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."

Digital Reg of Texas, LLC v. Adobe Systems Incorporated, et al, 4-12-cv-01971 (CAND August 19, 2014, Order) (Wilken, J.)

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