M2M Solutions LLC v. Enfora Inc. et al

Filing 216

MEMORANDUM OPINION ruling on the pending motions for summary judgment and motions to exclude (D.I. 140 , 142 , 145 , and 147 ). Signed by Judge Richard G. Andrews on 3/9/2016. (nms)

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE

M2M SOLUTIONS LLC,
Plaintiff,
V.

Civil Action No. 12-32-RGA
ENFORA, INC., NOVATEL WIRELESS
SOLUTIONS, INC., and NOVATEL
WIRELESS, INC.,
Defendants.
MEMORANDUM OPINION

Richard D. Kirk, Esq., Stephen B. Brauerman, Esq., Vanessa R. Tiradentes, Esq., Sara E. Bussiere,
Esq., BAYARD, P.A., Wilmington, DE; Marc N. Henschke, Esq., FOLEY & LARDNER LLP,
Boston, MA; Jeffrey N. Costakos, Esq., Kadie Jelenchick, Esq., FOLEY & LARDNER LLP,
Milwaukee, WI; Jason J. Keener, Esq., Jeffrey J. Mikrut, Esq., FOLEY & LARDNER LLP,
Chicago, IL.
Attorneys for Plaintiff M2M Solutions LLC.
Francis DiGiovanni, Esq., Thatcher A. Rahmeier, Esq., DRINKER BIDDLE & REATH LLP,
Wilmington, DE; Christoper W. Kennerly, Esq., PAUL HASTINGS LLP, Palo Alto, CA;
Elizabeth L. Brann, Esq., Jeffrey D. Comeau, Esq., PAUL HASTINGS LLP, San Diego, CA.
Attorneys for Defendants.

March~' 2016

}), 1-•. Ji~.~

~~~'m~insTRICT JUDGE:

Presently before the Court are two summary judgment motions filed by Defendants and
two Daubert motions, one filed by Plaintiff and one by Defendants. Specifically, Defendants
filed a Motion for Summary Judgment of Non-Infringement and No Willfulness (D.I. 145), a
Motion for Summary Judgment on Damages Issues (D.I. 142), and a Motion to Exclude M2M's
Experts Richard Bero and Whitey Bluestein (D.I. 147). 1 Plaintiff filed a Motion to Exclude
Opinions of Dr. Choi. (D.I. 140). The motions are fully briefed. (D.I. 141, 144, 146, 148, 172,
174, 176, 179, 188, 194, 195, 196).

I.

BACKGROUND
On January 13, 2012, PlaintiffM2M Solutions LLC filed five related patent infringement

actions asserting infringement of U.S. Patent Nos. 8,094,010 ("the '010 patent") and 7,583,197
("the '197 patent"). The Court held a Markman hearing, after which it invalidated the '197
patent and construed several claim terms in the '010 patent. (D.I. 90). The Court issued separate
Memorandum Opinions on summary judgment motions (the "Telit SJ opinion") and Daubert
motions (the "Telit Daubert opinion") in Plaintiffs related case against Telit. (C.A. No. 12-33RGA, D.I. 247, 295). The parties have since agreed to withdraw certain arguments made in the
present motions, conceding that the reasoning of the Telit SJ opinion applies with equal force to
certain issues raised here. (D.I. 201 at 1-3).
The '010 patent claims a "programmable communicator device" that is capable of
receiving transmissions, authenticating them using a particular form of coded number
authentication, and storing numbers from authenticated transmissions in a list of permitted
callers. ('010 patent, abstract & claim 1). The patent further contemplates a device that is

1

Unless otherwise specifically noted, all references to the docket refer to Civil Action No. 12-32-RGA.

2

remotely programmable and that allows for remote data monitoring, "which can be used to relay
information about the status of a remote piece of technical equipment such as a vending
machine." (Id. col. 3, 11. 43-47; id. col. 4, 11. 3-7; id. col. 7, 11. 24-30).

II.

LEGAL STANDARDS
A.

Summary Judgment

"The court shall grant summary judgment if the movant shows that there is no genuine
dispute as to any material fact and the movant is entitled to judgment as a matter oflaw." FED.
R. CN. P. 56(a). The moving party has the initial burden of proving the absence of a genuinely
disputed material fact relative to the claims in question. Celotex Corp. v. Catrett, 477 U.S. 317,
330 (1986). Material facts are those "that could affect the outcome" of the proceeding, and "a
dispute about a material fact is 'genuine' if the evidence is sufficient to permit a reasonable jury
to return a verdict for the nonmoving party." Lamont v. New Jersey, 637 F.3d 177, 181 (3d Cir.
2011) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). The burden on the
moving party may be discharged by pointing out to the district court that there is an absence of
evidence supporting the non-moving party's case. Celotex, 477 U.S. at 323.
