In a recent Memorandum Opinion, Judge Richard G. Andrews granted both (i) defendant’s motion to exclude the testimony of plaintiff’s damages experts Mr. Herman “Whitey” Bluestein and Mr. Richard Bero, and (ii) plaintiff’s motion to exclude the opinion of Mr. Charles Donohoe on a running royalty rate. M2M Solutions LLC v. Motorola Solutions, Inc., et al., C.A. No. 12-33-RGA (D. Del. Feb. 25, 2016). Judge Andrews first concluded that Mr. Bluestein’s testimony must be excluded for “three principal reasons”: “1) I do not think that Mr. Bluestein is qualified as an expert to render technical conclusions about the advantageous characteristics of the patented technology, 2) the Beacham Report [surveys] are completely unrelated to M2M device technology and any allegedly infringing features of the accused products, and 3) the only link between the Beacham Reports and the patented technology is provided solely by Mr. Bluestein’s say-so.” Id. at 5-6. As to the first reason, Judge Andrews explained that “while Mr. Bluestein may have considerable experience in the industry generally, he does not have the expertise (and he does not rely on others who do) to carefully tie his methodology (or, indeed, any methodology) to the ’010 patent’s footprint in the marketplace, especially when only providing vague platitudes about what that footprint is.” Id. at 7. As to the second reason, Judge Andrews explained that “[t]he Beacham Reports do not discuss M2M device technology at all, let alone provide any sort of discussion about particular security features of M2M devices.” Id. at 8. Finally, as to the third reason, Judge Andrews noted that “the linchpin of Mr. Bluestein’s damages theory-that Beacham Report survey respondents who indicated a preference for using internal resources to manage their M2M products use the patented technology-is unsupported by anything other than Mr. Bluestein’s say-so.” Id. at 9. And because Mr. Bluestein’s opinion provided the foundation for Mr. Bero’s reasonable royalty analysis, Judge Andrews also excluded Mr. Bero’s damages testimony. Id. at 13.
Judge Andrews also determined that the opinion of plaintiff’s expert, Mr. Donohoe, regarding a running royalty rate should be excluded. Judge Andrews found that Mr. Donohoe’s opinion “improperly relies on licenses that are not economically comparable to the ’010 patent.” Id. at 16. Specifically, “Mr. Donohoe has failed to show how . . . two large, worldwide, standard-essential, FRAND patent portfolios are economically comparable to a license that the parties would have negotiated for a single asserted patent.” Id. at 15. Judge Andrews explained that “[t]he negotiations surrounding the Company A and Company B portfolio licenses were undoubtedly ‘radically different’ than the hypothetical negotiation that would have occurred between the parties for a license to a single patent.” Id. at 16.