Case Cite

Toshiba Corp. v. Imation Corp., No. 09-cv-305-slc, 2013 WL 1248633 (W.D. Wis. Mar. 26, 2013).

IPDQ Commentary

Don’t expect to avoid an “established royalty” if your Rule 30(b)(6) witness testifies that the patentee asks licensees to pay a fixed rate when it licenses the patents-in-suit. If the established rate is offered to Defendant in a settlement negotiation, the rate will come in, even though evidence of a settlement negotiation will not.

Case Summary

Following remand by the Federal Circuit and before trial, the district court considered the parties’ motions in limine relating to damages and made the following rulings:

  • Denied in part Plaintiff’s motion to exclude a “settlement” offer that was also an established royalty rate. Plaintiff’s Rule 30(b)(6) witness that the patentee asks licensees to pay a fixed rate when it licenses the patents-in-suit. Id. at *10. The court would not exclude the fixed rate, but Defendant was precluded from mentioning that the rate was a settlement offer. Id. at *11.
  • Denied Plaintiff’s motion to exclude the testimony of Defendant’s damages expert, Richard Bero. Id. at *12. Concerns about Bero’s testimony based on “numeric proportionality” went to the weight of the evidence, not the admissibility of that testimony. Id. at *12.
  • Granted Defendant’s motion to preclude Plaintiff’s damages expert, John Jarosz, from testifying to a royalty rate greater than the fixed rate of 0.3 cents per disk. Id. at *29. Jarosz did not consider the 0.3 cents per disk established royalty in reaching his opinion that the rate should be 2 percent for one patent and 2.5 percent for another patent, thus providing a basis to exclude his testimony. Id. at *29.
  • Denied Defendant’s motion to exclude Jarosz from including all accused products in the royalty base. Id. at *30. Evidence of actual infringement, rather than sales of products capable of infringement, was not necessary. Id. at *30. But the damages award must be correlated in some respect to the extent that consumers use the infringing method. Id. at *30.