Inventor can testify as to factual basis for damages -- District of Utah


We're catching on some recent cases, and found quite a few interesting damages decisions that have issued in the past few months. The following is a summary of one of those cases, handed down by Judge Ted Stewart from the District of Utah. The case suggests that one need not have a formal damages expert to support its case of reasonable royalties or lost profits. Rather, a credible and knowledgable fact witness can introduce that facts that support your damages case. Hope you find this informative.

The case (click here) is Phillip M. Adams & Assoc., LLC v. Winbond Electronics Corp., Case No. 1:05-CV-64 TS (D. Utah Sept. 14, 2010) (Stewart, J).The plaintiff sought to use testimony from theinventor (Dr. Adams) of the patents-in-suit, whoalso happened to be aprincipal of the plaintiff. The defendants moved to exclude Dr. Adams from testifying as a damages expert because, as he admitted, he is not a damages expert.The plaintiffs argued that they were not offering Dr. Adams as a damages expert, but that his testimony should be admitted for the factual underpinnings of its reasonable royalty case.

The court agreed with the plaintiff andheld that Dr. Adams could testify as a fact witness as to the amount of previous licenses for the patents and the price at which plaintiff would have offered a license. The court stated that it is proper for a fact witness like Dr. Adams to testify on various Georgia-Pacific factors that are relevant to the damages analysis, including demand for the patented product, provided a foundation is shown. The court did remark, however, that Dr. Adams could not testify as to the application of those factors under Georgia-Pacific because he is not a damages expert. The court noted that other courts have allowed patent owners to offer valuations based on straightforward common sense calculations (citing Lifewise Master Funding v. Telebank, 374 F.3d 917, 929 (10th Cir. 2004)).