Patent Lawyer Blog

The plaintiff, Bayer, moved to exclude the opinion of the defendant’s damage expert, Dr. Rausser, for failing to show that the licenses that he used for his reasonable royalty analysis were technologically or economically comparable to the license resulting from the hypothetical negotiation.  The district court agreed with Bayer on the economically comparable point and granted the motion to exclude on that basis.

As explained by the district court, Bayer asserted that the license resulting from the hypothetical negotiation would be a non-exclusive, running royalty license between competitors, and of Dr. Rausser’s four selected licenses, only one was a non-exclusive license, two were between competitors, and none of them used a running royalty.

The district court stated that the strongest argument by Bayer “relates to Dr. Rausser’s use of lump-sum licenses to support a running royalty hypothetical license. ‘Significant differences exist between a running royalty license and a lump-sum license.’ Lucent, 590 F.3d at 1326. A lump-sum license can still be relevant to running royalty damages, but “some basis for comparison” must exist. See id. at 1330. Defendants argue that Lucent is inapposite because here, unlike in Lucent, the parties agree that damages should be in the form of a running royalty. Defendants further argue that, “while it may be difficult to determine a lump sum from a running royalty,” as shown in Lucent, “the opposite is not true.”

In the ongoing litigation war between Qualcomm and Apple, spanning multiple forums around the country, Qualcomm moved to exclude Apple’s technical experts’ reliance on certain license agreements by asserting that the agreement involved technology that was not sufficiently comparable.  After reviewing the license agreements, the experts’ opinions, and the law, the district court concluded that Qualcomm’s motion should be granted.

After reviewing the license agreements at issue (which have been redacted as confidential), the district court explained that “the first question is whether Apple’s technical experts have shown that any patents underlying these License Agreements are technologically comparable to the patents at issue here. The Federal Circuit has cautioned “that ‘district courts performing reasonable royalty calculations [must] exercise vigilance when considering past licenses to technologies other than the patent in suit,’ and ‘must account for differences in the technologies and economic circumstances of the contracting parties[.]’” VirnetX, Inc. v. Cisco Systems, Inc., 767 F.3d 1308, 1330 (Fed. Cir. 2014) (citations omitted). “When relying on licenses to prove a reasonable royalty, alleging a loose or vague comparability between different technologies or licenses does not suffice.” LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 79 (Fed. Cir. 2012).

The district court then explained that “Apple’s experts have gone through the License Agreements and found at least one patent from each Agreement that they believe is technologically comparable to the patents in suit. Qualcomm’s motion goes directly to those opinions, and asserts they are conclusory and do not meet the standard for technological comparability.”

In a patent infringement action, Takeda Pharmaceuticals America, Inc., and Takeda Pharmaceuticals U.S.A., Inc.’s (collectively, “Takeda”) filed a motion to disqualify Baker Botts, L.L.P. (“Baker Botts”) from representing Defendants Zydus Pharmaceuticals (USA) Inc. and Cadila Healthcare Limited (collectively, “Zydus”). Takeda moved to disqualify Baker Botts from representing Zydus based on Baker Botts’ alleged previous representation of Ethypharm S.A. (“Ethypharm”) in earlier litigation involving Takeda’s Prevacid® SolutabTM product.

Takeda asserted that the law firm should be disqualified from representing Zydus based on a Common Interest & Confidentiality Agreement (the “Agreement”) Ethypharm entered into with Takeda and TAP Pharmaceutical Products Inc. (“TAP”) in the Delaware Action.

In this regard, Takeda claimed that the Agreement created an implied attorney-client relationship between Takeda and Baker Botts. As explained by the district court, Takeda argued that the current litigation was substantially related to the prior litigation involving Ethypharm, arguing that even though the patent infringement claims were dismissed, leaving only Zydus’ antitrust counterclaims, the matters remained substantially related because the critical issue in deciding Zydus’ antitrust counterclaims is whether Takeda’s assertion of the dismissed patent claims was objectively baseless. Takeda also contended that facts and theories from the prior litigation, including arguments concerning commercial success were relevant and long-felt because, in order to succeed on its antitrust counterclaims, Zydus must establish a monopoly, and, consequently, Zydus has sought discovery on Takeda’s sale and marketing of Prevacid® SoluTab.TM

National Products, Inc. (“NPI”) filed a patent infringement action Akron Resources, Inc. (“Akron”), among others.  The parties filed several cross motions for summary judgment, including a motion for summary judgment based on the failure to mark.

As explained by the district court, the parties did not dispute that:

“1) NPI sells products that practice the ’212 Patent;