{"id":1464,"date":"2017-03-06T19:11:26","date_gmt":"2017-03-07T00:11:26","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=1464"},"modified":"2017-03-11T20:18:31","modified_gmt":"2017-03-12T01:18:31","slug":"licenses-in-prior-settlement-agreements-may-be-relelvant-to-reasonable-royalty-damages","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=1464","title":{"rendered":"Licenses in Prior Settlement Agreements May be Relelvant to Reasonable Royalty Damages"},"content":{"rendered":"

In Prism Technologies v. Sprint Spectrum L.P.<\/em>, [2016-1456, 2016-1457] (March 6, 2016) the Federal Circuit affirmed a $30 million\u00a0judgment entered after a jury verdict against\u00a0Sprint Spectrum L.P. lfor infringement of U.S.\u00a0Patent Nos. 8,127,345 and 8,387,155.<\/p>\n

Sprint raised several arguments why the district court should have granted JMOL, including error in admitting a prior settlement agreement with AT&T regarding the patents. Sprint claimed it was an abuse of discretion under FRE 403 to admit the Settlement Agreement, but the Federal Circuit disagreed.<\/p>\n

The Federal Circuit said that a license agreement entered into in settling\u00a0an earlier patent suit sometimes is admissible in a later
\npatent suit involving the value of the patented technology,\u00a0and sometimes is not.\u00a0A\u00a0settlement involving the patented technology can be\u00a0probative of the technology\u2019s value if that value was at\u00a0issue in the earlier case. The reason is simple: such a\u00a0settlement can reflect the assessment by interested and\u00a0adversarial parties of the range of plausible litigation\u00a0outcomes on that very issue of valuation. \u00a0However the Federal Circuit recognized that\u00a0for various reasons a
\nsettlement may be pushed toward being either too low, as
\nin Hanson, or too high, as in LaserDynamics, relative to
\nthe value of the patented technology at issue in a later
\nsuit. \u00a0However the Federal Circuit also recognized that for various reasons a\u00a0settlement may be pushed toward being either too low\u00a0or too high relative to\u00a0the value of the patented technology at issue in a later\u00a0suit. \u00a0The Federal Circuit said that what is needed for assessing the probativeness and\u00a0prejudice components of the Rule 403 balance, then, is\u00a0consideration of various aspects of the particular litigation settlements\u00a0offered for admission into evidence.<\/p>\n

The Federal Circuit said that the mere fact that the license resulted from litigation does not automatically mean that the prejudice outweighs probativeness side, noting that Sprint itself relied upon settlement agreements (although with lower royalty rates). \u00a0The Federal Circuit found that the\u00a0circumstances of the AT&T Settlement Agreement\u00a0affected the Rule 403 assessment in ways that support
\nthe district court\u2019s admission of the Agreement. \u00a0The Federal Circuit noted that the AT&T Settlement was made after the entire case had been tried, so the entire record was developed, enhancing the reliability of the parties assessment of the value of the settlement. \u00a0The Federal Circuit found not abuse of discretion in admitting the AT&T settlement agreement.<\/p>\n

The Federal Circuit also rejected per se<\/em> rules suggested by Sprint for excluding settlement agreements. \u00a0The Federal Circuit noted the inconsistency of Sprint’s position,\u00a0before Prism and AT&T settled, Sprint\u00a0affirmatively urged the admission of various Prism licenses
\nresulting from patent-litigation settlements, and even\u00a0moved to exclude the damages testimony of Prism\u2019s expert\u00a0on the ground that he failed to rely on such settlement\u00a0agreements. Sprint contended that those agreements\u00a0were \u201creliable marketplace evidence of the value of the\u00a0patents-in-suit\u201d and therefore \u201c\u2018highly probative as to
\nwhat constitutes a reasonable royalty for those patent\u00a0rights because such actual licenses most clearly reflect the\u00a0economic value of the patented technology in the marketplace.\u2019\u201d \u00a0When\u00a0Sprint first opposed admission of the AT&T settlement agreement, it did not invoke any categorical rule, which the Federal Circuit found was a strategic choice\u00a0so that Sprint could urge for the admission of lower rate licenses while opposing higher rate licenses.<\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

In Prism Technologies v. Sprint Spectrum L.P., [2016-1456, 2016-1457] (March 6, 2016) the Federal Circuit affirmed a $30 million\u00a0judgment entered after a jury verdict against\u00a0Sprint Spectrum L.P. lfor infringement of U.S.\u00a0Patent Nos. 8,127,345 and 8,387,155. Sprint raised several arguments why … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[48],"tags":[],"class_list":["post-1464","post","type-post","status-publish","format-standard","hentry","category-damages"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1464","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=1464"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1464\/revisions"}],"predecessor-version":[{"id":1465,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/1464\/revisions\/1465"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=1464"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=1464"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=1464"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}