation will provide a big picture overview of key cases and the search for guidance.  Please click here to register or view the conference brochure.

2May/140

CDCA excludes opinions on non-comparable license agreements

Posted by Chris Marchese

On April 21, 2014, Judge Guilford of the Central District of California issued aDaubertopinion in Universal Electronics, Inc. v. Universal Remote Control, Inc., Case No. SACV 12-00329 AG (JPRx), addressing numerous motions to exclude.  The issue of primary interest concerns plaintiff’s expert’s setting of a 3% “baseline royalty rate” based on four license agreements the court found not sufficiently comparable.  The expert is Frank Bernatowicz.

29Apr/140

NDIll addresses EMVR, apportionment, unpatented items in royalty base, and price erosion

Posted by Chris Marchese

On March 26, 2014, Judge St. Eve of the Northern District of Illinois issued a lengthy, detailed damages opinion in Sloan Valve Co. v. Zurn Industries, Inc., Case No. 10-cv-00204, in which defendant Zurn moved to exclude testimony of plaintiff’s damages expert, Richard Bero.  The court addressed several interesting damages issues, including entire market value rule, apportionment, inclusion of unpatented items in the royalty base, and price erosion.  The court granted Zurn’s motion.

25Apr/140

WDWI rejects demand for the patented feature in lost profits

Posted by Chris Marchese

On April 4, 2014, Judge Conley of the Western District of Wisconsin issued an opinion in Douglas Dynamics, LLC v. Buyers Products Co., Case No. 09-cv-261-wmc, in which the court addressed a number of pretrial motions in limine, some of which related to damages.  One of those motions is interesting.