Promega Corp. v. Applied Biosystems, LLC, No. 13-cv-2333, 2013 WL 2898260 (N.D. Ill. June 12, 2013) (Posner, J. sitting by designation.)
Judge Posner, sitting by designation, concluded a patent was invalid and entered judgment in favor of the accused infringer. However, he did comment on the range proffered by the accused infringer’s damages expert first – finding the upper end of a range of possible royalties was not a concession.
Life Tech sued Promega for infringement. After a hearing on Promega’s motion for summary judgment on infringement, damages and validity, Circuit Judge Posner, sitting by designation, found the patents-in-suit were invalid and entered judgment in favor of Promega. Id. at *1. For completeness, Judge Posner also discussed issues relating to damages.
Promega’s damages expert testified to a range of royalty rates from 2 to 4.4 percent. Id. at *2. Life Tech sought to have the upper end of the range treated as a concession by Promega that 4.4% was a reasonable rate. Id.
But, Judge Posner did not think the expert’s testimony and proposed testimony as a whole constituted a concession that the royalty rate should be 4.4% since he also offered reasons why a jury could arrive at a 2% royalty. Id. The Judge referred to the following facts:
- Promega and Life Tech had previously settled litigation and agreed on a 2% for (apparently) the same patent if it was reissued. Id.
- The 4.4% was a back up option, in case the jury thought 2% was too low. Id. at *3.
- The damages expert thought 2% was appropriate, and he could testify to that rate, subject to cross examination, including his 4.4% alternative. Id.