United States District Court, D. Delaware
MEMORANDUM AND ORDER
F. BATAILLON, SENIOR UNITED STATES DISTRICT JUDGE
matter is before the Court on the following motions:
defendant Apple Inc.'s (“Apple”) motion (D.I.
and the joint motion by defendants in the above captioned
related cases (“the defendants”)(D.I.
to preclude testimony of Dr. Jonathan D. Putnam pursuant to
Federal Rule of Evidence 702; the defendants' motion to
preclude the testimony of Dr. Todor Cooklev under Federal
Rules of Evidence 702 and 403 (D.I. 280); and plaintiff
Evolved Wireless LLC's (“Evolved”) motion to
preclude the defendants' experts Ms. Shirley Webster, Dr.
Michael Walker, Dr. Vernon Palmer, and Dr. Harry Bims) (D.I.
Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579,
597 (1993), the Supreme Court explained that Federal Rule of
Evidence 702 creates “a gatekeeping role for the
[trial] judge” in order to “ensur[e] that an
expert's testimony both rests on a reliable foundation
and is relevant to the task at hand.” In general, the
Federal Circuit applies the law of the otherwise applicable
regional circuit to issues not unique to patent law,
including the admissibility of expert testimony. Summit
6, LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1294 (Fed.
Cir. 2015) (“Whether proffered evidence is admissible
at trial is a procedural issue not unique to patent law, and
we therefore review the district court's decision to
admit expert testimony under the law of the regional
rule requires that expert testimony “help the trier of
fact to understand the evidence or to determine a fact in
issue.” Fed.R.Evid. 702(a). Expert testimony is
admissible only if “the testimony is based on
sufficient facts or data, ” “the testimony is the
product of reliable principles and methods, ” and
“the expert has reliably applied the principles and
methods to the facts of the case.” Fed.R.Evid.
702(b)-(d). The Third Circuit explains: “Rule 702
embodies a trilogy of restrictions on expert testimony:
qualification, reliability and fit.” Schneider ex
rel. Estate of Schneider v. Fried, 320 F.3d 396, 404 (3d
Cir. 2003). Qualification refers to the requirement that the
witness possess specialized expertise and the Third Circuit
“interpret[s] this requirement liberally, holding that
‘a broad range of knowledge, skills, and training
qualify an expert.'” Schneider, 320 F.3d
at 404 (quoting In re Paoli R.R. Yard PCB Litig., 35
F.3d 717, 742 (3rd Cir. 1994)). “Secondly, the
testimony must be reliable; it ‘must be based on the
‘methods and procedures of science' rather than on
‘subjective belief or unsupported speculation”
and “the expert must have ‘good grounds' for
his or her belief.” Id. (quoting In re
Paoli, 35 F.3d at 742. Finally, Rule 702 requires that
the expert testimony must fit the issues in the case.
Id.“In other words, the expert's testimony
must be relevant for the purposes of the case and must assist
the trier of fact.” Id. (noting that Rule
702's “helpfulness” standard requires a valid
scientific connection to the pertinent inquiry as a
precondition to admissibility).
expert's opinion on a legal conclusion “is neither
necessary nor controlling.” See High Point
Design LLC v. Buyers Direct, Inc., 730 F.3d 1301, 1313
(Fed. Cir. 2013) (quoting Avia Grp. Int'l, Inc. v.
L.A. Gear Cal., Inc., 853 F.2d 1557, 1564
(Fed.Cir.1988), abrogated on other grounds by Egyptian
Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir.
2008) (en banc). That said, an expert's opinion may be
relevant to the factual aspects of the analysis leading to
that legal conclusion. Id. When an expert's
methodology is sound, and the evidence relied upon is
sufficiently related to the case at hand, disputes about the
degree of relevance or accuracy (above this minimum
threshold) may go to the testimony's weight, but not its
admissibility.” i4i Ltd. P'ship v.
