Damages Expert's Apportionment of Damages on Patent-by-Patent Basis Precludes Later Apportionment on Claim-by-Claim Basis

The court tentatively granted defendant's motion to preclude plaintiff's damages expert from apportioning a patent-in-suit’s value on a claim-by-claim basis where the expert conducted a patent-by-patent analysis. "The prior order made clear that a claim-by-claim analysis of damages was preferable: 'determining the date of first infringement requires a claim-by-claim analysis'. . . . [T]his is necessary to get the correct timeline to calculate past damages. Second, some of the asserted claims might be less valuable, or easier to design around. . . . Third, this is necessary to calculate future damages if [defendant] designs around some claims but not others. . . . Fourth, the jury may find liability on some claims but not others. . . . And fifth, some claims may be rejected by the USPTO on reexamination. . . . [Plaintiff] does not deny that [it's damages expert] treats each patent as an indivisible whole. Therefore, [the expert] is tentatively precluded from apportioning an asserted patent’s value among its claims at trial. Furthermore, this tentative order holds that the jury will be instructed that if they find any asserted claim not infringed, they may assume that the noninfringed claim represented the full value of that patent."

Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND December 6, 2011, Order) (Alsup, J.)