Patent Damages
23Oct/19Off

DNJ finds award of lost profits does not preclude injunction

In Eagle View Tech., Inc. v. Xactware Solutions, Inc., Civil No. 1:15-cv-07025 (D.N.J. Oct. 18, 2019), Judge Renee Marie Bumb granted Eagle View’s motion for a permanent injunction.  Addressing an issue related to damages, the court reasoned that an award of lost profits at the trial stage—which is for past damages—does not establish that the plaintiff has an adequate remedy at law, and thereby does not preclude injunctive relief. We quote the court’s analysis (slip op. at 22-26):

23Oct/19Off

DDE excludes damages approach due to lack of comparability

In TC Tech. LLC v. Sprint Corp., Civil Action No. 1:16-cv-00153-RGA (D. Del. Oct. 18, 2019), Judge Richard Andrews granted Sprint’s motion to exclude TC Tech’s damages expert, Mr. Brett Reed, from testifying as to a damages “approach” based on Sprint’s internal documentation.  In particular, Mr. Reed opined that “Sprint had internally considered [a 5% royalty rate to be] reasonable for telecommunications patents, including the VoIP patents, and determined how that figure would relate to Sprint’s LTE-related service revenue.”  Slip op. at 4.  Sprint contended that this opinion should be excluded because Mr. Reed had “failed to establish the required comparability between Sprint’s VoIP-related demands and the hypothetical negotiation.”  Id.  The court agreed. 

21May/19Off

D. Neb. denies JMOL, finds delay in filing suit irrelevant to damages

In Exmark Mfg. Co. v. Briggs & Stratton Corp., Case No. 8:10CV187 (D. Neb. April 15, 2019), Judge Joseph F. Bataillon denied Briggs’ JMOL motion or in the alternative for new trial or remittitur. These were post-trial motions after a retrial on damages, in which the jury awarded damages to Exmark, which occurred after remand from the Federal Circuit—the appellate court had affirmed in part and reversed in part and remanded the case to the district court to retry damages. Exmark Mfg. Co. v. Briggs & Stratton, 879 F.3d 1332, 1348-54 (Fed. Cir. 2018). The Federal Circuit found error in the court’s denial of Briggs’ motion for new trial and remanded for a new trial on damages. According to the district court’s order addressed here, the Federal Circuit “found no error in the Court’s allowing Exmark to apportion the value of the patented improvement and conventional components of the multi-component product through the royalty base [sic, rate] rather than the royalty rate [sic, base] and approved Exmark’s use of the accused lawn mower sales to as the royalty base. Id. at 1348-49.” Slip op. at 1. The district court further observed that the Federal Circuit “found Exmark’s damages expert Melissa Bennis’s opinion was inadmissible ‘as it failed to adequately tie the expert’s proposed reasonable royalty rate to the facts of the case,’ stating that the expert ‘plucked the 5% royalty rate out of nowhere.’ Id. at 1350-51.” Slip op. at 1-2.

21May/19Off

EDTX denies motion to exclude expert’s patent valuation opinion

In Intellectual Ventures II v. Sprint Spectrum, Case No. 2:17-cv-00662-JRG-RSP (E.D. Tex. April 11, 2019), Judge Roy Payne denied defendants’ motion to exclude patent valuation opinions by Dr. Douglas A. Chrissan. Defendants argued that Dr. Chrissan was not sufficiently qualified to perform patent valuation “as he does not have any ‘experience with patent valuation whatsoever.’” Slip op. at 1. The basis for the denial was because Dr. Chrissan had served in a similar role in another case between some of the same parties; defendants had raised the same challenge there as they did in this motion; and the court had concluded that Dr. Chrissan was “sufficiently qualified in the [other] case to perform an analysis that is very similar to the analysis conducted here.” Id. The court noted that, because of his earlier experience in the other case, “Chrissan has even more experience than he did before.” Id. at 2. 

10May/19Off

DMN denies JMOL to apportion various features; upholds lost profits; grants injunction; awards PJI at prime rate

In Solutran, Inc. v. U.S. Bancorp and Elavon, Inc., Case No. 13-cv-02637 (SRN/BRT) (D. Minn. Dec. 11, 2018), Judge Susan Richard Nelson ruled on post-trial motions including a JMOL motion by defendant U.S. Bank relating to reasonable royalty and lost profits damages.  The jury had awarded a hybrid damages verdict of $1.29M in lost profits and $1.98M in reasonable royalty, for a total award of $3.27M.  The court denied the JMOL motion.  The court also granted Solutran’s motion for an injunction and for post-2017 damages as well as post-judgment interest in full and pre-judgment interest in part. 