Microsoft Corp., 598 F.3d 831, 852 (Fed. Cir. 2010),
aff'd, 564 U.S. 91 (2011).
expert should not be excluded “simply because the trial
court does not deem the proposed expert to be the best
qualified or because the proposed expert does not have the
specialization that the court considers most
appropriate.” Pineda v. Ford Motor Co., 520
F.3d 237, 244 (3d Cir. 2008) (allowing an engineer to testify
about the inadequacy of a service manual warning for an
automobile liftgate, even though the expert had not designed
automobile liftgates or drafted service manuals). The
question of whether the expert is credible, or the opinion is
correct, is generally a question for the fact finder, not the
court. Summit 6, LLC, 802 F.3d at 1296; see
Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1314
(Fed. Cir. 2014), overruled en banc in part not relevant
here, Williamson v. Citrix Online, LLC, 792 F.3d 1339,
1349 (Fed. Cir. 2015). “Indeed, ‘[v]igorous
cross-examination, presentation of contrary evidence, and
careful instruction on the burden of proof are the
traditional and appropriate means of attacking shaky but
admissible evidence.'” Summit 6, LLC, 802
F.3d at 1296 (quoting Daubert, 509 U.S. at 596).
Federal Circuit Court of Appeals recognizes that estimating a
reasonable royalty is not an exact science. Id.The
record may support a range of reasonable royalties, rather
than a single value. Id. Likewise, there may be more
than one reliable method for estimating a reasonable
royalty.” Id.(quoting Apple, 757 F.3d at
1315). An expert's proposed reasonable royalty rate must
be tied to the facts of the case. Exmark Mfg. Co. Inc. v.
Briggs & Stratton Power Prods. Grp., LLC, 879 F.3d
1332, 1349 (Fed. Cir. 2018). “Questions about what
facts are most relevant or reliable to calculating a
reasonable royalty are for the jury.” i4i
Ltd. P'ship v. Microsoft Corp., 598 F.3d 831,
856 (Fed. Cir. 2010), aff'd, 564 U.S. 91 (2011).
the accused infringing products have both patented and
unpatented features, measuring this value requires a
determination of the value added by such features.
Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201,
1226 (Fed. Cir. 2014). Also, when dealing with SEPs, not only
must the patented feature be apportioned from all the
unpatented features reflected in the standard, but the
royalty must be premised on the value of the patented
feature, not any value added by the standard's adoption
of the patented technology. Id. at 1232. The
question of whether license agreements are sufficiently
comparable generally goes to the weight of the evidence, not
its admissibility. Id. at 1227-28.
other testimony, even expert testimony that is relevant and
reliable may be challenged under Federal Rules of Evidence
403, which permits the exclusion of evidence on grounds of
prejudice, confusion or waste of time. SeeFed. R.
Evid. 403; Banks v. United States, 93 Fed.Cl. 41, 47 (2010)
(“And, as with other testimony, even expert testimony
which is relevant and reliable may be challenged under FRE
403, which permits the exclusion of evidence on grounds of
prejudice, confusion or waste of time”). Under Rule
403, “the probative value of the evidence must be
‘substantially outweighed by the danger of unfair
prejudice . . .' before it may be excluded.”
Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1581
(Fed. Cir. 1993) (emphasis in original). “Unfair
prejudice” within its context means an undue tendency
to suggest decision on an improper basis, commonly, though
not necessarily, an emotional one. Id.; see
Rule 403 Advisory Committee Note.
1. Dr. Jonathan D. Putnam
a. Apple's Motion (D.I. 275)
Putnam is Evolved's damages expert. Apple challenges Dr.
Putnam's “top-down” approach to calculate per
patent royalty rates. It also challenges Dr. Putman's
calculation of damages using a lump-sum payment structure, in
recognition of Apple's strong preference, and common
practice, of structuring license agreements as a lump sum,
and LGE's preference for lump sum compensation in
negotiations for a license agreement with Apple.
asserts that Dr. Putnam's lump-sum damages calculation
includes damages for future Apple products that Evolved has
not accused in this case. It contends Dr. Putnam's
lump-sum methodology is flawed in that seeking damages for
these products violates the basic principle that a plaintiff
in a patent suit may only be awarded damages for an
infringer's use of the patented invention in infringing
products, arguing that if a product is not accused in the
case, it cannot be an infringing product.
opposition, Evolved contends that a lump sum royalty
determination may consider sales of future products. It
points to the difference between a lump-sum and a running
royalty and argues that Dr. Putnam was justified in looking
to forecasts of Apple's future LTE sales to support his
lump sum calculation. Evolved asserts that the credibility of
any forecast is an issue of weight that should be left for
Court finds Apple's motion should be denied. Any alleged
flaws in the expert's damages theory concern the weight
to be afforded the testimony, not its admissibility.
Effective cross-examination and the presentation of contrary
evidence should be adequate to prevent the jury from being
misled. Challenges to the testimony may require a ...