DDE excludes settlement agreements; allows licenses as a “check”; addresses apportionment of accused products & services
The District of Delaware, in ART+Com Innovation GMBH v. Google Inc., Case No. 14-217-RGA (Judge Richard G. Andrews) (April 28, 2016), considered several motions related to royalty calculations. In a previous blog post, we addressed the motion for reconsideration of the 13% apportionment issue addressed below. This post covers the earlier order addressing that issue plus others.
Plaintiff ART+Com Innovation (“ACI”) challenged the reliance of Google’s expert Reed on seven licenses as a "check" on his reasonable royalty analysis. Five of these licenses were settlement agreements. The court excluded these (except as to their lump-sum nature) because they were products of litigation and not economically comparable. The other two licenses were the product of licensing negotiations. ACI disputed that these licenses were technologically comparable. The court allowed these licenses because Reed acknowledged the differences, and his analysis was consonant with using the licenses as a "check" against his reasonable royalty calculations. The jury could then weigh the evidence for itself.
The Southern District of Florida, in Arctic Cat Inc. v. Bombardier Recreational Producs, Inc., Case No. 0-14-cv-62369 (May 3, 2016) (Judge Beth Bloom), addressed motions to strike and summary judgment. Arctic Cat (patentee) filed a Daubert motion against defendant BRP’s expert, Dr. Keith Ugone. Arctic Cat contended that Dr. Ugone’s methodology was a “black box” and that his use of Arctic Cat’s licensing proposals as an indicator of value was impermissible. Slip op. at 9. The court denied this motion—on the “black box” issue, stating that Dr. Ugone’s methodology was “based on specific evidence, and his report clearly explains each step in his methodology.” Id.
EDTX denies Daubert motions involving apportionment, entire market value rule, license agreements, and patent valuations
The Eastern District of Texas, in Core Wireless Licensing SARL v. LG Electronics, Inc. et al, Case No. 2-14-cv-00911 (Judge Payne) (March 19, 2016), addressed motions filed by both parties seeking to exclude the other party’s damages expert’s opinions and testimony. LG, the alleged infringer, filed a motion to exclude the opinions of Core’s damages expert, Dr. Stephen Magee, on Daubert and untimeliness grounds. Similarly, Core, the patent owner, sought to exclude the opinions of LG’s damages expert, Dr. Thomas Vander Veen, on the same grounds. The court concluded that both experts’ opinions were reliable under FRE 702, and thus denied both parties’ Daubert motions. The court also concluded that the parties’ late disclosures were harmless and denied the parties’ motions to exclude the adverse party’s supplemental report for untimeliness.
The District of Delaware, in M2M Sols. LLC v. Enfora, Inc., Case No. 12-32-RGA (Judge Andrews) (March 9, 2016), considered, in part, plaintiff's Daubert motion and defendants' summary judgment motion (MSJ) on damages issues. The court granted plaintiff's Daubert motion, and granted in-part and denied in part defendants' MSJ.
District of Delaware allows damages experts to rely on distributor agreements, cross licenses and collaboration agreements as relevant comparable agreements
The District of Delaware, in Amgen Inc. et al. v. Sanofi, et al., 14-1317 (Judge Robinson) (February 18, 2016), considered the parties’ respective Daubert motions relating to the damages experts. Both experts agreed that there were no comparable bare license agreements. (slip op. at 5). In an effort to base their opinions on “some modicum of real world data,” Plaintiff’s expert relied on distributor fees as comparable, while Defendant’s expert relied on cross-license agreements and collaboration agreements as comparable. (Id.) The Court determined that both experts “adequately explained in their reports the relevance of their respective data vis a vis the various Georgia-Pacific factors.” (Id.) The Court, however, excluded from Defendant’s expert’s report an acquisition agreement and a settlement agreement because they were “business arrangements . . . too far afield from a bare patent license to be relevant comparables.” (Id.)
The Middle District of Florida, in StoneEagle Services, Inc. v. Pay-Plus Solutions, Inc., Case No. 8:13-cv-02240 (Judge Hernandez) (June 19, 2015), allowed the plaintiff’s damages expert (Weston Anson) to offer a theory based on the “market approach” and him to testify on the technical comparability of an allegedly comparable license agreement. The court reasoned that the defendants could challenge the market approach and the expert’s qualifications on cross examination.
On January 29, two opinions from two jurisdictions denied motions to exclude reference to settlement agreements. In the NDCA, in Open Text S.A. v Box, Inc., Case No. 13-cv-04910-JD,Judge Donato denied a motion by plaintiff to exclude defendant’s expert’s opinions regarding four settlement agreements the defendant’s expert opined were comparable. In a nutshell, plaintiff argued that the agreements were depressed in value because they were settlements, but the Court disagreed, and held it was subject matter for cross-examination: “The differences between the Box licenses and the hypothetical negotiation that Open Text points to (like the timing of the licenses, or the fact that the patent office had issued a non-final rejection of the licensed claims in one of the licenses) would be easily understandable to a jury.”