The burden then shifts to the non-movant to demonstrate the existence of a genuine issue
for trial. Matsushita Elec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 586-87 (1986);
Williams v. Borough of West Chester, Pa., 891F.2d458, 460-61 (3d Cir. 1989). A non-moving
. party asserting that a fact is genuinely disputed must support such an assertion by: "(A) citing to
particular parts of materials in the record, including depositions, documents, electronically stored
information, affidavits or declarations, stipulations ... , admissions, interrogatory answers, or
other materials; or (B) showing that the materials cited [by the opposing party] do not establish
the absence ... of a genuine dispute .... " FED. R. CN. P. 56(c)(l).

3

When determining whether a genuine issue of material fact exists, the court must view
the evidence in the light most favorable to the non-moving party and draw all reasonable
inferences in that party's favor. Scott v. Harris, 550 U.S. 372, 380 (2007); Wishkin v. Potter,
476 F.3d 180, 184 (3d Cir. 2007). A dispute is "genuine" only if the evidence is such that a
reasonable jury could return a verdict for the non-moving party. Anderson, 477 U.S. at 247-49.
If the non-moving party fails to make a sufficient showing on an essential element of its case
with respect to which it has the burden of proof, the moving party is entitled to judgment as a
matter oflaw. See Celotex Corp., 477 U.S. at 322.

B.

Daubert

Federal Rule of Evidence 702 sets out the requirements for expert witness testimony and
states:
A witness who is qualified as an expert by knowledge, skill, experience, training,
or education may testify in the form of an opinion or otherwise if: (a) the expert's
scientific, technical, or other specialized knowledge will help the trier of fact to
understand the evidence or to determine a fact in issue; (b) the testimony is based
on sufficient facts. or data; (c) the testimony is the product of reliable principles and
methods; and (d) the expert has reliably applied the principles and methods to the
facts of the case.
FED. R. EVID. 702. The Third Circuit has explained:
Rule 702 embodies a trilogy of restrictions on expert testimony: qualification,
reliability and fit. Qualification refers to the requirement that the witness possess
specialized expertise. We have interpreted this requirement liberally, holding that
"a broad range of knowledge, skills, and training qualify an expert." Secondly, the
testimony must be reliable; it "must be based on the 'methods and procedures of
science' rather than on 'subjective belief or unsupported speculation'; the expert
must have 'good grounds' for his o[r] her belief. In sum, Daubert holds that an
inquiry into the reliability of scientific evidence under Rule 702 requires a
determination as to its scientific validity." Finally, Rule 702 requires that the expert
testimony must fit the issues in the case. In other words, the expert's testimony
must be relevant for the purposes of the case and must assist the trier of fact. The
Supreme Court explained in Daubert that "Rule 702's 'helpfulness' standard
requires a valid scientific connection to the pertinent inquiry as a precondition to
admissibility."
4

By means of a so-called "Daubert hearing," the district court acts as a gatekeeper,
preventing opinion testimony that does not meet the requirements of qualification,
reliability and fit from reaching the jury. See Daubert ("Faced with a proffer of
expert scientific testimony, then, the trial judge must determine at the outset,
pursuant to Rule 104(a) [of the Federal Rules of Evidence] whether the expert is
proposing to testify to (1) scientific knowledge that (2) will assist the trier of fact
to understand or determine a fact in issue.").

Schneider ex rel. Estate ofSchneider v. Fried, 320 F.3d 396, 404-05 (3d Cir. 2003) (footnote
and internal citations omitted). 2
The party offering expert testimony bears the burden of proving its admissibility by a
preponderance of the evidence. See Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 592
n. l 0 (1993). In the context of calculating a reasonably royalty in a patent case under 35 U.S.C. §
284, the Federal Circuit has explained that "damages awarded for patent infringement must
reflect the value attributable to the infringing features of the product, and no more." CSIRO v.

Cisco Sys., Inc., 809 F.3d 1295, 1301 (Fed. Cir. 2015) (internal quotation marks omitted).
"[G]iven the great financial incentive parties have to exploit the inherent imprecision in patent
valuation, courts must be proactive to ensure that the testimony presented-using whatever
methodology-is sufficiently reliable to support a damages award." Id. Further, the Federal
Circuit has "consistently explained that proof of damages must be carefully tied to the claimed
invention itself" Apple Inc. v. Motorola, Inc., 757 F.3d 1286, 1324 (Fed. Cir. 2014); see also

VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1327 (Fed. Cir. 2014) ("[T]his court has
consistently held that a reasonable royalty analysis requires a court to ... carefully tie proof of
damages to the claimed invention's footprint in the market place." (alteration in original)
(internal quotation marks omitted)). "While questions regarding which facts are most relevant

2

The Court of Appeals wrote under an earlier version of Rule 702, but later amendments to it were not intended
to make any substantive change.

5

for calculating a reasonable royalty are properly left to the jury, a critical prerequisite is that the
underlying methodology be sound." VimetX, 767 F.3d at 1328. "[T]he essential requirement for
reliability under Daubert is that the ultimate reasonable royalty award must be based on the
incremental value that the patented invention adds to the end product." CSIRO, 809 F.3d at 1301
(internal quotation marks omitted).

III.

DISCUSSION
A.

