Lost Profits Expert Need Not Speculate As To Possible Noninfringing Alternatives

In denying defendant's motion to preclude the expert testimony of plaintiff's lost profits damages expert, Brian Napper, the court rejected defendant's argument that "the premium ball market (more than $30 per dozen) used by Mr. Napper for his lost profits analysis does not account for what 'all Pro VI users [would] play in the absence of that ball.'" "[A]ccording to [defendant], Mr. Napper does not assess what [defendant] would have offered in 2001 if the Pro VI were not available, how the market would have responded to these offerings, or what the market might have looked like in 2003 had [defendant] withdrawn the Pro VI from the market. . . . To credibly demonstrate that [defendant] would have had viable, non-infringing alternatives to offer in 2001 - as well as to predict how the market would have responded to these alternatives by 2003 - is an exercise that may be appropriate, but certainly is not one that is mandatory in light of its speculative nature."

Callaway Golf Company v. Acushnet Company, 1-06-cv-00091 (DED March 3, 2010, Memorandum Opinion) (Robinson, J.).

Evidence Of Litigation-Induced License Agreements Should Not Be Excluded From Trial

The court denied defendants' motion in limine to "preclude Plaintiff from offering evidence of litigation-induced licensing agreements, including any related consent decrees and judgments as well as communications related thereto, as evidence of the value of the patents-in-suit, whether pertaining to a ‘reasonable royalty’ analysis or as alleged ‘secondary considerations’ of nonobviousness and/or commercial success." "In light of [ResQNet.com, Inc. v. Lansa, Inc., --- F.3d ----, 2010 WL 396157 (Fed. Cir. 2010)], litigation-related licenses should not be excluded from the . . . trial in the above-captioned case. Although ResQNet involved a bench trial, the licenses at issue were considered by that trial court sitting as trier of fact, just as the jury will sit in the above-captioned case. Defendants’ concerns about the reliability of litigation-related licenses are better directed to weight, not admissibility. . . . Defendants (as well as Plaintiff) may nonetheless propose a final jury instruction that gives the jury guidance on applying litigation-related licenses."

Datatreasury Corporation v. Wells Fargo & Company et al., 2-06-cv-00072 (TXED March 4, 2010, Order) (Folsom, J.)

Conflicting Claim Constructions Preclude Finding of Willfulness

The court granted defendant's renewed motion for judgment as a matter of law of no willful infringement where a court in a related case issued a claim construction favoring defendant. "In spite of the jury’s verdict, the court cannot ignore the contrary claim construction issued by [a judge in a related case]. . . . Although the undersigned disagrees with the claim construction provided by [the other court], I cannot characterize his conclusions as unreasonable. Consequently, the court finds that [defendant] maintained a reasonable non-infringement defense, one that entitles it to a finding of non-willfulness. Indeed, it would be difficult to conjure up a defense which would be more 'reasonable' than one expressly adopted by a federal judge, albeit in conflict with a second federal judge."

Arlington Industries v. Bridgeport Fittings, 3-01-cv-00485 (PAMD March 2, 2010, Memorandum & Order) (Conner, J.)

Entire Operating System Cannot Serve as Royalty Base Where Only the Workspace Switching Feature is Accused of Infringement

The court granted defendants' motion to preclude testimony by plaintiff's damages expert to the extent such testimony was based on the entire market value rule. "[Plaintiff] alleges that the operating systems’ multiple virtual workspaces and workspace switching features infringe the patents-in-suit. In invoking the 'entire market value rule,' [the expert] included 100% of [defendants'] total revenues from sales of subscriptions to the accused operating systems in his proposed royalty base. [The expert's] methodology however does not show a sound economic connection between the claimed invention and this broad proffered royalty base. The claimed invention is but one relatively small component of the accused operating systems. The evidence shows that the workspace switching feature represents only one of over a thousand components included in the accused products. . . . Most of [defendants'] accused sales come from their Server products, the majority of which are not connected to a display and thus do not take advantage of the workspace switching feature. [The expert] made no effort to factor out of his proffered royalty base these products which do not even feature the claimed invention. Once again, this blatant oversight shows that [the expert] did not use the type of reliable economic principles and methods required by Rule 702 for an economic damages expert."

IP Innovation, LLC. et al v. Red Hat Inc. et al., 2-07-cv-00447 (TXED March 2, 2010, Order) (Rader, C.J.)

Defendant May Not Present Jury Argument Concerning KSR's Change to Obviousness Standard

Plaintiff's motion in limine concerning the change in the obviousness standard since its patents were issued was granted. "Defendants argue that [KSR Int’l Co. v. Teleflex Inc.] changed obviousness and that '[i]t will be especially unfair when the Court reads the jury instructions on obviousness if the jury thinks the PTO applied the same standard when examining the patents' . . . Defendants’ proposed arguments to the jury about the state of patent law would likely cause jury confusion and would risk invading the Court’s province of instructing the jury on the law."

Datatreasury Corp. v. Wells Fargo & Co. et al., 2-06-cv-00072 (TXED February 26, 2010, Order) (Folsom, J.)

Complaint Alleging Infringement by "Laundry List of Electronic Devices" Failed to State a Claim

Defendant's motion to dismiss plaintiff's claim of direct infringement for failure to state a claim was granted. "Nowhere in the Amended Complaint does Plaintiff identify, with the requisite level of factual detail, the particular product or line of products, that allegedly infringe the [patent-in-suit]. Instead, Plaintiff merely claims that the infringing 'products include, without limitation, cell phones, computers, [etc.], and other products where high performance, high speed analog circuits are used, and/or components thereof.' Plaintiff has done nothing more than recite a laundry list of electronic devices. These cursory allegations are insufficient to give the Defendant fair notice of the claims being alleged against it."

Bender v. Motorola, Inc., 4-09-cv-01245 (CAND February 26, 2010, Order) (Armstrong, J.)

Inequitable Conduct Pleading Need Not Allege Why Undisclosed Prior Art Embodies the Claimed Invention, Why it is Not Cumulative, or

How Examiner Would have Applied It

The court denied plaintiff's motion to strike defendant's inequitable conduct defense based on the alleged failure to disclose an IEEE article comparing plaintiff's product to a preexisting product embodying the patented invention. The court rejected plaintiff's argument that defendant's counterclaim "failed to identify which claims are disclosed in the Article, where the relevant information is found in the Article, why the Article is not cumulative, or how the examiner would have applied the Article to the claims of the [patent-in-suit]" and agreed with defendant's argument that "[plaintiff] does not need [defendant], for purposes of notice pleading, to explain why a three page article comparing [plaintiff's] product to a pre-existing product that embodies the invention claimed in the [patent-in-suit] is not cumulative or how the examiner would have applied it."

Somanetics Corp. v. CAS Medical Systems, Inc., 2-09-cv-13110 (MIED February 25, 2010, Opinion & Order) (Cox, J.)