NDCA issues order on early damages disclosure
On March 8, 2013, the NDCA issued an opinion in Eon Corp. IP Holding LLC v. Sensus USA Inc., No. C-12-01011 EMC (EDL) (Doc. No. 657), concerning defendants’ request that plaintiff provide early disclosure of its damages contentions. One of the court’s first comments is telling: “Because the question of early damages disclosure in patent cases is a recurring and important one, the Court issues this order to explain its reasoning and guidance to the parties.” Slip op at 1.
CDCA grants SJ of no pre-assignment damages based on silent assignment.
On May 1, 2013, the Central District of California in Nano-Second Tech. Co. v. Dynaflex Int’l granted summary judgment on the issue of pre-assignment damages. The plaintiff had purchased the patent in September 2010, but the assignment was silent on whether, as part of the purchase and assignment, the prior owner transferred the right to collect past damages. The Court cited the Federal Circuit’s Arachnid case and the Supreme Court’s Moore v Marsh for the proposition that an assignment must expressly grant the assignee the right to collect damages for past infringement.
DNJ grants SJ of no damages and no injunction due to failure of proof
On April 19, 2013, the DNJ issued an opinion in Unicom Monitoring, LLC v. Cencom, Inc.-c1495cb07dc1, Civil Action No. 06-1166 (MLC) (Doc. No. 134). The court addressed defendant’s motion for summary judgment of no damages due to plaintiff’s failure of proof and for no injunction due to lack of damages. The court granted the motion.
In the pretrial order, plaintiff Unicom contended it would prove entitlement to reasonable royalty damages at a rate of 30% of the total revenue of Cencom’s sales of accused products. In the pretrial order, Unicom indicated it would call two fact witnesses who would testify on matters related to damages, but the pretrial order contained virtually no detail on their proposed testimony. Unicom did not identify a damages expert or submit a damages report, and it did not produce any licenses for the patent-in-suit or for comparable technology.
NDCA finds evidence of related company’s potential lost profits relevant to hypo negotiation
On April 2, 2013, the NDCA issued an opinion in Accessories Marketing, Inc. v. TEK Corporation, Case No. C 11-4773 PSG (Doc. No. 183), addressing TEK’s MIL concerning damages. One of the issues concerned the impact of lost sales by a related company on the hypothetical negotiation.
Federal Circuit addresses damages issues and worldwide sales
On March 26, the Federal Circuit issued its opinion in Power Integrations v. Fairchild Semiconductor Int’l, Inc., No. 11-1218, addressing damages issues and worldwide sales. The case is linked here.
DDEL addresses EMVR vs. smallest salable unit and comparability of portfolio licenses
The District of Delaware in AVM Tech., LLC v. Intel Corp., Civil Action No. 10-610-RGA (D. Del. January 4, 2013), ruled on Intel’s Daubert motion to exclude the testimony of AVM’s damages expert, Larry Evans. Judge Andrews considered two issues: 1) the intersection of the entire market value rule (EMVR) and smallest salable unit, and 2) comparability of portfolio license agreements.
NDTX continues trial to allow plaintiff’s damages expert to address issues in damages theory
The Northern District of Texas in Axcess Int’l, Inc. v. Savi Tech., Inc., Case No. 3:10-cv-1033-F (N.D. Tex. January 25, 2013), ruled on defendant’s motion to exclude plaintiff’s damages expert, Dr. Scott D. Hakala, from testifying on damages. The court held a pretrial hearing and afterward considered issues related to Dr. Hakala’s expert report. Axcess submitted a supplemental document in an attempt address the court’s concern that Dr. Hakala had inadequately apportioned the royalty base to account for the smallest salable patent practicing unit and failed to give a reliable assessment of the royalty rate. The court continued the trial to permit Axcess an opportunity to address the court’s concerns and in the opinion outlined the additional requirements for Dr. Hakala’s new expert report.