Patent Damages

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.


NDTX affirms damages verdict; cites most favored licensee clause; limited infringement did not warrant a lower award

The Northern District of Texas, in Jean Melchior v. Hilite International, Inc., Case No. 3:11-CV-3094-M (Judge Barbara M. Lynn) (July 15, 2015), ruled on post-trial motions, including denying defendants motion for a new trial on damages.  The court held that the damages award was not excessive or against the great weight of the evidence.

Hilite’s arguments were effectively two-fold:  (1) that Melchior’s expert, Dr. Poindexter, had relied too heavily on Georgia-Pacific factor 1 and in particular on a license agreement between Melchior and Borg Warner; and (2) that Dr. Poindexter’s testimony failed to account for limited use of the patented invention in the infringing devices, in which the devices are only in the patented position for a fraction of a second.