Patent Damages

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

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.


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.


CDCA excludes reasonable royalty testimony due to unreliable license analysis

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.


DUtah Uses Infringer's Profits to Compute Royalty; Comments on Obligation to Award Reasonable Royalty

On December 9, 2013, Judge Stewart of the District of Utah issued an order in Aqua Shield, Inc. v. Interpool Cover Team, Case No. 2:09-CV-13 TS (Doc. No. 178), granting in part and denying in part plaintiff’s Rule 59 motion to alter judgment.  The court held a bench trial on willfulness and damages and found that plaintiff was entitled to zero damages.  Plaintiff moved for relief from that decision, and the court granted the plaintiff’s motion to award reasonable royalty damages, which it based on the defendants’ net profit margin from the infringing sales.