In a patent infringement case pending before the United States District for the Western District of Wisconsin, the plaintiffs filed a motion in limine before the damages phase of the trial to preclude the defendants from arguing that the work performed by their scientists should be taken into account in apportioning damages. The district court granted the plaintiff's' motion to exclude the evidence.

Defendants contended that the work performed by their scientists added value and should be considered when the jury determined plaintiffs' lost profits. Defendants essentially argued that the damages should be apportioned to reflect the added value that was provided by their scientists.

The district court found that, although this argument had superficial appeal, it did not hold up under close examination. "Again, this is an issue with some surface appeal that does not hold up to close examination." The close examination was that the extra feature did not add anything to the invention, i.e., the patented invention already included the component what defendants' scientists had allegedly contributed. "This is not a case in which an extra feature adds value to a larger component; the [patent-in-suit] incorporates the entire invention . . ."

Finally, the district court noted that the United States Supreme Court's decision in Westinghouse Electric & Manufacturing Co. v. Wagner Electric & Manufacturing Co., 225 U.S. 604 (1912) did not require a different result in this case. "The Supreme Court recognized in that case that a patent holder is entitled to all of the infringer's profits unless his patent created only a part of those profits." The district court then found that the facts of Westinghouse did not match the facts of the case before it because the patent-in-suit claimed the entire invention.

Accordingly, the district court found that plaintiffs were entitled to the entire value of the defendants' infringing sales. "The entire value of defendants' infringing sales of Spezyme Alpha derives from this invention; therefore plaintiffs are entitled to the full amount of whatever lost profits they are able to prove."

Novozymes A/S v. Danisco A/S, et al., Case No. 10-cv-251-bbc (W.D. Wisc. Oct. 25, 2011)