{"id":3109,"date":"2021-08-26T20:26:00","date_gmt":"2021-08-27T01:26:00","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=3109"},"modified":"2021-09-06T15:30:34","modified_gmt":"2021-09-06T20:30:34","slug":"damage-expert-testimony-limited-by-unreliability-failure-of-disclosure-and-failure-to-apportion","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=3109","title":{"rendered":"Damage Expert Testimony Limited by Unreliability, Failure of Disclosure, and Failure to Apportion"},"content":{"rendered":"\n

In MLC Intellectual Property, LLC v. Micron Technology, Inc.<\/a>, [2020-1413] (August 26, 2021), the Federal Circuit affirmed the district court\u2019s orders precluding MLC\u2019s damages expert from characterizing certain license agreements as reflecting a 0.25% royalty, opining on a reasonable royalty rate when MLC failed to produce key documents and information directed to its damages theory when requested prior to expert discovery, and opining on the royalty base and royalty rate where the expert failed to apportion for non-patented features.<\/p>\n\n\n\n

MLC sued Micron for infringing certain claims of U.S. Patent No. 5,764,571, entitled \u201cElectrically Alterable Non-Volatile Memory with N-bits Per Cell,\u201d which describes methods of programming multi-level cells.<\/p>\n\n\n\n

Micron filed a motion in limine to preclude Mr. Milani from mischaracterizing the Hynix and Toshiba agreements as reflecting a 0.25% royalty rate. In addition, Micron moved to strike portions of Mr. Milani\u2019s expert report under Rule 37 of the Federal Rules of Civil Procedure as being based on facts, evidence, and theories that MLC disclosed for the first time in Mr. Milani\u2019s expert report. Micron had asked for MLC\u2019s damages theories\u2014as well as any facts, evidence, and testimony regarding any applicable royalty rate\u2014during fact discovery in its Interrogatory Nos. 6 and 22 and during a Rule 30(b)(6) deposition of a corporate designee. Finally, Micron filed a Daubert <\/em>motion, seeking to exclude Mr. Milani\u2019s reasonable royalty opinion for failure to apportion out the value of non-patented features. The district court granted all three motions.<\/p>\n\n\n\n

As to the first motion, the district court reasoned that Mr. Milani\u2019s \u201ctestimony about the Hynix and Toshiba licenses containing a 0.25% royalty rate is not \u2018based on sufficient facts or data\u2019 and is not \u2018the product of reliable principles and methods.\u2019\u201d\u00a0 On appeal, the Federal Circuit noted that as a gatekeeper, the district judge was required to \u201censure that any and all scientific testimony or evidence admitted is not only relevant, but reliable.\u201d\u00a0 The Federal Circuit found no abuse of discretion on the exclusion of evidence, noting that instead of resting on an accepted scientific theory or technique, Mr. Milani\u2019s testimony was is not sufficiently tethered to the evidence presented.<\/p>\n\n\n\n

As to the second motion, the court concluded that \u201cMLC never disclosed the factual underpinnings of its claim that the Hynix and Toshiba licenses \u2018reflect\u2019 a 0.25% royalty rate, and that pursuant to Rule 37(c)(1), this failure is a separate and independent basis for excluding evidence and argument that those licenses contain such a rate.\u201d  The court said that because the information relied upon was never disclosed by MLC, MLC may not rely on this evidence to assert that the Hynix and Toshiba licenses \u2018reflect\u2019 a 0.25% rate.\u201d  On appeal the Federal Circuit noted that under Rule 37(c)(1), when \u201ca party fails to provide information or identify a witness as required by Rule 26(a) or (e), the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless.\u201d  After examining the discovery responses, the Federal Circuit found that the district court did not abuse its discretion in finding that MLC did not properly disclose its claim that the Hynix and Toshiba licenses reflect a 0.25% rate, as well as the extrinsic documents relied on by Mr. Milani to show that the Hynix agreement reflects a 0.25% royalty rate.<\/p>\n\n\n\n

As to the third motion, the district court held that Mr. Milani\u2019s failure to apportion for non-patented technologies rendered his analysis unreliable and excludable. \u00a0On appeal, the Federal Circuit agreed that Mr. Milani did not properly apportion either the royalty base or the royalty rate to account for the patented technology, noting that it has repeatedly held that when the accused technology does not make up the whole of the accused product, apportionment is required.<\/p>\n","protected":false},"excerpt":{"rendered":"

In MLC Intellectual Property, LLC v. Micron Technology, Inc., [2020-1413] (August 26, 2021), the Federal Circuit affirmed the district court\u2019s orders precluding MLC\u2019s damages expert from characterizing certain license agreements as reflecting a 0.25% royalty, opining on a reasonable royalty … 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":[48,23],"tags":[],"class_list":["post-3109","post","type-post","status-publish","format-standard","hentry","category-damages","category-experts"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3109","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=3109"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3109\/revisions"}],"predecessor-version":[{"id":3110,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/3109\/revisions\/3110"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=3109"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=3109"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=3109"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}