Prior License Agreement and Internal Forecast Were Relevant to Type of License Resulting From Hypothetical Negotiation

The court denied plaintiff's motions in limine to exclude one of plaintiff's license agreements and an internal forecast estimating the value of a license for defendant's alleged infringement. "[Plaintiff] focuses its arguments on challenging the values set forth in the [license] and the 2006 forecast, as the figures of a lump sum of $200,000 offered to [the licensee] and its 2006 internal discussions concerning the potential of an annual fee of $2,000,000 are drastically less than their expert’s initial billion dollar opinion as to the value of the patents in this case. . . . The Court finds that the [license] and the 2006 forecast are highly probative of the type of license that [plaintiff] may have sought during those negotiations, i.e., a running royalty versus a lump-sum license. . . . [T]he challenged evidence is highly probative of whether [plaintiff] would have accepted a running royalty or opted for a lump sum during the negotiations."

Carnegie Mellon University v. Marvell Technology Group, Ltd., et. al., 2-09-cv-00290 (PAWD November 7, 2012, Order) (Fischer, J.).