The opinion of the court was delivered by: Judge Nora Barry Fischer
This patent infringement action is set to commence jury selection and trial on November 26, 2012. The parties have filed a number of motions in limine seeking pretrial rulings on the admissibility of certain evidence at trial. Presently pending before the Court is Defendants Marvell's "Motion in Limine No. D10 To Preclude CMU from Introducing Evidence and Argument Regarding Excess Profits, Premiums, and Operating Profit Premiums," (Docket No. 517). Marvell argues that the reference to so called "premiums" and "excess profits" are irrelevant metrics and would unfairly prejudice Marvell and create confusion for the jury. (Docket No. 518). Plaintiff Carnegie Mellon University ("CMU") opposes this motion, arguing that such figures form the foundation of Ms. Lawton's apportionment analysis, which the Court has already found admissible. (Docket No. 568). The Court heard argument on the motion during its hearing on October 17 and 18, 2012. (Docket Nos. 579, 590, 591). For the following reasons, Marvell's motion  is DENIED.
Here throughout this case, CMU alleges that Marvell has infringed two of its patents, U.S. Patent Nos. 6,201,839 (the "'839 Patent") and 6,438,180 (the "'180 Patent") (collectively, the "CMU Patents").*fn1 The patents-in-suit are generally directed to sequence detection in high density magnetic recording devices, and more specifically, to high density magnetic recording sequence detectors. See '839 Patent 1:20-23. Both patents claim priority to a May 9, 1997 provisional application. See '839 Patent; '180 Patent. The '180 Patent is a continuation-in-part of the '839 Patent. See '180 Patent.
Although much of the scope of Marvell's alleged is still disputed, it is clear that Marvell used the accused technology throughout its so-called "sales cycle."*fn2 The sales cycle involves testing of both computer programs and manufactured chips, and CMU accuses Marvell of infringement during this design and testing stage. If a sales cycle is successful, it culminates with a "design win," whereby Marvell makes mass sales of chips that allegedly perform the patented methods.
CMU seeks a reasonable royalty for Marvell's alleged infringement throughout this process. To that end, CMU proffers Catharine Lawton as its damages expert, who has produced an extensive report. (See Docket No. 367-2).*fn3 The underlying theme of Ms. Lawton's report is that Marvell considered CMU's technology "must have." (See id. at 14). After finding no established royalty, Ms. Lawton engaged in an extremely detailed Georgia-Pacific analysis in order to reach her opinion on a reasonable royalty for the case. (See Docket No. 449 at 4-6). (Docket No. 367-2 at 368-540). All told, she concludes that a running royalty of $0.50 per unit should be applied to Marvell's sales of the Accused Chips at issue. (Id.).
Marvell filed a Daubert motion to exclude the opinions of expert Ms. Lawton. (Docket No. 367, 368). After consideration of opposition briefs (Docket No. 395), and oral arguments presented at the hearing on July 10 and 11, 2012 (Docket No. 433), the Court granted, in part, and denied, in part, Marvell's motion. (Docket No. 451). That challenge was based on four theories: (1) Ms. Lawton's purported use of the entire market value rule; (2) her apportionment analysis; (3) reliance on an irrelevant PowerPoint slide; and (4) a "kitchen sink" of alleged indicia of unreliability. (Id.)
In regards to Ms. Lawton's use of price premiums for her analysis, the Court ruled that both parties had "pointed to evidence that contradicts or supports her opinions" and it will "leave to counsel the task of cross examination and to the jury the task of determining which set of facts is correct." (Id. at 8). This Court ruled that it would not exclude "any of Ms. Lawton's testimony on the basis of her apportionment analysis". (Id.).
In its present Motion, Marvell now seeks to preclude CMU from
introducing evidence of excess profits, premiums, and operating profit
premiums to the jury. (Docket No. 518). In its brief and at oral
argument, Defendants' counsel argued primarily that Ms. Lawton did not
properly compare the value of the at issue technology to the next best
alternative and therefore the evidence that she would present at trial
is flawed and prejudicial. (Docket No. 591 at 98-124).*fn4
In its motion in limine brief and at oral argument,
Defendants rely heavily on Apple, Inc.
v. Motorola, Inc., decided by Judge Posner sitting by designation in
the Northern District of Illinois. 1:11-CV-08540, 2012 WL 1959560
(N.D. Ill. May 22, 2012), (Docket Nos. 518, 591). In effect, Marvell
now asks the Court to re-examine its Summary Judgment decision given
Judge Posner's reasoning in Apple. The Apple court rejected an expert
damages analysis that failed to consider, and offered no evidence
regarding, any alternatives beyond licensing the patent. Apple, 2012
WL 1959560 at *7. Apple was decided on May 22, 2012, well in advance
of the July 10-11, 2012 Motion's hearing, yet defense counsel, never
referenced this case during that hearing.*fn5
(Docket No. 438-440). Nor did counsel seek reconsideration in a timely fashion.*fn6
The Court having reviewed the Apple case finds that it does not change this Court's ruling in regards to Ms. Lawton's apportionment analysis. (Docket No. 451). Here, CMU contends that Ms. Lawton does appropriately consider alternatives with supporting evidence and as this Court has already found, both parties have "pointed to evidence that contradicts or supports her opinions". (Docket Nos. 451, 568, 591). In fact, the Court agrees with Judge Posner that such disputes regarding the "weaknesses in the testimony. are properly resolved at the trial itself on the basis of evidence and cross-examination." Apple, 2012 WL 1959560 at *1. As the Apple court notes, "[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." Id. (quoting Daubert v. Merrell Dow Pharmaceuticals, Inc. 509 U.S. 579, 596 (1993)). To that end, as we have previously ruled, this Court will not exclude "any of Ms. Lawton's testimony on the basis of her apportionment analysis." (Docket No. 451 at 8).
A patentee "must in every case give evidence tending to separate or apportion the defendant's profits and the patentee's damages between the patented feature and unpatented features, and such evidence must be reliable and tangible, not conjectural or speculative" Apple, 2012 WL 1959560 at *6 (quoting Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1318 (Fed. Cir. 2011). During argument, Plaintiff's counsel proffered that Ms. Lawton will base her apportionment and reasonable royalty estimate on her analysis of hypothetical non-infringing alternatives, such as the 7500 chip versus the 7500M (Docket No. 591 at 109 ln 12-17) and several possible alternatives, such as using pre-existing products, moving the work oversees, sublicensing from DSSC members, or using IBM as its foundry, among others. (Id. at 591 at 109-116). Plaintiff maintains that she has analyzed each of these alternatives and its plausibility in formulating her opinions. (Id. at 109-110). Once CMU enters this evidence at trial, Marvell will have the opportunity to "vigorously cross examine" Ms. Lawton and respond with any evidence to the contrary. Apple, 2012 WL 1959560 at *1.
Marvell's motion (Docket No. 517) is therefore DENIED.
Nora Barry Fischer U.S. ...