Defendants' Motion for Summary Judgment of Non-Infringement and No
Willfulness (D.I. 145)

Defendants' non-infringement and no willfulness motion raises three principal issues.
First, Defendants argue that their accused products do not infringe because they do not satisfy the
"permitted callers" limitation of the '010 patent. (D.I. 146 at 14-19). Second, they argue that
the '010 patent is not drawn to functional capability and that proving infringement therefore
requires a showing, not made by Plaintiff, that the accused products have actually performed the
function of authenticating incoming transmissions. (Id. at 19-22). Third, Defendants argue that
they are entitled to summary judgment of no willful infringement. (Id. at 23-24). 3
In the Telit SJ opinion, I recently addressed the same issues that Defendants raise in their
second and third arguments here. (C.A. No. 12-33-RGA, D.I. 247 at 7-14, 33-35). Specifically,
I held that the "claims at issue here only require capability of performing the recited function."
(Id. at 14). Defendants subsequently conceded that this holding applies to their second argument

3
Defendants also separately brief an argument that there is no indirect infringement. (D.I. 146 at 22-23). This
section of their brief, however, merely argues that Plaintiff has not proved any underlying direct infringement, by
rehashing Defendants' non-infringement arguments. (Id.). Accordingly, Defendants' motion for summary judgment
of no indirect infringement will be denied for the same reasons set forth regarding their literal infringement arguments.
Defendants also move for summary judgment of no infringement under the doctrine of equivalents, arguing that
Plaintiff and its experts have not alleged any theory of infringement under the doctrine of equivalents. (D.I. 146 at
22). Plaintiff essentially admits that it has no doctrine of equivalents infringement theory by declining to respond to
this argument in its briefing. Accordingly, because Plaintiff does not present any disputed issues of material fact or
credible legal arguments, Defendants are entitled to summary judgment of no infringement under the doctrine of
equivalents.

6

here, and "agree[ d] to withdraw [their] motion for summary judgment on these grounds only."
(D.I. 201 at 1). Accordingly, Defendants are not entitled to summary judgment on these
grounds. In the Telit case, I also held that Telit was entitled to summary judgment of no
willfulness, because with the '010 patent having issued mere days before the suit was filed,
M2M did not "present[] evidence of pre-suit knowledge or conduct tending to establish objective
recklessness." (C.A. No. 12-33-RGA, D.I. 247 at 35). As this issue was decided as a matter of
law and the facts are the same, Plaintiff subsequently "agree[ d] that the Court's ruling as to Telit
should apply to [Defendants] as well." (D.I. 201 at 2). Accordingly, Defendants are entitled to
summary judgment of no willfulness for the reasons set forth in the Telit SJ opinion. (C.A. No.
12-33-RGA, D.I. 247 at 33-35).
With respect to its remaining argument regarding the "permitted caller" limitation,
Defendants argue that the accused products do not meet the permitted caller limitation because
the accused products "do not accept only calls from permitted callers, and reject all calls from
non-permitted callers, as the 'permitted callers' limitation requires." (D.I. 146 at 14).
Defendants argue that this Court's claim construction inherently requires that the "device reject
or ignore calls from non-permitted callers-i.e., callers whose numbers are not contained in the
'permitted callers' list." (Id. at 15). Plaintiff's infringement theory is that two features in the
accused products can serve as a permitted callers list under the Court's construction: (1) the
SMSDA White List, or (2) the Friends Firewall. (Id. at 16 (citing D.I. 152-2 at 10-12, irir 3843)). Defendants assert that their expert, Dr. Negus, tested the accused SMSDA White List and
Friends Firewall features in the accused products and concluded that "even when the lists were
enabled and populated with a telephone number or IP address, the accused products still did not
reject or ignore such incoming calls from non-permitted callers." (Id. at 16 (citing D.I. 152-7 at

7

ifif 71, 73, 75, 77, & 189)). Thus, Defendants argue that, because Plaintiff does not contest the
validity of these results per se, Defendants' "evidence is unrebutted that the accused products do
not reject many types ofreal 'calls' ... from unlisted numbers and addresses,'' and therefore do
not infringe. (Id. at 17).
Plaintiff argues that Defendants do "not dispute that the SMSDA white list and the
Modem Friends firewall list features in its accused products may well be capable of screening
'certain types' of incoming calls in the manner required by the Court's construction," but instead
Defendants merely argue that these features are not permitted callers lists because they do not.
automatically reject all incoming calls from numbers not included in the lists. (D.I. 172 at 1920). Plaintiff asserts that Defendants misconstrue the Court's construction of "permitted caller"
to require a permitted callers list to automatically screen all types of incoming calls. (Id. at 20).
Accordingly, Plaintiff contends that the Court's construction "simply requires that a 'permitted
callers' list be capable of screening one or more types of incoming calls in the recited fashion."
(Id.). Plaintiff suggests that, under the '010 patent and the court's construction, "a 'permitted

callers' list can permissibly be designed to selectively screen only certain types of incoming calls
and not others." (Id. at 20-21). Thus, Plaintiff's expert Dr. Nettleton opines that these features
of the accused products can act to screen a certain type of incoming message, "in exactly the
mannerrequiredbythecourt'sconstruction." (Id. at21 (citingD.I.173-4at17-18,if24)).
