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