Judge Lawrence Stengel of the District of Delaware, Sitting by Designation, approved and adopted the recommendations of Magistrate Judge Sherry Fallon. Among other recommendations, Judge Fallon recommended denying the motion to exclude plaintiff’s damages expert.
The case involves a method patent for performing eye surgery. Alcon moved to exclude Brian Napper, plaintiff’s expert, based on alleged violation of the entire market value rule for his use of product and ancillary sales in his royalty base. Mr. Napper relied upon a comparable patent licensing analysis to support his royalty base which included more than the accused cannula at issue.
Citing to Commonwealth Scientific and Industrial Research Organization (“CSIRO”) v. Cisco, Judge Fallon noted that the royalty base in the comparable license and the one contemplated by Mr. Napper were the same.
Judge Fallon also noted that Mr. Napper provided some accounting for non-infringing uses. Accordingly, she recommended denying the Daubert motion related to these issues.
An additional issue that arose in the motions for summary judgment was whether the reasonable royalty could be tied to defendant’s sales. Alcon explained that Alcon would not infringe the patented method because it only sells products; it does not use the products in an infringing manner. Thus, Alcon reasoned, its sales are not the proper royalty base. Judge Fallon denied Alcon’s motion because Johns Hopkins showed that the product was purchased for use in an infringing way and because both damages experts (for plaintiff and for defendant) used Alcon sales as the basis for their royalty base.