Law of Nature May Serve as the Basis for Customer Demand Supporting Use of Entire Market Value Rule

The court denied defendant's motion in limine to exclude plaintiff's damages theories as violating the entire market value rule. "The main thrust of [defendant's] motion to exclude [plaintiff's] damages analysis under the entire market value rule is that the primary driving factor in the sales of [plaintiff's] temporal thermometers is the location for taking the temperature. [Defendant] contends that because that location merely reflects an unpatentable law of nature, the use of the EMVR is improper. This argument impermissibly borrows a partial analysis under section 101. . . . [U]ltimately all inventions utilize a law of nature (or abstract concept) on some level, and useful and novel applications of laws of nature are patentable. . . .To the extent that an application of a law of nature is patentable, there is no reason why that application cannot also be the primary driving factor in the sales of products embodying the claims. If it were otherwise, there could no patent protection for an important invention such as the solar panel because the driving factor in its success is that it relies on a law of nature - that is, the sun's energy."

Exergen Corporation v. Kaz USA, Inc., 1-13-cv-10628 (MAD January 7, 2016, Order) (Stearns, J.)