A Blog About Intellectual Property Litigation and the District of Delaware


Entries for tag: experts

Yesterday, Judge Andrews excluded testimony by an expert that improperly advanced a "practicing the prior art" defense. It has been firmly established that "practicing the prior art" is not a defense to literal infringement, and thus is not a proper subject for expert testimony. It is acceptable, however, for litigants to argue that if a patentee interprets a claim broadly for infringement purposes, the claim will read on the prior art ("that which infringes, if later, would anticipate, if earlier," the corollary of the proverbial "nose of wax" principle that prohibits parties from taking one view of claim scope for infringement purposes and another for invalidity).

Dollar Bills
Sharon McCutcheon, Unsplash

Chief Judge Stark today released his opinion on post-trial motions in Roch Diagnostics Co. v. Meso Scale Diagnostics, LLC, C.A. No. 17-189-LPS (D. Del.), following a jury trial last year that resulted in a $137m verdict and a finding of willfulness.

Damages Award on 65% Royalty Theory Confirmed

The Court denied a post-trial motion to undo the jury's damage finding, which equated to an approximately 65% royalty rate (or more, depending on the royalty base).

Interestingly, the jury awarded damages after a one-sided royalty rate presentation by Roche, the accused infringer. The Court had previously excluded the patentee's damages expert's opinion as to the royalty rate, because it used the wrong date …

Mirrored
Mirrored Alex Iby, Unsplash

Last month, Judge Burke struck "a substantial portion" of an expert's infringement report after the expert relied on his own anonymous peer review to prove infringement, without disclosing that he had been the author.

The truth did not come out until the deposition.

The Expert Secretly Relied On His Own Prior Anonymous Writing

Plaintiffs in this action allege infringement only via the doctrine of equivalents, arguing that the differences between the accused drug and the claimed drug are insubstantial. Defendant argues that the differences are substantial, relying in part on a 2016 article showing that the accused drug performs significantly better than the claimed drug.

Plaintiffs' expert reports criticized the 2016 article based on two …