Patent Damages
23Dec/16Off

DDE denies request to strike lost profits opinion re non-patented items; addresses test data admissibility

Posted by Chris Marchese

The District of Delaware, in Masimo Corp. v. Philips Elec. North Am. Corp., (Judge Leonard P. Stark) (October 31, 2016), addressed motions to strike opinions of several experts related to damages.  The experts in question were Michael Keeley (Finance), Joseph Dyro (Technical), Nitin Shah (Technical), Vijai Madisetti (Finance), and Michael Wagner (Finance).  The court granted in part and denied in part the motions.  The key motions are addressed below.

7Dec/16Off

Federal Circuit Opinion Asetek Danmark a/s v. CMI USA Inc. Cites Patent Damages Treatise

Posted by Chris Marchese

In a December 2nd opinion by the Federal Circuit, the court cited Patent Damages Law and Practice as a “leading commentary.” The comprehensive treatise was co-authored by Chris Marchese, one of the bloggers on this site, and has been cited in numerous district courts as well.

6Oct/16Off

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

Posted by Chris Marchese

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.

6Sep/16Off

D.Ariz excludes expert for not apportioning the rate, but OKs entire product as base

Posted by Chris Marchese

The District of Arizona, in GoDaddy.com LLC v. RPost Communications Limited, Case No. CV-14-00126-PHX-JAT (Judge James A. Teilborg) (May 10, 2016), excluded the entire report of Defendant’s damages expert, Gregory Smith, but allowed a do-over.

Plaintiff GoDaddy moved to exclude Smith’s testimony under FRE 702, asserting two grounds: (1) Smith inappropriately accounted for non-infringing features in his royalty rate analysis rather than apportioning the royalty base, and (2) because Smith used the entire revenue of the accused product as the royalty base, he necessarily applied the entire market value rule (“EMVR”) but failed to demonstrate that the patented features form the basis of consumer demand.  Defendant RPost denied that Smith applied the EMVR, arguing that the accused products were the smallest saleable unit (“SSU”), and the Federal Circuit has never defined a particular formula for apportioning damages for SSUs.  Smith used the operating margin of the accused products and apportioned the royalty rate instead of the royalty base.

25Aug/16Off

DDE excludes settlement agreements; allows licenses as a “check”; addresses apportionment of accused products & services

Posted by Chris Marchese

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.

19Aug/16Off

SDFL allows opinion based in part on plaintiff’s licensing proposals (or offers)

Posted by Chris Marchese

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.

17Aug/16Off

EDTX questions viability of “inexorable flow” doctrine of lost profits

Posted by Chris Marchese

The Eastern District of Texas, in Mars, Inc. v. TruRX LLC, No. 6-13-cv-00526 (E.D. Tex. March 14, 2016) (Mag. Judge Nicole Mitchell), questioned whether the “inexorable flow” doctrine of lost profits is viable.  The Federal Circuit had previously addressed inexorable flow in an earlier litigation involving Mars.  Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359, 1365 (Fed. Cir. 2008) (refusing to award “lost profits” to the patent holder when its subsidiary corporation lost sales due to infringement, but recognizing the possibility of lost profits if the parent-patent holder can prove that the subsidiary’s lost profits inexorably flow up to the parent), mandate recalled and amended on other grounds, 557 F.3d 1377 (Fed. Cir. 2009).

15Aug/16Off

NDCA excludes expert testimony for failure to apportion (including addressing claim scope argument)

Posted by Chris Marchese

The Northern District of California, in Nortek Air Solutions, LLC v. Energy Lab Corp., No. 14-cv-02919-BLE (July 15, 2016) (Judge Beth Labson Freeman), granted Energy Labs’ Daubert motion to exclude testimony of Nortek’s damages expert, Dr. Stephen Prowse, regarding reasonable royalty damages.  The motion included three reasons; we address the first one here:  “Dr. Prowse’s royalty analysis fails to apportion the value of the allegedly patented features from the unpatented features in the accused products ….”  Slip op. at 8.  The accused products were air handling systems.

In response to the motion, Nortek argued that Dr. Prowse had properly relied on the value of the accused air handling system as a whole rather than a smaller component for several reasons:  (1) “because the asserted claims are directed to the entire air handling unit rather than any individual features,” and (2) because “the air handling unit is the smallest saleable unit and thus an appropriate royalty base.”  Id.

11Aug/16Off

WDWI rejects “inexorable flow” doctrine of lost profits

Posted by Chris Marchese

The Western District of Wisconsin, in Kahr v. Cole, Case No. 13-C-1005 (Judge Griesbach) (July 28, 2016), granted defendant’s motion in limine to exclude evidence of plaintiff’s claimed lost profits.  Plaintiff contended that it should be allowed to introduce evidence at trial of lost profits under the “inexorable flow” doctrine—in other words, plaintiff, who did not manufacture the patented product, had a licensee who did, and that the licensee’s losses from the alleged infringement inexorably flowed to the patent owner-licensor.  The court cited the fact that the plaintiff did not have an exclusive license with the manufacturer (DDM).  The Kahr court cited two cases, in which, according to Kahr, the courts had indicated that a non-manufacturing patent owner-plaintiff can recover lost profits if the patent owner has an exclusive license with the manufacturer.  Slip op. at 2 (citing Carver v. Velodyne Acoustics, Inc., 202 F. Supp. 2s 1147, 1149 (W.D. Wash. 2002), and Kalman v. Berlyn Corp., 914 F.2d 1473 (Fed. Cir. 1990)).  The Kahr court cited testimony from the plaintiff in which he testified that he could have licensed his patent to the defendant.  Slip op. at 2.

8Aug/16Off

D. Mass. denies SJ where settlement licensees failed to mark

Posted by Chris Marchese

The District of Massachusetts, in In re NeuroGrafix (‘360) Patent Litigation, Case No. 1-13-md-02432 (Judge Stearns) (August 1, 2016), denied defendants’ summary judgment motion to limit plaintiff’s damages for its licensees’ failure to mark.  The fact pattern is one that is relatively common when multiple defendants are sued under the same patents:  The plaintiff had settled with two manufacturers, and in the agreement gave a license to the manufacturers, but then failed to ensure that they marked the licensed MRI system with the patent number.  The court denied the motion, citing the following facts:  (1) “it is unclear to the court what, if any, products should have been market with the [patent],” (2) the licensees “expressly denied infringement in their respective settlement agreements,” and (3) the agreements did not “identify a specific set of licensed products.”  Elec. Order at 1.  “Finally, the court notes that obtaining a patent license after being sued is a common compromise undertaken to settle a claim and avoid expensive and uncertain litigation.  Because defendants have not met their burden of production in showing that there are licensed products practicing the patented technology that should be marked, their motion for summary judgment on this ground will be denied.”  Id.

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