District Court: Accused Infringer Bears the Burden of Timely Raising a Non-Infringing Alternatives Theory

April 25, 2024

Reading Time : 2 min

In a patent infringement case, the district court granted plaintiff’s motion to strike portions of defendant’s technical expert’s rebuttal report on the basis that defendant failed to timely disclose non-infringing alternatives earlier in the case. In reaching this decision, the court found that a theory of non-infringing alternatives is akin to an affirmative defense, and therefore a defendant cannot wait until rebuttal to disclose that theory.

In his rebuttal report, defendant’s technical expert opined that there were non-infringing alternatives to the accused invention. The availability of non-infringing alternatives may reduce the amount of damages available under a reasonable royalty. Plaintiff moved to strike defendant’s non-infringing alternatives opinion, arguing that the opinion was untimely because it was included in the expert’s rebuttal but not his opening report, prejudicing plaintiff in its ability to have its expert address the allegations of non-infringing alternatives in a rebuttal report without leave of the court.

The court agreed with plaintiff that defendant’s arguments about non-infringing alternatives in the rebuttal report were untimely. The court found that it is defendant’s burden to show that an alternative is non-infringing, and therefore the defendant’s expert should have offered the opinion in his opening report and not waited until his rebuttal to first present the theory. The court rejected defendant’s argument that it was proper to wait to raise non-infringing alternatives because it is plaintiff’s burden to prove damages and defendant needed to have plaintiff’s opening infringement expert report before it could respond with its position on non-infringing alternatives. Non-infringing alternatives, the court reasoned, are not required to prove a reasonable royalty and, therefore, not a “negative defense” that can be raised in rebuttal. Further, non-infringing alternatives serve to limit reasonable royalty damages to the advantage of defendants and therefore, similar to an affirmative defense, should be a defendant’s burden to raise. The court also found defendant’s late disclosure of non-infringing alternatives in a rebuttal report to be prejudicial because plaintiff would not have had an opportunity to respond to those arguments without leave of court.

Separately, the court also found that defendant’s technical expert’s opinion on non-infringing alternatives should be stricken as irrelevant because none of defendant’s experts provided a financial analysis of the impact of non-infringing alternatives on reasonable royalty damages.

Practice Tip: Defendants who wait to disclose arguments surrounding non-infringing alternatives until a rebuttal expert report risk having that theory stricken as untimely. Accordingly, defendants should raise non-infringing alternative theories early in the case, akin to an affirmative defense for which they bear the burden of proof.

Correct Transmission, LLC v. Nokia of America Corp., No. 2:22-cv-00343-JRG-RSP, D.I. 244 (E.D. Tex. Mar. 26, 2024) (Payne, Mag.).

Share This Insight

Previous Entries

IP Newsflash

August 29, 2025

In a recent order addressing four IPR proceedings, the PTAB exercised its inherent authority under 37 C.F.R. § 42.5(a) to sua sponte authorize post-hearing discovery on a potentially dispositive privity issue. The order followed a Director review decision that vacated and remanded earlier IPRs involving the same parties, patent family, and privity issue. 

...

Read More

IP Newsflash

August 29, 2025

The Patent Trial and Appeal Board denied institution of an inter partes review petition in part because it determined that a patent reference was not prior art under the common ownership exception of pre-AIA 35 U.S.C. § 103(c)(1).

...

Read More

IP Newsflash

August 11, 2025

In considering a motion to dismiss infringement claims for two related patents, the District of Massachusetts recently held that pre-suit knowledge of a “parent” patent, without more, is insufficient to establish pre-suit knowledge of the “child” patent for purposes of indirect and willful infringement.

...

Read More

IP Newsflash

August 8, 2025

Following a jury verdict finding trade secret misappropriation, the District Court for the District of Massachusetts granted-in-part a plaintiff’s motion for a permanent injunction to prohibit defendants from using plaintiff’s trade secrets. The district court further required defendants to reassign to plaintiff patents and patent applications that disclosed or were derived from plaintiff’s trade secrets as part of its equitable relief.

...

Read More

IP Newsflash

August 6, 2025

In ruling on a recent motion to strike, a judge in the Eastern District of Texas permitted a damages expert to rely on a damages theory based on defendant’s “avoided costs,” holding that this theory did not run afoul of the “entire market value rule.”

...

Read More

IP Newsflash

August 5, 2025

The Federal Circuit recently vacated a decision by the Patent Trial and Appeal Board after concluding that the board’s analysis of licensing evidence offered as a secondary consideration of nonobviousness constituted legal error and was not supported by substantial evidence. According to the court, the board applied a more exacting and improperly heightened nexus standard than is required by law for license evidence.

...

Read More

IP Newsflash

August 5, 2025

A Northern District of California judge recently granted a motion to reconsider his summary judgment ruling that defendant was barred from raising certain “device art” due to IPR estoppel under 35 U.S.C. § 315(e)(2). In the original ruling, the judge adopted the broader rule that IPR estoppel applies to device art that is “materially identical” to patents or printed publications that petitioners raised, or could have raised, in an IPR. Following that ruling, however, the Federal Circuit issued its Ingenico decision adopting the narrower view that IPR estoppel applies only to “grounds” based on patents and printed publications and not to device-based grounds. Citing Ingenico as a “change of law,” defendant moved for reconsideration of the court’s ruling, and the court granted the motion.

...

Read More

IP Newsflash

August 5, 2025

In a recent decision designated as Informative, the USPTO Director determined that the Patent Trial and Appeal Board abused its discretion by instituting two inter partes review proceedings challenging the same patent, based on petitions advancing different constructions of the same claim term. The Director expressed concerns that permitting multiple petitions based on alternative claim constructions effectively circumvents word count limitations, strains board resources, and undermines procedural efficiency.

...

Read More

© 2025 Akin Gump Strauss Hauer & Feld LLP. All rights reserved. Attorney advertising. This document is distributed for informational use only; it does not constitute legal advice and should not be used as such. Prior results do not guarantee a similar outcome. Akin is the practicing name of Akin Gump LLP, a New York limited liability partnership authorized and regulated by the Solicitors Regulation Authority under number 267321. A list of the partners is available for inspection at Eighth Floor, Ten Bishops Square, London E1 6EG. For more information about Akin Gump LLP, Akin Gump Strauss Hauer & Feld LLP and other associated entities under which the Akin Gump network operates worldwide, please see our Legal Notices page.