Patent Damages

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.


District of Minnesota Orders Additional Expert Discovery and Sanctions Based on Information Not Produced During Discovery

The District of Minnesota, in Luminara Worldwide, LLC v. Liown Electronics Co. Ltd. et al., Case No. 14-3103 (Magistrate Judge Noel) (May 18, 2016), agreed that Plaintiff should have produced its manufacturing capacity data on which its damages expert relied for his lost profits analysis during discovery.  The Court allowed Defendants to take further discovery and supplement their expert report.  The Court declined to exclude the data because there was enough time before trial to complete the additional discovery.  The Court denied Defendants’ motion to strike the history of the technology at issue from the Plaintiff’s report, leaving it for cross-examination.

In this case, Defendants moved to strike Plaintiff’s expert report regarding damages because the damages expert presented theories based on evidence Plaintiff withheld during fact discovery. 


SDCA rules on Daubert motions related to both Lost Profits and Reasonable Royalty

In Area 55, Inc. v., Inc., Case No. 11-CV-00145-H-NLS, the Court issued an opinion on July 24, 2012 regarding pending Daubert motions relating to both lost profits and reasonable royalty.

The lost profits issue related to whether the Plaintiff’s expert had reached an appropriate conclusion regarding lack of acceptable non-infringing substitutes.  The Court noted that the Defendant was challenging the conclusion, not the methodology.  The argument was that there was insufficient basis to reach this conclusion, but the Plaintiff argued that there was sufficient basis, namely the expert’s discussions with the inventor.  The inventor had spoken to the expert about the various alternative products in the marketplace, and had explained why he (the inventor) believed each was inferior in comparison to the patented product.  The Court found no issue with this, noting “[a]n expert cannot be an expert in all fields, and it is reasonable to expect that experts will rely on the opinions of experts in other fields as background material for arriving at an opinion.”  Accordingly, the Court refused to exclude the testimony and invited the Defendant to vigorously cross-examine the expert on the issue of non-infringing substitutes.