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.
Plaintiff Douglas asked the court to exclude defendant’s expert Andrew Finger’s opinion and testimony concerning lost profits. Douglas’ first argument was that Finger had misapplied the first Panduit factor, asserting demand for the patented feature rather than the broader concept of demand for the patented product. Slip op. at 4-5 (citing DePuy Spine, 567 F.3d 1314, 1330 (Fed. Cir. 2009) (first Panduit factor asks only “whether demand existed for the ‘patented product’”)). Defendant Buyers countered that Finger was simply opining that Douglas had failed “the most basic legal requirement for proving lost profits: it has not proven the causal connection between the patented feature and consumer demand.” The court agreed with Douglas, holding that “Finger may not misstate the law and opine that lost profits analysis requires demand for the patented feature, not the product.” However, the court did reason, on the noninfringing alternatives Panduit factor, that “Finger is free … to disagree with [Douglas’ expert’s] market-share analysis and argue generally that Buyers and Douglas were competing in separate marketplaces and that, in the market in which Buyers was competing, the sales of Douglas’ patented product would not have replaced its sales.” Slip op. at 6.