Products Covered by Patents Other Than The Currently Asserted Patent May be Considered Non-Infringing Substitutes

The court denied plaintiff's motion to strike the updated report of defendant's damages expert regarding his opinion that five defendant phones not subject to the upcoming retrial were noninfringing alternatives. "[The five phones at issue] were all accused of infringing the [one] patent at the [original] trial. At the [original] trial, the jury found that all five phones did not infringe [that] patent but did infringe other [plaintiff] patents. . . . The Federal Circuit did not hold, as [plaintiff] urges the Court to do in the instant case, that products covered by patents other than the one for which damages are sought cannot, as a matter of law, be evidence of available non-infringing alternatives. . . . Because an acceptable non-infringing alternative need not be a product that was actually on the market at the time of infringement, the fact that the [defendant's] products infringed some of [plaintiff's] patents does not preclude [defendant] from arguing that the non-infringing aspects of these products provide evidence that [defendant] could have offered a fully non-infringing product that would have been an acceptable non-infringing alternative."

Apple Inc. v. Samsung Electronics Co. Ltd., et al, 5-11-cv-01846 (CAND February 10, 2016, Order) (Koh, J.)