A patent is infringed when a person "without authority makes, uses or sells any patented
invention, within the United States ... during the term of the patent .... " 35 U.S.C. § 271(a). A
two-step analysis is employed in making an infringement determination. See Markman v.

Westviewinstruments, Inc., 52 F.3d 967, 976 (Fed. Cir. 1995) (en bane), aff'd, 517 U.S. 370
(1996). First, the court must construe the asserted claims to ascertain their meaning and scope.

8

See id. Second, the trier of fact must then compare the properly construed claims with the

accused infringing product. See id. This second step is a question of fact. See Bai v. L & L
Wings, Inc., 160 F.3d 1350, 1353 (Fed. Cir. 1998).

"Literal infringement of a claim exists when every limitation recited in the claim is found
in the accused device." Kahn v. Gen. Motors Corp., 135 F.3d 1472, 1477 (Fed. Cir. 1998). "If
any claim limitation is absent from the accused device, there is no literal infringement as a matter
oflaw." Bayer AG v. Elan Pharrn. Research Corp., 212 F.3d 1241, 1247 (Fed. Cir. 2000). If an
accused product does not infringe an independent claim, it also does not infringe any claim
depending thereon. See Wahpeton Canvas Co. v. Frontier, Inc., 870 F.2d 1546, 1553 (Fed. Cir.
1989). The patent owner has the burden of proving infringement and must meet its burden by a
preponderance of the evidence. See SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d
· 878, 889 (Fed. Cir. 1988). When an accused infringer moves for summary judgment of noninfringement, such relief may be granted only if at least one limitation of the claim in question
does not read on an element of the.accused product, either literally or under the doctrine of
equivalents. See Chimie v. PPG Indus., Inc.; 402 F.3d 1371, 1376 (Fed. Cir. 2005); see also
TechSearch, L.L.C. v. Intel Corp., 286 F.3d 1360, 1369 (Fed. Cir. 2002) ("Summary judgment of

noninfringement is ... appropriate where the patent owner's proof is deficient in meeting an
essential part of the legal standard for infringement, because such failure will render all other
facts immaterial."). "Thus, summary judgment of non-infringement can only be granted if, after
viewing the alleged facts in the light most favorable to the non-movant, there is no genuine issue
as to whether" the accused product is covered by the claims (as construed by the court). Pitney
Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1304 (Fed. Cir. 1999).

9

I conclude that Defendants are not entitled to summary judgment based on their argument
that the "permitted caller" limitation is not met, as they misconstrue what the '010 patent and my
claim construction require. The relevant claim limitation reads as follows:
A memory module for storing the at least one telephone number or IP address from
the authenticated transmission as one of one or more permitted callers if the
processing module authenticates the at least one transmission by determining that
the at least one transmission includes the coded number ....
('010 patent, claim 1 (col. 12, 11. 38-43)). I construed the term permitted caller to mean "[a]
telephone number or IP address on a list of numbers that are designated to cause the
programmable communicator to accept an incoming call received from that number." (D.I. 90 at
6-8). In the Telit SJ opinion, I held that the "memory module" claim limitation of the '010
patent, where the permitted caller term appears, is drawn to functional capability. (C.A. 12-33RGA, D.I. 247 at 9-10; id. at 12-13 ("The language of the 'memory module' claim limitation
similarly provides additional structure to describe the operation of the stated 'storing' function ..
I conclude that the '010 patent contains apparatus claims with functional limitations .... ")). 4
The fact that the memory module limitation is directed to functional capability means that
the infringement inquiry with regard to this limitation is whether the accused feature is capable
of performing the function of storing telephone numbers or IP addresses from authenticated
transmissions in a permitted callers list. ('010 patent, col. 12, 11. 38-43). To meet the permitted
caller term within that limitation, in turn, the features accused of meeting that limitation must be
capable of "caus[ing] the programmable communicator to accept an incoming call received"
from a number on the list. (D.1. 90 at 6-8). Defendants' position is that the converse of my
construction of permitted caller must be true, in other words, that my construction implicitly

4
The Telit SJ opinion gives a detailed explanation of my conclusion that the '010 patent claims an apparatus
with certain functional capabilities. (C.A. No. 12-33-RGA, D.I. 247 at 7-14).

10

requires that a permitted callers list "not accept" calls from numbers not on the list. Even
assuming this is the case, 5 this limitation is still directed to functional capability, meaning an
accused product would .still infringe if it were capable of "not accepting" or screening calls from
numbers not on the permitted callers list. In other words, even under this interpretation, the
capability-driven claims would not require the permitted callers list to indiscriminately reject
every call from a non-listed number. Instead, they would require that the product provide a user
with the capability to employ the permitted callers list to screen communications in this manner.
