Friday, April 30, 2010

ResQNet Distinguished -- Evidence of Litigation-Induced Licenses Excluded

Plaintiff's motion in limine concerning settlement licenses for patents other than the patents-in-suit was granted in part and the court rejected defendant's argument that, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010) "changed the rules for admissibility of settlement agreements." "In ResQNet . . . the court’s comment that a litigation license was 'the most reliable license' was made in the context of evaluating an expert’s reliance on allegedly comparable licenses under the first Georgia-Pacific factor. That 'factor considers only past and present licenses to the actual patent and the actual claims in litigation' . . . Here, Plaintiff’s expert is utilizing purportedly comparable licenses based on the twelfth Georgia-Pacific factor, i.e., consideration of '[t]he portion of the profit or of the selling price that may be customary in the particular business or in comparable businesses to allow for the use of the invention or analogous inventions.' Finally, the Court notes the litigation licenses in ResQNet did not raise the concern of jury confusion because they had been admitted during a bench trial, whereas the parties here will try this case to a jury. . . . ResQNet is distinguishable and does not compel the admission of evidence and testimony relating to settlement agreements in prior litigation. . . . Parties enter into settlements for a number of reasons 'other than the value of the improvements patented'. . . Thus, admission of these agreements would 'invite a "minitrial" on similarities and differences in the facts' between this case and the settled claims. Such a diversion would cause unfair prejudice, confuse the issues, and waste time."

Fenner Investments, Ltd. V. Hewlett-Packard Company, 6-08-cv-00273 (TXED April 28, 2010, Memorandum & Opinion) (Love, M.J.)

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