Digital Reg of Texas, LLC v. Adobe Systems Incorporated, et al, 4-12-cv-01971 (CAND August 19, 2014, Order) (Wilken, J.)
Thursday, August 21, 2014
Patent Aggregator License Excluded from Evidence, Except to Provide Context for Other Licenses
The court granted in part defendant's motion in limine to exclude evidence of plaintiff's $8.5 million license of a patent-in-suit to a patent aggregator. "Because [the aggregator's] business model is unique, [defendant] argues [the] license is of limited relevance to [defendant's] hypothetical licensing posture and should be excluded. . . . Some of the license agreements [the expert] reviewed involved licensees . . . that already had a license to [a patent-in-suit] through their membership with [the patent aggregator]. These licensees would have contemplated the effect of their existing license and paid a lower rate to settle claims with [plaintiff]. Ignoring the [aggregator's license] would leave the jury with the mistaken impression that the license agreements included [that patent-in-suit]. . . . [Defendant] argues that even though the [aggregator] license is relevant, its $8.5 million figure will skew the jury’s perception of a reasonable royalty, causing unfair prejudice to [defendant]. Accordingly, [plaintiff] may describe the circumstances of the [aggregator] license, but not the actual amount."