In MobileMedia Ideas, LLC v. Apple Inc., C.A. No. 10-258-SLR (D. Del. July 21, 2016), Judge Sue L. Robinson denied Defendant’s motion for summary judgment regarding damages as well as its nd Daubert motion, and also denied Plaintiff’s Daubert motion.
As to the summary judgment motion, the Court disagreed with Defendant that the doctrine of intervening rights would apply to this case based on amendments Plaintiff had made during reexamination, as the Court concluded that the claims had remained substantially identical in scope. See id. at 3-9. The Court also denied the damages motion as to failure to mark. Reviewing case law that was split on the issue, the Court concluded that the burden of proof lies with an alleged infringer to “come forward with particular unmarked products allegedly triggering § 287” where, as here, there was a question as to whether the patentee actually marketed a product in the United States that practiced the patent-in-suit. Id. at 10. As Defendant had not met this burden, the motion for summary judgment was denied.
The Court also denied Defendant’s motion to exclude the testimony of Plaintiff’s technical expert, rejecting Defendant’s narrowing of “the field of pertinent art” in a way that would exclude the expert’s “opinions as outside his general experience.” Id. at 11. The Court also rejected Defendant’s criticisms of the reasonable royalty calculation of Plaintiff’s damages expert, who relied on royalty rates from a prior litigation, because he “offer[ed] reasons for his patent selection and acknowledges and adjusts the royalty rate for the differing circumstances of the prior litigation.” Id. at 13. Defendant also sought to exclude a question in Plaintiff’s survey evidence related to the claimed invention’s footprint in the marketplace as being too broad, but the Court concluded that the survey question was “sufficiently tied to [the technical expert’s] opinion regarding the benefit of the patent.” Id. at 15.
Plaintiff also sought to exclude Defendant’s opinions regarding non-infringing alternatives because the non-infringing alternatives would not have been commercially acceptable. Based on the cited case law, the Court found that Defendant’s opinion evidence regarding commercial acceptability, which did not include empirical evidence, was sufficient to withstand a Daubert motion. Id. at 15-16.