Underdeveloped Comparability Analysis Leads to Exclusion of Reasonable Royalty Opinion

In the recent patent infringement case, Meridian Mfg. v. C&B Mfg., 2018 U.S. Dist. LEXIS 172243 (Oct. 5, 2018), both parties raised Daubert challenges to the opposing experts’ damages opinions. This provides a good reminder of key legal principles informing reasonable royalty and lost profits calculations.

Among the contested issues was how an expert may use noninfringing alternatives when developing a hypothetical negotiation and what an expert, relying on prior licenses, must do to establish comparability to the patented technology. The court here, as well as in other cases, makes it clear that an expert’s “superficial recitation of the Georgia-Pacific facts, followed by conclusory remarks” does not make the testimony admissible.

The plaintiff owned a patent for an agricultural trailer that helps farmers transport large boxes of seeds to planters in the fields. The trailer features guide plates that facilitate centering the box on a wheeled bed. The guide plates are a special feature. The defendant, a manufacturer of consumer and industrial products, sold a seed tender that the plaintiff claimed violated its patent. After the plaintiff sent a cease and desist letter, the defendant continued selling its trailers. However, following a hearing in late 2015, the court found the defendant’s seed tender infringed a specific claim of the plaintiff’s patent and the defendant began to redesign its seed tender. The parties continued to disagree over whether the redesign solved the infringement.

Both sides filed pretrial motions, including motions to exclude damages expert testimony under Rule 702 of the Federal Rules of Evidence and Daubert.

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