Plaintiff's expert, Dr. Nettleton, opines that the SMSDA white list "can store up to five
different telephone numbers corresponding to remote devices" and "[t]he telephone numbers
stored in populated SMSDA white lists are the only originating telephone numbers from which
the Enabler IIIG modules will accept incoming specially formatted AT Commands Over SMS
data messages for processing by their firmware.;' (D.I. 152-2 at 10, ifif 38-39). If incoming
commands are from a number on the white list, he opines that "the 'Firmware Components' will
process and execute any AT commands contained in the incoming ... message," but ifthe
number is not on the list, "the firmware will not accept the incoming specially formatted SMS
data message for processing, and will not execute any AT commands contained therein." (Id. at
10, if 39). Dr. Nettleton provides a similar opinion as to the accused products' Modem Friends
firewall feature. (Id. at 11-12, ifif 41-43). On the other hand, the opinions offered by
Defendants' expert, Dr. Negus, do not refute that the accused products are capable of using the
accused features in the manner described by Dr. Nettleton. Instead, Dr. Negus ran tests on these

5

Although not argued or briefed, the parties seem to agree that my construction of "permitted caller" implicitly
requires a permitted callers list to cause-or, in Plaintiffs case, be capable of causing-the programmable
communicator device to not accept (e.g., to reject) incoming calls received from numbers not stored in the permitted
callers list. (D.I. 146 at 15; D.I. 172 at 8). I need not now decide whether this is actually the case, as the issue has not
been briefed and would not alter my present decision to deny summary judgment of non-infringement.

11

SMSDA white list and Modem Friends firewall features, with and without numbers populated in
the lists, and concluded that the devices do not reject certain types of calls from numbers not on
the list, such as SMS messages, telephone calls, and Skype calls over a wireless network. (D.I.
152-7 at 13-15, iMf 73, 75, & 77). Specifically, Dr. Negus opines that calls from unlisted
numbers ring and can be answered, and messages go through. (Id.).
While Dr. Negus's testimony may be unrebutted in showing that the accused products do
not automatically reject all types of calls from numbers not on a permitted callers list, it does
nothing to assist the trier of fact in its relevant inquiry into whether the accused products are
capable of employing the SMSDA white list or Modem Friends firewall features in a manner
consistent with the permitted caller limitation. As Plaintiff puts it, Dr. Negus's product testing
"denionstrat[ es] the unremarkable proposition that the accused 'permitted callers' list features do
not serve to screen certain types of incoming calls that they are not designed to screen." (D.I.
172 at 14). Plaintiff further explains that "the accused SMSDA white lists are designed to screen
a certain specially formatted type of incoming SMS data messages," and "the accused Modem
Friends firewall lists are designed to screen a certain specially formatted type of incoming
UPD/IP data messages," yet Dr. Negus only shows that these features do not screen other types
of incoming transmissions that they are not designed to screen. (Id. at 14-15 (citing D.I. 152-7
at 11-16, iii! 68-82)).
Aside from the fact that the '010 patent claims functional capability, Defendants' noninfringement argument is fundamentally inconsistent with my claim construction in another
respect. In the claim construction opinion, I rejected Defendants' argument that the specification
required the permitted callers list to cause the device to ring or answer (as opposed to using
"accept"), reasoning that "Defendants' construction that would require the programmable

12

communicator to 'ring or answer' is too narrow." (D.I. 90 at 8). I explained that requiring a ring
or answer "would read the optional features of a described embodiment into the claims," when
"other disclosed embodiments ... are based on data messages that do not require the answering
limitation." (Id. (citing '010 patent, col. 3, 11. 43-52; id. col. 4, 11. 8-13)). I subsequently denied
Plaintiff's motion for reconsideration that sought to change the word "call," in the construction
of permitted caller, to "transmission," again reiterating that my original construction did not read
out "disclosed embodiments, or their accompanying data messages," such as "circuit-switched
calls, SMS data messages, and packet-switched data messages." (D.1. 107 at 4).
Defendants' position now is that the converse of my construction of"permitted caller"
must be true, in other words, that my construction implicitly requires that a permitted callers list
"not accept" calls from numbers not on the list. (D.I. 146 at 15). Even ifthat is the case,
however, the fact that I expressly declined to limit the term "accept" to "ring or answer" is
significant. (D.I. 90 at 8). Under my construction, the word call is not limited to a telephone call
and accept is not limited to ring or answer. Accordingly, demonstrating that messages from
numbers not on the permitted callers list simply go through (e.g., are received) does not
necessarily establish that there has been "acceptance" for purposes ofthis claim construction,
because "accepting" is not limited to ringing, answering, or, by extension, merely going through.
This seems especially true when the underlying purpose of a message is to send a command to
reprogram the device, with information contained in the "accompanying data messages." (D.I.
107 at 4). Indeed, the specification of the '010 patent clearly contemplates that the
programmable communicator device can be reprogrammed through commands contained in
messages from permitted callers, in the manner described by Dr. Nettleton in his opinion. ('010
patent, col. 4, 11. 8-13; id. col. 10, 11. 1-22). Therefore, the accused features would still be acting

13

as a permitted callers list by not processing and executing programming commands-by not
accepting them-from telephone numbers not on the permitted callers list. This is precisely the
form of non-acceptance Dr. Nettleton suggests in his opinion, where he asserts that the accused
products do not accept and execute programming commands (contained in SMS messages) that
come from numbers not on the permitted callers list. (D.I. 152-2 at 10-12, iJiI 38-43).
