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ARTICLES
Ouch. Checkpoint Told to Pay Defendants’ Attorneys’ Fees of $6.6 Million
This week’s reminder of the often high costs of patent litigation comes to us from a Pennsylvania court, which ordered plaintiff Checkpoint Systems to pay for the attorney fees and costs for defendants All-Tag and Sensormatic, totaling $6.6 million. The court awarded the fees after it found the case to be exceptional, primarily because Checkpoint’s infringement expert never looked at the actual accused products in relation to the patent-in-suit (instead, it reviewed products made in a different country and also defendant’s patents). And as a reminder of how slowly the wheels of justice sometimes turn, this trial (and the jury finding in favor of defendants) occurred 4.5 years ago – in February 2007. Checkpoint Systems v. All-Tag Security, et. al., 2-01-cv-02223 (E.D. PA, November 2, 2011, Order)(Tucker)Del. Court Excludes “Speculative” Non-Infringing Alternatives and Other Arguments
After a jury’s finding of patent infringement, the court rules on a number of pre-(damages)-trial motions, with 3 such rulings of interest. The court first finds that proffered testimony by defendant’s technical expert regarding possible “design arounds” as alternatives to the patented technology “is wholly speculative and, consequently, not helpful to the trier of fact. There is no indication that any of the technical alternatives proposed by Dr. Bishop would work. Dr. Bishop admitted as much at his deposition.” Second, the court notes that defendants revised their sales data in 2011 to correct for duplicate entries in its data provided in 2006. Although plaintiff’s damages expert Brian Napper considered the new data, plaintiffs argue that the jury should choose which data is more accurate. The court rejects this argument, finding that the inaccurate 2006 sales data would be “confusing and misleading to the jury.” Third, the court considers what appears to be Mr. Napper’s position that defendant Symantec’s $135 million cash purchase of Recourse Technologies was a useful indicator of patent value since that purchase included, among other things, Manhunt – an accused product. But the court concludes that “SRI may not offer evidence regarding Symantec’s purchase price for Recourse (which price ... Read MoreDamages Expert Will Have to Tie His Proposed 50% Profit Split to This Case
In another case where plaintiff’s expert asserts that the reasonable royalty rate should be 50% of defendant’s profits, the defendants asked the court to exclude the opinion. In his report, Kristofer K. Swanson concludes that defendant would have been willing to pay up to 50% of its incremental profits as a royalty. But the defendant asserts that Mr. Swanson failed to provide any factual basis to connect the 50% rate to this case. The court rules that this objection should be filed as a motion in limine, but that it “will only allow Mr. Swanson to testify on this point after he establishes a proper predicate connecting the 50% rate to the facts of this case.” This appears to be another shot at applying the Nash equilibrium (i.e. 50-50 profit split) to a reasonable royalty analysis, a growing trend after the prohibition of the 25% rule-of-thumb. Here, the court appears to be inclined against it, but doesn’t go quite as far as the California court that recently ruled in Oracle v. Google that the expert failed to tie the Nash theory to the facts of the case and that “[t]he Nash bargaining solution would invite a miscarriage of justice by clothing ... Read MoreConceptus Awarded Royalties of 20% For Hologic’s Infringement
A California jury awarded damages of $18.8 million based on lost profits and a royalty rate of 20% to Conceptus due to Hologic’s infringement of a Conceptus patent related to a transcervical intrafallopian contraception method. Possibly more interesting than the actual verdict was an earlier JMOL, where the court ruled that Hologic had no acceptable and available non-infringing alternatives. Hologic had claimed that two specific alternatives were available because it had designed them and had the materials, equipment, and know-how to “implement” them during the period of alleged infringement. But the court found that the only support Hologic cited for this argument was a portion of the unsworn report of its own expert that relied exclusively on private conversations with Hologic personnel, which the court and Conceptus dubbed double hearsay, not evidence. The court notes that Hologic — the alleged infringer —bears the burden of proving the availability of some other acceptable non-infringing alternative, yet Hologic had not proffered any admissible evidence to rebut the inference that no acceptable noninfringing substitutes were available. In a JMOL, the court thus found that there were no acceptable and available non-infringing alternatives. Interestingly, the court also cited some examples of evidence Hologic could have provided: ... Read More
VLF Consulting, Inc.