17Apr/18Off

D. Del. grants a new (third) trial on damages and denies enhanced damages (before a finding of willfulness)

In the District of Delaware, Judge Leonard P. Stark presiding, in Greatbatch LTD. v. AVX Corporation,[1] case no. 13-723-LPS (March 30, 2018), granted defendants’ motion to set aside the damages verdict and ordered a new trial on damages, in part because the lump sum award could not be adjusted in light of the second jury’s verdict of noninfringement of certain claims.  The Court also denied plaintiff’s request for enhanced damages for willfulness because the Read factors weighed against enhancement.  Because the Court had already been through two trials and seen all the evidence, it made the decision on enhancement prior to a jury finding of willfulness.   

5Apr/18Off

E.D. Tex. Denies Motion to Exclude Damages Testimony of Non-Infringing Alternatives in Expert’s Reasonable Royalty Calculation

In the Eastern District of Texas, Judge Roy S. Payne presiding, in Salazar v. HTC Corporation, 2:16-CV-01096-JRG-RSP (E.D. Tex. Mar. 28, 2018) the court denied Mr. Salazar’s motion to exclude HTC’s damages expert’s opinions related to non-infringing alternatives because the expert’s opinion relates only to a reasonable-royalty calculation, which does not require assessment of non-infringing alternatives, and even if it did, Salazar lacked evidence that the products in question were not acceptable non-infringing alternatives. 

21Mar/18Off

S.D. Fla. Excludes evidence of pre-litigation negotiations and allows evidence of prior litigations and hypothetical negotiations

The Southern District of Florida, Judge Kevin Michael Moore presiding, in Prisua Engineering Corp v. Samsung Electronics Co., Ltd., Civil Action 16-cv-21761-KMM (S.D. Fla. Feb. 13, 2017), issued a pre-trial order regarding reasonable royalty rate evidence: (i) excluding evidence of a licensing fee to the extent it was obtained from pre-litigation negotiations; (ii)  excluding evidence of Samsung’s net worth; and (iii) allowing evidence of Samsung’s prior litigation as a basis for calculating a reasonable royalty.  The Court also denied the parties’ Daubert motions:  holding (i) Priusa’s expert’s consideration of pre-suit licensing negotiations was proper; (ii) Priusa’s challenge to “post-hypothetical evidence” went to weight not admissibility; and (iii) Samsung’s expert’s consideration of lump-sum licensing agreements was proper even though Prisua was not seeking a lump sum.

21Feb/18Off

EDVA refuses to strike evidence of prior negotiations and cross-licensing

The Eastern District of Virginia, Judge Leonie Brinkema presiding, in Amdocs (Israel) Limited v. Openet Telecom, Inc., Civil Action 1:10-cv-910 (LMB/JFA) (E.D.VA. Feb. 14, 2018) denied Amdocs’s motions in limine.  The court denied both motions, finding the negotiation and cross-licensing evidence does not violate any rules of evidence and may be useful to the jury in determining a potential royalty.

16Feb/18Off

DDel holds that determining the royalty base is a relevance issue, not Daubert

The District of Delaware, Judge Richard G. Andrews presiding, in D&M Holdings, Inc.[1] v. Sonos, Inc., Civil Action 16-141-RGA (D. Del. Feb. 6, 2018) denied Plaintiffs’ motion to strike opinions of Sonos’ damages expert Michael Tate “on what the royalty base should be,” viewing the issue raised by Plaintiffs’ “as a relevance issue,” not “a Daubert issue.”

Plaintiffs argued that “Mr. Tate bases his opinions on his own conclusions about which of Defendant’s products are infringing.”  The court points out that Mr. Tate is not a technical expert, but a damages expert.  “He will not be allowed to render opinions at trial on which products infringe and which do not. … In particular, if Defendant’s technical expert testifies that there can be no infringement unless there are at least four of Defendant’s products, Mr. Tate may have a basis for his calculation of a royalty base based on that assumption.”  The court noted that the issue was not a Daubert issue, but one of relevance to be addressed, “as necessary, at trial.”


[1] Plaintiffs include D&M Holdings Inc. d/b/a The D&M Group and D&M Holdings US Inc.

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