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

September 25, 2025

In considering claims to a method of reducing cardiovascular events, the Federal Circuit held that the term a “clinically proven effective” amount did not render the claims patentable over the prior art. Specifically, the Federal Circuit held that the “clinically proven effective” amount, whether limiting or not, could not be used to distinguish the prior art because the claims also specified the exact amount of the drugs to be administered in the method. The Federal Circuit also rejected patentee’s evidence of unexpected results because that evidence was tied solely to the “clinically proven effective” limitation.

...

Read More

IP Newsflash

September 24, 2025

The Federal Circuit reversed a district court’s denial of judgment as a matter of law on non-infringement, thereby setting aside a $106 million jury verdict, after holding that prosecution history estoppel barred the patentee from asserting infringement under the doctrine of equivalents.

...

Read More

IP Newsflash

September 17, 2025

A magistrate judge in the District of Delaware issued a Report and Recommendation, that found the sole asserted claim was a “single means” claim and therefore invalid for lack of enablement. In reaching that conclusion, the magistrate judge rejected the patentee’s argument that the preamble of the claim disclosed a second element that satisfied the combination requirement of Section 112, paragraph 6 because the preamble simply recited a descriptor of the very apparatus that was the subject of the means-plus-function limitation in the body of the claim. The district court judge presiding over this case has scheduled a hearing to review the magistrate’s ruling.

...

Read More

IP Newsflash

September 9, 2025

The Federal Circuit has affirmed the PTAB’s determination that a patent challenger did not show the challenged claims were unpatentable for obviousness. The Federal Circuit concluded that substantial evidence, which included expert testimony, showed there was no motivation to combine the references.

...

Read More

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

© 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.