Accordingly, Dr. Nettleton's opinions, that the accused SMSDA white list and Modem Friends
firewall features can operate in a manner consistent with the court's construction of permitted
callers, should be submitted to the jury.
For the reasons discussed above, Defendants have not established that there are no
genuine issues of material fact as to whether the accused products meet the permitted caller
limitation. Therefore, Defendants are not entitled to summary judgment of non-infringement on
these grounds. See Pitney Bowes, 182 F.3d at 1304.

B.

Plaintiff's Motion to Exclude Opinions of Dr. Choi (D.I. 140)

The second Georgia-Pacific factor, which is implicated by this Daubert motion, looks at
"[t]he rates paid by the licensee for the use of other patents comparable to the patent in suit."
Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116, 1120 (S.D.N.Y. 1970). "This

factor examines whether the licenses relied upon ... in proving damages are sufficiently
comparable to the hypothetical license at issue in suit." Lucent Techs, Inc. v. Gateway, Inc., 580
F.3d 1301, 1325 (Fed. Cir. 2009). "[T]here must be a basis in fact to associate the royalty rates
used in prior licenses to the particular hypothetical negotiation at issue." Uniloc USA, Inc. v.
Microsoft Corp., 632 F.3d 1292, 1317 (Fed. Cir. 2011). It is improper to "rely on license

agreements that were radically different from the hypothetical agreement under consideration to
determine a reasonable royalty." Id. at 1316 (internal quotation marks omitted). "[C]omparisons

14

of past patent licenses to the infringement must account for the technological and economic
differences between them." Worldtech Sys., Inc. v. Integrated Network Solutions, Inc., 609 F.3d
1308, 1320 (Fed. Cir. 2010) (internal quotation marks omitted). "When relying on licenses to
prove a reasonable royalty, alleging a loose or vague comparability between different
technologies or licenses does not suffice." Laser Dynamics, Inc. v. Quanta Computer, Inc., 694
F.3d 51, 79 (Fed. Cir. 2012). "The testimony of a.damages expert in a patent suit who relies on
non-comparable licenses in reaching his royalty rate should be excluded." DataQuill Ltd. v.
High Tech Computer Corp., 887 F. Supp. 2d 999, 1022 (S.D. Cal. 2011).
Defendants' damages expert, Dr. William S. Choi, relies on two license agreements to
support his reasonable royalty analysis: (1) a May 31, 2013 confidential settlement agreement
and license between Company A and Enfora ("the Company A license"), and (2) a May 29, 2012
settlement and patent license agreement between Company B and Enfora ("the Company B
license"). 6 (D.I. 143-3 at 2-10; D.I. 143-4 at 2-10). Dr. Choi opined that the hypothetical
negotiation would have taken place around January 10, 2012, the date the '010 patent issued, and
Plaintiff does not challenge this date. (D.I. 143-1 at 12, ir 21). As the above Federal Circuit
precedent makes clear, Defendants must affirmatively show that the prior licenses Dr. Choi relies
upon are actually comparable to the license that the parties would have negotiated for the '010
patent before introducing this evidence to the jury.
Plaintiff moves to exclude the testimony of Dr. Choi to the extent he relies on the
Company A and Company B license agreements, on the grounds that these licenses are not

6

In order to avoid issues about third-party confidentiality, the pseudonyms "Company A" and "Company B" are

used.

15

technologically or economically comparable to the patent-in-suit. (D.I. 141 at 4). 7 Plaintiff
asserts that the license agreements are not technologically comparable to the patent-in-suit
because they cover the narrow field of vehicle-tracking technology, as opposed to the '010
patent's broad application across industries. (Id. at 4, 10-11). Plaintiff further argues that the
two licenses are not economically comparable to the '010 patent, because they license rights to
multiple patents and are settlement agreements, entered into in a much different context than a
hypothetical negotiation involving two willing licensors. (Id. at 4, 7-9). Defendants argue that
Plaintiff has not provided any expert testimony to counter "Dr. Negus's or Dr. Choi's findings
regarding the comparability of these agreements to this case." (D.I. 176 at 9). Defendants
maintain that Dr. Choi's opinion, in relying on Defendants' technical expert, Dr. Negus,
establishes that, "Both agreements were between Enfora and a non-practicing entity, both
involved user features, and both were entered around the time of the hypothetical negotiation
date." (Id. at 8). Defendants further assert that, to the extent the licenses are not directly
comparable to the hypothetical negotiation at issue in this case, Dr. Choi's use of them was
sound because he did not extract his royalty rate from them, but instead used them as a sanity
check to confirm that his royalty analysis based on the availability of non-infringing alternatives
was reasonable. (Id. at 10).
