Patent Damages
21May/19Off

D. Neb. denies JMOL, finds delay in filing suit irrelevant to damages

In Exmark Mfg. Co. v. Briggs & Stratton Corp., Case No. 8:10CV187 (D. Neb. April 15, 2019), Judge Joseph F. Bataillon denied Briggs’ JMOL motion or in the alternative for new trial or remittitur. These were post-trial motions after a retrial on damages, in which the jury awarded damages to Exmark, which occurred after remand from the Federal Circuit—the appellate court had affirmed in part and reversed in part and remanded the case to the district court to retry damages. Exmark Mfg. Co. v. Briggs & Stratton, 879 F.3d 1332, 1348-54 (Fed. Cir. 2018). The Federal Circuit found error in the court’s denial of Briggs’ motion for new trial and remanded for a new trial on damages. According to the district court’s order addressed here, the Federal Circuit “found no error in the Court’s allowing Exmark to apportion the value of the patented improvement and conventional components of the multi-component product through the royalty base [sic, rate] rather than the royalty rate [sic, base] and approved Exmark’s use of the accused lawn mower sales to as the royalty base. Id. at 1348-49.” Slip op. at 1. The district court further observed that the Federal Circuit “found Exmark’s damages expert Melissa Bennis’s opinion was inadmissible ‘as it failed to adequately tie the expert’s proposed reasonable royalty rate to the facts of the case,’ stating that the expert ‘plucked the 5% royalty rate out of nowhere.’ Id. at 1350-51.” Slip op. at 1-2.

5Apr/18Off

E.D. Tex. Denies Motion to Exclude Damages Testimony of Non-Infringing Alternatives in Expert’s Reasonable Royalty Calculation

In the Eastern District of Texas, Judge Roy S. Payne presiding, in Salazar v. HTC Corporation, 2:16-CV-01096-JRG-RSP (E.D. Tex. Mar. 28, 2018) the court denied Mr. Salazar’s motion to exclude HTC’s damages expert’s opinions related to non-infringing alternatives because the expert’s opinion relates only to a reasonable-royalty calculation, which does not require assessment of non-infringing alternatives, and even if it did, Salazar lacked evidence that the products in question were not acceptable non-infringing alternatives. 

15Feb/18Off

CAFC grants new trial – Royalty base can be total sales, but the royalty rate must be properly apportioned

The United States Court of Appeals for the Federal Circuit, in Exmark Manuf. Co. Inc. v. Briggs & Stratton Power Prods. Grp, LLC, 879 F.3d 1332 (Fed. Cir. Jan. 2018) on appeal from the District of Nebraska, before Judges Wallach, Chen, and Stoll, with Judge Stoll writing the opinion, issued an order regarding apportionment, vacating the jury’s $24,280,330 compensatory damages verdict, which had been doubled upon a finding of enhanced damages for willful infringement.  The court held “that the district court erred in denying a new trial on damages” and “abused its discretion by limiting the evidence relevant to damages to prior art that had been commercialized.”  The court held that it was not wrong for the expert to use the royalty base as the sales price of the entire mower, but the opinion was fatally flawed because it did not properly tie the royalty rate to the facts of the case, “plucking the 5% rate out of nowhere.”

4Dec/17Off

Blue Gentian, LLC v. Tristar Prods., Inc. (1:13-cv-1758 NLH/AMD) D.N.J (J. Noel L. Hillman)

The District of New Jersey, Judge Noel Hillman presiding, in Blue Gentian, LLC v. Tristar Prods., Inc.,[1] Civil Action 1:13-cv-1758 NLH/AMD (D.N.J. Nov. 14, 2017), issued an order concerning the relevance of a settlement agreement in determining a reasonable royalty.  Judge Hillman affirmed the Magistrate Judge’s ruling that the settlement agreement was relevant to the calculation of a reasonable royalty and must be produced. 

18Oct/17Off

D Minn addresses inexorable flow, non-infringing alternatives, EMVR, apportionment

The District of Minnesota, Judge Ericksen presiding, in Select Comfort Corp. v. Tempur Sealy Int’l, Inc., Civil Action 14-cv-245 JNE/TNL (D. Minn. June 23, 2017), issued an order concerning lost profits and reasonable royalty related to a patented air mattress valve. Judge Ericksen excluded Select Comfort’s expert’s testimony on lost profits and reasonable royalty but allowed Tempur Sealy’s expert’s testimony on noninfringing alternatives.  Judge Ericksen also granted Tempur Sealy’s motion for summary judgment on lost profits, but denied summary judgment on reasonable royalty.

18Oct/17Off

EDTX excludes evidence of party’s actual behavior at hypothetical negotiation

The Eastern District of Texas, Sherman Division, in Evicam Int’l, Inc. v. Enforcement Video, LLC d/b/a Watchguard Video, Civil Action 4:16-CV-105, Judge Mazzant ruled on a motion in limine related to the hypothetical negotiation (along with other issues).  Evicam moved to “exclude any argument, evidence, or testimony regarding how WatchGuard would have behaved at a hypothetical negotiation.”  Slip Op. at 1.  The court noted that a “reasonable royalty can be calculated from an established royalty, profit projections, or a hypothetical negotiation based on the factors in Georgia-Pacific.”  Id. (citing Wordtech Sys. V. Integrated Networks, 609 F.3d 1308, 1319 (Fed. Cir. 2010)).

30Dec/16Off

EDTX denies exclusion of settlement license and “real estate” apportionment

The Eastern District of Texas, in ZiiLabs, Inc. v. Samsung Electronics Co., (Judge Roy S. Payne) (December 4, 2015), granted in part and denied in part defendant’s motion to exclude various opinions from plaintiff’s damages expert, Robert Mills.

Grounds:

  • Defendant sought to exclude expert’s reliance on litigation settlement license covering 100 patents as not economically comparable and not the most reliable license in the record.
  • Defendants sought to exclude expert’s reliance on licensing negotiations that never resulted in executed licenses, and were not technically comparable.
  • Defendant sought to exclude apportionment based on surface area of accused element on the chip.
  • Defendants sought to exclude expert’s testimony on several economic theories
6Oct/16Off

EDTX denies exclusion of settlement license and “real estate” apportionment

The Eastern District of Texas, in ZiiLabs, Inc. v. Samsung Electronics Co., (Judge Roy S. Payne) (December 4, 2015), granted in part and denied in part defendant’s motion to exclude various opinions from plaintiff’s damages expert, Robert Mills.

4Apr/16Off

EDTX denies Daubert motion re plaintiff’s apportionment and analytical approaches

The Eastern District of Texas, in Metaswitch Networks Ltd. v. Genband US LLC, Case No. 2:14-cv-00744 (Judge Payne) (March 5, 2016), addressed defendant Genband's Daubert motion seeking to strike plaintiff's expert Mr. Sims’ opinions relating to apportionment, royalty base calculation, and the application of the "analytical approach."  The court concluded that Mr. Sims' opinions were reliable under FRE 702 and thus, denied Genband's Daubert motion.

 

1Mar/16Off

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.)