Patent Damages
14Feb/18Off

Damages opinion related to FRAND excluded due to lack of supporting evidence

The Eastern District of Texas, Tyler Division, Magistrate Judge K. Nicole Mitchell presiding, in Network-1 Techs., Inc. v. Alcatel-Lucent USA, Inc.,[1] Civil Action 6:11-cv-492-RWS-KNM (E.D.TX Sept. 21, 2017) granted-in-part Plaintiff’s motion to exclude certain opinions of Defendant Hewlett-Packard Company’s (“HP”) F/RAND licensing expert M. Ray Perryman.  The patent-at-issue relates to remotely powering access equipment over an Ethernet network, an act which is essential for practicing certain IEEE standards.  Under Rule 702 of the Federal Rules of Evidence, as well as the Daubert standard, the Court analyzed Plaintiff’s motion to exclude HP’s expert’s opinions on 1) royalty stacking; 2) applying definitions from an IEEE document to its patent policy; 3) patent hold-up; and 4) influence of the threat of an injunction on past licenses.  Due to a lack of supporting evidence, the Court excluded Perryman’s opinions, with the exception that Perryman would be allowed to apply the definitions from an IEEE document to Plaintiff’s patent policy.

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)).

18Oct/17Off

CAFC denies rehearing en banc in Mentor Graphics lost profits case

The Federal Circuit, in Mentor Graphics Corp. v. EVE-USA, Inc. (also including Synopsys, Inc. as a defendant), Nos. 2015-1470, 2015-1554, 2015-1556 (Fed. Cir. September 1, 2017) (per curiam), denied EVE-USA’s petition for a rehearing en banc on issues of apportionment and lost profits damages.  Judge Stoll, with whom Judges Newman, Moore (who issued the underlying opinion), O’Malley, Neyna, and Wallach joined, denied the rehearing.  Judge Dyk, with whom Judge Hughes joined, dissented from the denial.  2017 WL 3806141 at *1.

30Mar/17Off

DDE cites need for numerical calculation for apportionment, and cites non-technology factors and use patterns as contributing to value

The District of Delaware, Judge Andrews presiding, in Comcast IP Holdings I LLC v. Sprint Communications Co., Civil Action No. 12-205-RGA (D. Del. Sept. 29, 2014), issued a brief order concerning apportionment.  Judge Andrews was faced with a motion in limine seeking to exclude profits and and/or revenues relating to the accused products as violating the entire market value rule (EMVR).  The court decided that the briefing was not “enough for a good decision, and asked for further submissions including a proffer of the Comcast expert’s testimony.”  Slip op. at 1.  A proffer was thus requested.

24Mar/17Off

CAFC issues detailed opinion on apportionment and lost profits; apportionment not required when Panduit test is met

The Federal Circuit, in Mentor Graphics Corp. v. Eve-USA, Inc. (also including Synopsys, Inc. as a defendant), Nos. 2015-1470, 2015-1554, 2015-1556 (Fed. Cir. March 16, 2017) (Judge Moore authoring), issued an opinion addressing apportionment and lost profits damages.  The case addressed an open question that has gone both ways in district courts:  whether lost profits requires further apportionment on top of the Panduit test.  In other words, if a patentee is able to prove-up lost profits under Panduit, must the patentee apportion those lost profits to determine the incremental value of the patented feature vis-à-vis any unpatented features?  The court answered the question in the negative, but reserved judgment on whether the same outcome would attach in all lost profits cases, particularly where the patentee relied on a theory other than Panduit to prove lost profits.  Because the case is replete with meaningful language, the following summary consists mainly of direct quotes.

23Mar/17Off

DDE holds that pleading compliance with the marking statute is not required

The District of Delaware in Mobile Telecommunications Tech., LLC v. Ruckus Wireless, Inc., Case No. 16-md-02722-LPS-CJB (Judge Stark), addressed a motion to dismiss under Rule 12(b)(6).  Defendants moved to dismiss on the ground that plaintiff’s complaint failed to plead compliance with the marking statute, 35 U.S.C. Section 287.  More specifically, the defendant argued that plaintiff’s complaint should be dismissed with respect to one of the patents because it failed to plead compliance with Section 287 and the patent had expired before the complaint was filed.

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14Mar/17Off

CAFC issues detailed opinion on comparable licenses, addresses cost savings approach

The Federal Circuit, in Prism Tech. LLC v. Sprint Spectrum L.P., Nos. 2016-1456, 2016-1457 (Fed. Cir. March 6, 2017) (Judge Taranto authoring), issued an opinion addressing comparable license agreements and the cost savings approach for reasonable royalties.  We summarize the opinion here.  The section on comparable license agreements is lengthy and worth reading in full.

6Feb/17Off

NDCA allows evidence of capped royalty/book of wisdom and monetarily unquantified noninfringing alternatives

The Northern District of California, in France Telecom S.A. v. Marvell Semiconductor Inc., (Judge William H. Orrick) (August 28, 2014), addressed motions in limine concerning a variety of issues, including damages issues.  We address a couple damages issues here.