The settlement agreement between Company A and Enfora took place on May 31, 2013,
almost a year and a half after the hypothetical negotiation at issue here. (D.I. 143-3 at 10).
Enfora agreed to pay $195,000 to settle the litigation and take a worldwide nonexclusive license
to five U.S. patents, as opposed to the single U.S. patent at issue here. (Id. at 4, 7). The license

7

Plaintiff's motion seeks only to exclude Dr. Choi's reliance on these license agreements. The motion does not
seek to exclude Dr. Choi's separate opinion as to a lump sum reasonable royalty based on an allegedly non-infringing
alternative. (D.I. 141 at 4).

16

itself was titled "GPS Patent License Agreement" and all five patents relate to vehicle-tracking
technology. (Id. at 7; D.I. 176 at 5 n.2). Dr. Choi's entire comparability analysis is as follows:
I understand from Dr. Negus that the agreement covers substantially similar
products as those accused by M2M Solutions. In addition, I understand from Dr.
Negus that the technology in this agreement addresses particular user features,
which would have greater value to users than the user feature addressed by the '010
patent. Furthermore, the agreement was between Enfora and a patent holding
company, which is similar to the parties in the hypothetical negotiation.
(D.I. 143-1 at 32, if 62 (footnotes omitted)). 8 Although Dr. Choi does not cite Dr. Negus's expert
report, Dr. Negus's report independently provides similarly nebulous statements of
comparability. Dr. Negus opines that the Company A license covers "at least some substantially
similar Enfora products to those accused by M2M of infringing the '01.0 patent," that the
Company A license and the '010 patent both "address[] only particular user features," and "the
[Company A] Patents are significantly more valuable than the '010 patent because the user
features addressed by the [Company A] Patents are of much greater value to users than the user
feature addressed by the '010 patent." (D.I. 143-6 at 4, if 437). Dr. Negus's only attempt to
relate the Company A license to the '010 patent with any specificity is his conclusion that
"Exemplary Claims of the [Company A] Patent[s] recite a 'vehicle tracking system' or a
'tracking unit for a vehicle' comprising known elements but with a functional limitation directed
to a particular condition at which certain information or status is transferred 'to a monitoring
station."' (Id.).
The settlement and patent license agreement between Company B and Enfora was
entered into

~n

May 29, 2012, only several months after the hypothetical negotiation here. (D.I.

143-4 at 10). Enfora agreed to pay $145,000 to settle the litigation and take a worldwide, non-

8
To support these propositions, Dr. Choi cites generally to "Discussions with Dr. Kevin Negus, Novatel's
Technical Expert." (D.I. 143-1 at 32 nn. 99, 101-02).

17

exclusive license to U.S. Patent No. 5,223, 844, titled "Vehicle Tracking and Security." (Id. at 2,
4). The agreement indicated that Company B calculated a settlement payment of $290,000, but
agreed to a discount of 50% "in recognition of early settlement and other considerations." (Id. at
4). Dr. Choi provides a comparability analysis between the Company B license and the '010
patent that is practically identical to that he provided with regard to the Company A license,
again relying on Dr. Negus. (D.I. 143-1 at 32-33, if 63). Dr. Negus also provides an almost
identical recitation of comparability to that he provided for the Company A license agreement.
(D.I. 143-6 at 3-4, if 436).
I conclude that Plaintiff has not met its burden of demonstrating that there is "a basis in

fact to associate the royalty rates used in [these] prior licenses to the particular hypothetical
negotiation at issue in [this] case." Uniloc, 632 F.3d at 1317. First, Dr. Choi provides little more
than ambiguous conclusions of technological comparability between the two license agreements
and the '010 patent, without any rationale other than undisclosed conversations with Dr. Negus.
Yet both Dr. Choi and Dr. Negus make almost zero reference to the specific technology involved
in either the'OlO patent or the Company A and Company B licenses, aside from the hazy
reasoning that they all relate to product features rather than core technology. See VirnetX, 767
F.3d at 1326 (reiterating that royalty estimates must focus on "damages attributable to the
infringing features"). These loose, vague allegations of technological comparability, without any
explanation, are insufficient, and do not even provide a basis to meaningfully assess
technological comparability. See Laser Dynamics, 694 F.3d at 79. Instead, Defendants invite
the Court to blindly accept the unsubstantiated conclusions ofits experts and point out that
Plaintiff does not provide expert testimony in rebuttal. I decline to do so, because Defendants
have the burden of establishing comparability in the first place. See Daubert v. Merrell Dow

18

Pharm., Inc, 509 U.S. 579, 592 n.10 (1993). Without any meaningful analysis, Dr. Choi and Dr.

Negus's conclusions of technological comparability are nothing more than ipse dixit.
