Expert’s Consideration of Pre-Issuance Value of Patented Invention Does Not Render Damages Opinion Unreliable​

The court denied defendant's motion in limine to exclude the testimony of plaintiff's damages expert for considering the pre-issuance value of the patented invention. "[T]here is no merit to [defendant's] argument that '[the expert's] opinion regarding the alleged value [of] the [patent’s] invention before it even issued is improper and should be excluded.' The economic data from the period before the issuance of the [patent] provided a sound basis from which to determine the value of the invention that was ultimately patented. . . . A patent does not have to be in existence in order to calculate the value that the invention would have, particularly if others are already practicing the invention in the market when the patent issues. . . . [Defendant] is correct that those earlier sales were not infringing sales, and therefore may not be included as contributing to the assessment of damages. But [the expert] committed no such error. . . . [He] began with the number in dispute and then accounted for several other variables, including deducting noninfringing profits, before ultimately deriving his estimated reasonable royalty rate. The initial number was an essential part of [his] model for calculating damages and is therefore a legitimate and relevant part of his damages analysis."

Erfindergemeinschaft UroPep GbR v. Eli Lilly and Company et al, 2-15-cv-01202 (TXED March 17, 2017, Order) (Bryson, CJ)