Expert testimony was excluded in part and allowed in part in trial on damages.
Sri International Inc. v. Internet Security Systems, Inc., et al., Civ. No. 04-1199-SLR, October 31, 2011.
Robinson, J. In limine and Daubert motions are decided with mixed results before damages trial.
A pretrial conference was held in this patent infringement case involving computer security technology. Following an infringement verdict a trial on damages now follows. The defendant maintained, inter alia, that sales to the U.S. government are not infringing sales and, even if so, the government is licensed. The sales will be included because defendant did not move for JMOL on this non-infringement issue during the liability trial. Prior art was shown to be available at the time of invention and relevant to the Georgia Pacific factors. Products found to be noninfringing or those not accused of infringement are relevant to damages and admissible upon a proper foundation at trial. On the facts presented, however, products the jury found to be infringing are not admissible even though the court later reversed the verdict as to these products. Expert testimony as to an available design-around is excluded as speculative. Evidence regarding the defendant’s patents and product development is admissible through lay testimony but its expert may not offer an opinion based solely on a reiteration of that testimony. The defendant’s expert also may not testify as to an asserted groundbreaking technology in the area because there was no substantive comparison to the invention and thus no foundation for admission. Further, the expert may not testify as to what features of the accused product are covered by the patents-in-suit, as the testimony offered was conclusory and did not account for the evidence during the liability trial. Similarly, testimony that the patents-in-suit provided minimal value in the industry is excluded, as the testimony is conclusory and not based on use of the patented technology. Plaintiff may not rely on inaccurate sales data and ask the jury to weigh it against data corrected later during discovery. Defendant’s purchase price for a related technology is excluded because there was no apportionment to the value of the accused product. Evidence showing a decline in the market is admissible. The verdict form should specify a royalty rate. The parties may not discuss the reexamination proceeding.
