A California judge granted most of HTC’s Daubert motion against plaintiff’s damages expert, Joseph Gemini, for relying upon non-comparable agreements in his patent infringement royalty opinion. Gemini used a revenue sharing agreement as an “additional consideration,” apparently to bolster his Georgia-Pacific royalty analysis. The Court rejects the use of this agreement, ruling that (a) there was no patent license in the agreement, (b) Gemini concluded that the royalty rate from the agreement supports his ultimate royalty rate conclusion (c) Gemini thus considered the agreement under Georgia-Pacific factor 1 (prior licenses) or 12 (customary rates), and (d) the agreement was not shown to be sufficiently comparable to be considered under Factors 1 or 12.
The Court also rejects all but one of the other licenses that Gemini relied upon in his opinion. It first rejected the use of Novatel and Glenayre licenses, ruling that they related to “add-on wireless modules” for computers but that plaintiffs failed to explain what “add-on wireless modules” are or how they are technologically comparable to the HTC mobile handsets at issue. The Court also rejects Gemini’s use of the MPEG-LA licensing standards as being useful to his royalty rate, ruling that Gemini failed to explain “how the two licenses are technologically or economically comparable.” The Court notes that MPEG-LA covers video compression, while the patent in suit covers camera phone capabilities, and further that MPEG-LA is “a worldwide license for hundreds of patents covering an entire standard, and, therefore, is much larger in scope than the license that would have been reached at the hypothetical negotiation.”
DataQuill Limited v. High Tech Computer Corp., 3-08-cv-00543 (S.D. CA, April 16, 2012, Order) (Gonzalez)