Patent Damages
28May/14Off

EDTX excludes opinions on non-comparable licenses

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.

The plaintiff sought to exclude reliance by defendant’s expert on six license agreements, arguing that there was no indication of how oft-used the technology in those agreements was used by the defendant.  The Court disagreed, indicating that under Lucent, there are sound reasons why parties might not tie a license amount to usage, and that the licenses would nonetheless be potentially probative to determining damages in this case.  The plaintiff also sought to exclude reliance on one particular agreement because, on its face, the license related to non-comparable technology.  The Court agreed, and found that the defendant’s damages expert was the only person to provide a technical nexus between that license and the accused technology, and that the damages expert was not qualified under Rule 702 to provide such an opinion, so testimony as to that license was excluded.

The defendant, meanwhile, moved to exclude testimony as to “revenue sharing agreements,” which relate generally to how much the defendant shared with third-party “app” developers for revenue from the apps and related advertisements.  The plaintiff argued that these were relevant to determining how the defendant generally “splits the benefit of the invention with partners,” but the Court disagreed, finding that any potential nexus was too far afield: “What Google shares with Rovio for Angry Bird downloads or for advertisements on partner websites has no bearing at all on predicting how much of the incremental profits Google would share with TracBeam for a bare, non-exclusive license covering part of a location platform that Google develops itself.”  The Court excluded testimony to these agreements, and further expounded in a footnote that the Court had previously struck these same agreements in a prior case, and wondering aloud why the plaintiff had not simply removed that analysis in this case rather than raise the same issue again.

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