Patent Damages
21Mar/18Off

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

Posted by Liz Ranks

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.

16Feb/18Off

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

Posted by Liz Ranks

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.

Filed under: Daubert No Comments
31May/16Off

District of Delaware allows 13% apportionment methodology

The District of Delaware, in ART+COM InnovationPool GMBH v. Google Inc., (Judge Dyk) (May 16, 2016), denied Defendant’s motion for reconsideration, allowing Plaintiff’s apportionment theory to proceed to the jury.

Plaintiff’s expert, James Nawrocki, calculated per-session damages. Defendant argued that Mr. Nawrocki’s theory included improper categories of revenue in the royalty base and an unsupportable 13% apportionment. (slip op. at 5). With regard to the categories of revenue, Defendant argued that Mr. Nawrocki should not have started with the revenue from the entire Geo Product group. The Court said:

20Apr/16Off

EDTX denies Daubert motions involving apportionment, entire market value rule, license agreements, and patent valuations

Posted by Chris Marchese

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.

6May/15Off

DDE addresses various Daubert issues including EMVR and apportionment

Posted by Chris Marchese

The District of Delaware, in Helios Software, LLC v. Awareness Tech., Inc., Civil Action No. 11:1259LPS (Judge Stark) (April 13, 2015), addressed a variety of motions to exclude damages testimony.  Plaintiff and defendant each moved to dismiss its counterpart’s damages expert on various grounds.  The most interesting issues are addressed below.

2Jul/14Off

CDCA excludes reasonable royalty testimony due to unreliable license analysis

Posted by Chris Marchese

On April 21, 2014, Judge Guilford of the Central District of California issued an opinion on Daubert motions.  The case is Universal Electronics, Inc. v. Universal Remote Control, Inc., Case No. SA-CV 12-00329 AG (JPRx).  The parties had filed several motions to exclude evidence on a wide array of issues.  One motion of interest relates to plaintiff’s damages expert’s opinions on reasonable royalty.  The expert, Frank Bernatowicz, had reached a “baseline” royalty rate of 3% using allegedly comparable licenses as a benchmark.  Defendant moved to exclude the royalty opinions contending that Bernatowicz’s license analysis was flawed.  The court agreed and excluded Bernatowicz’s testimony on reasonable royalty damages.

30Jun/14Off

EDTX excludes expert who attempted to apportion the royalty base by claim elements; allows do-over

Posted by Chris Marchese

On June 21, 2014, Judge Davis of the Eastern District of Texas issued an opinion on a Daubert motion.  The case is Thinkoptics, Inc. v. Nintendo of America, Inc., Case No. 6:11-CV-455.  Thinkoptics moved to exclude the testimony of Nintento’s damages expert, Professor Daniel J. Slottje.  The court granted the motion, but also allowed a do-over. 

26Jun/14Off

NDCA does not require “further” apportionment of smallest saleable unit

Posted by Justin Barnes

On June 20, 2014, Judge Rogers of the Northern District of California issued a Daubert opinion in MediaTek Inc. v. Freescale Semiconductor, Inc., Case No. 11-cv-5341 YGR, addressing numerous grounds raised by the Defendant.  The discussion on royalty rate and market share were very short and not particularly noteworthy, but the royalty base discussion addressed an issue that is of considerable importance and relevance to other cases.   

4Jun/14Off

MDPA approves smallest salable unit as base; allows lump sum agreements as evidence of running royalty

Posted by Chris Marchese

On May 27, 2014, Judge Caldwell of the Middle District of Pennsylvania issued an opinion on a motion for reconsideration of an earlier Daubert opinion.  The case is Kimberly-Clark Worldwide, Inc. v. First Quality Baby Products, LLC, Civil No. 1:09-CV-1685.  The court addressed defendants’ motion to exclude opinions by plaintiff’s damages expert, Julie L. Davis, on two issues:  (1) whether Ms. Davis’ use of the smallest salable patent-practicing unit (“SSU”) as the royalty base violated the entire market value rule (“EMVR”); and (2) whether Ms. Davis’ use of lump sum agreements as evidence of a running royalty rate should be allowed.  The court ruled in plaintiff’s favor on both issues.

28May/14Off

EDTX excludes opinions on non-comparable licenses

Posted by Justin Barnes

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.