In November 2011, Judge Alsup appointed a damages expert under FRCP 706 because the parties' widely divergent views of damages (Oracle valued damages in the $1.4 billion to $6.1 billion range while Google calculated damages at between $0 and $100 million) required "an independent economic expert . . . [to] aid the jury." Having made the appointment, Judge Alsup recently granted in part defendant's motion to exclude portions of the expert's report and testimony because the expert did not tie valuation of a hypothetical license to the IP rights asserted in the litigation. "This Court’s prior order held that the hypothetical license must be 'tailored to the amount and type of infringement that actually occurred' and that 'the reasonable royalty must compensate for the infringing features, but not for non-infringing ones'. . . . [The appointed expert's] second and third explanations for equating the value of the IP in suit to the entire Java ME IP portfolio are inappropriate for the hypothetical negotiation scenario. Significantly, [the expert] fails to take into account that at the end of the hypothetical negotiation, [defendant] gets a license to the IP in suit, nothing more. . . . If [defendant] was liable for the value of the entire IP portfolio each time a single IP in that portfolio was asserted in an infringement action, then [plaintiff] would be overcompensated."
Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND April 10, 2012, Order) (Alsup, J.)