Plantronics, Inc. v. ALIPH, INC. et al

Filing 326

ORDER RE PLAINTIFFS MOTION IN LIMINE TO EXCLUDE PORTIONS OF DAMAGES EXPERT DR. GREGORY K. LEONARD by Hon. William Alsup re 301 Motion in Limine.(whalc1, COURT STAFF) (Filed on 1/10/2014)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA
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PLANTRONICS, INC.,

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Plaintiff,

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For the Northern District of California

United States District Court

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ORDER RE PLAINTIFF’S MOTION
IN LIMINE TO EXCLUDE PORTIONS
OF DAMAGES EXPERT
DR. GREGORY K. LEONARD

v.
ALIPH, INC., et al.,
Defendants.
/

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No. C 09-01714 WHA

For our upcoming trial, plaintiff Plantronics, Inc. seeks lost profits and reasonable

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royalties. In opposition, for purposes of a hypothetical negotiation, defendants Aliph, Inc. and

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Aliphcom, Inc. have disclosed an expert report that assumes (without proof) that a particular

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unasserted patent owned by a third-party (United States Patent No. 6,944,307) and covering the

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Freebit “C type” technology (1) would have been an “acceptable non-infringing substitute” for

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purposes of lost profits and (2) a license thereto would have supplied a “comparable license” rate

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for purposes of a reasonable royalty opinion. Plaintiff seeks to strike all such expert testimony

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based on these assumptions, given that, plaintiff says, the assumptions lack foundation.

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With respect to comparability, however, a jury could reasonably conclude on the face of

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the two patents that the two patents are comparable, so on that foundation alone, Dr. Gregory K.

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Leonard may give his testimony on comparability and reasonable royalty. The motion is

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DENIED as to this aspect.

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With respect to acceptable non-infringing substitutes, however, there is no such easy
possibility. Dr. Leonard is a mere economist, not a technical expert and cannot opine that the
’307 patent was an acceptable non-infringing substitute. Nonetheless, the possibility exists that

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through skillful cross-examination of plaintiff’s witnesses and/or other evidence, the trial

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evidence may develop in a way for the jury to reasonably conclude that the ’307 patent presented

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an acceptable non-infringing substitute to the asserted patent, thus supplying the missing

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foundation. By the time Dr. Leonard is called to the stand, we will know the state of the record

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and whether (or not) such foundation has been laid. Meanwhile, no reference to Dr. Leonard and

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the Freebit technology as an acceptable non-infringing substitute may be made in the presence of

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the jury.

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The foregoing ruling is without prejudice to the further issue as to which side has the
burden of proof on the existence (or not) of acceptable non-infringing substitutes, a legal
question yet to be decided (except to note that Panduit Corp. v. Stahlin Bros. Fibre Works, Inc.,

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For the Northern District of California

United States District Court

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575 F.2d 1152, 1156 (6th Cir. 1978), has indeed been approved by the Federal Circuit for

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proving lost profits).

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IT IS SO ORDERED.

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Dated: January 10, 2014.

WILLIAM ALSUP
UNITED STATES DISTRICT JUDGE

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