Intellectual Property > IP Newsflash > Expert Opinion on Reasonable Royalty Excluded As Unreliable Because It Was Based on a Litigation Verdict and Did Not Account for Litigation-Related Economic Circumstances
20 Apr '16

On April 18, 2016, Magistrate Judge Mitchell of the Eastern District of Texas granted-in-part a motion to exclude damages expert opinion based in part on a litigation verdict for failure to account for litigation-related economic circumstances.

Mars, Inc. and Mars Petcare US, Inc. (“Mars”) brought a patent infringement lawsuit against TruRX LLC and True Science Holdings, LLC (“True Science”) alleging infringement of two U.S. patents related to breath-freshening pet food compositions. True Science moved to exclude the testimony of Mars’ damages expert, Mr. Britven, for improperly relying on the verdict in a previous litigation involving Mars to support his reasonable royalty opinion. The Court granted the motion and excluded that testimony as unreliable.

The verdict at issue was a case between Mars and Heinz from 2003. The court noted, citing to ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860 (Fed. Cir. 2010), that the Federal Circuit has ruled that “litigation itself can skew the results of the hypothetical negotiation.” That is because the hypothetical reasonable royalty calculation occurs before litigation. Mr. Britven’s opinion did not establish whether the Heinz verdict was comparable to a hypothetical reasonable royalty. His opinion also failed to establish that the technology in the Heinz case was comparable, so the court struck the portions of Mr. Britven’s expert reports discussing the Heinz litigation and precluded any testimony regarding the same.

Mars, Inc. v. TruRX LLC, et al., 13-cv-526 (E.D. Tex. Apr. 18, 2016)