Second, and most importantly, with regard to economic comparability, Dr. Choi's
analysis virtually ignores the fact that these two licenses resulted from litigation settlements,
providing a drastically different backdrop than the hypothetical negotiation involving two willing
licensors, as would be the case here. Federal Circuit precedent is hostile toward using litigation
settlement agreements in proving a reasonable royalty, except in limited circumstances. See
LaserDynamics, 694 F.3d at 77-78 ("The notion that license fees that are tainted by the coercive

environment of patent litigation are unsuitable to prove a reasonable royalty is a logical
extension of Georgia-Pacific, the premise of which assumes a voluntary agreement will be
reached between a willing licensor and a willing licensee .... "); ResQNet.com v. Lansa, Inc.,
594 F.3d 860, 870-72 (Fed. Cir. 2010) (allowing testimony regarding settlement license for
patent-in-suit that was "the most reliable license in [the] record," when compared to licenses that
did not ''mention[] the patents in suit or show[] any other discernible link to the claimed
te'chnology''). The settlement licenses here were not for the patent-in-suit and are only connected
to the claimed invention by vague conclusions from Defendants' .experts. Dr. Choi makes no
effort to account for the fact that these agreements were litigation settlements. He provides no
background information about the litigation preceding these agreements or the overall context of
the settlements. Instead, Dr. Choi ignores the settlement context altogether and focuses on the
fact that the licenses were between Enfora and a non-practicing entity. Under Dr. Choi's
rationale, any license between Enfora and a non-practicing entity would be economically
comparable to a hypothetical negotiation between Enfora and a different non-practicing entity,
regardless of the specific technology or whether the licenses resulted from litigation settlements.

19

These Unsubstantiated conclusions about economic comparability, lacking in analysis, again
provide nothing more than ipse dixit. Accordingly, there is no showing that the Company A and
Company B licenses are economically comparable to the '010 patent. Dr. Choi has failed to
account for the economic differences between the '010 patent and the two asserted license
agreements. See Worldtech, 609 F.3d at 1320.
Lastly, I find little merit in Defendants' argument that Dr. Choi can use incomparable
licenses in his reasonable royalty analysis if he only uses them as a "sanity check," rather than
using them to drive the analysis. Federal Circuit precedent requires that for a license to be used
in a damages analysis, the license must be proven comparable to the hypothetical negotiation.

See, e.g., Lucent Techs., 580 F.3d at 1325. Defendants cannot escape this requirement by
suggesting that the incomparable licenses only played a minor role as a quantitative reference
point, instead of being a driving force in the reasonable royalty estimate. In sum, Defendants
have not met their burden of establishing that the Company A and Company B licenses that Dr.
Choi relies upon are sufficiently comparable, either technologically or economically. To the
extent that significant economic differences between the hypothetical negotiation at issue and
these past license agreements are readily apparent to the Court due to the licenses' litigation
settlement context, Dr. Choi fails to even attempt to account for these differences. Acco,rdingly,
Dr. Choi's references to the Company A and Company B license agreements are excluded.

C.

Defendants' Motion to Exclude Plaintiff's Experts Richard Bero and Whitey
Bluestein (D.I. 147)

Defendants move to exclude to the testimony of Plaintiffs damages experts Richard Bero
and Whitey Bluestein. (D.I. 147). Defendants raise arguments (D.I. 148) that are almost
identical to those I considered in the Telit Daubert opinion (C.A. No. 12-33-RGA, D.I. 295). In
the Telit case, I excluded the testimony of Mr. Bluestein and Mr. Bero for employing an
20

unreliable methodology in calculating damages. (Id. at 5-14). Mr. Bluestein and Mr. Bero use
the same methodology here, rendering the Telit Daubert opinion dispositive as to Defendants'
current motion. Accordingly, I will grant Defendants' motion to exclude their testimony.

D.

Defendants' Motion for Summary Judgment on Damages Issues (D.I.142)

Defendants' Motion for Summary Judgment on Damages Issues raises two arguments.
First, Defendants argue for summary judgment that no damages can be awarded for products
manufactured and shipped abroad, for not falling under the purview of 35 U.S.C. § 271. (D.I.

144 at 12-13). Second, Defendants argue that the Court should grant summary judgment that
damages can be no greater than $120,000, to properly reflect the minimal costs of implementing
acceptable, non-infringing alternatives. (Id. at 13-22). For the reasons that follow, I will grant
Defendants' motion as to the first issue, and deny Defendants' motion on the second issue.
1. Foreign Sales

Defendants argue that products manufactured and shipped abroad are not subject to
damages for infringement. (D.I. 144 at 12-13). Defendants contend that Mr. Bero's damages
assessment, which calculates damages based on all worldwide sales of Defendants' products, 9
improperly includes products that do not infringe, because there is no proof the products reach
the United States. (Id. (citing D.I. 152-8 at 9, 48--49)). Accordingly, Defendants argue that
Plaintiff cannot pursue damages for products that it has not proven have entered the United
States. (Id.). Plaintiff, on the other hand, argues that it is "properly seeking to hold [Defendants]
accountable for products it sells to U.S. customers even though some of those products are

9

Mr. Bero provides two distinct calculations: one using Defendants' worldwide sales and another alternative
analysis using only Defendants' U.S. sales, in case Plaintiff "is only able to recover damages on what it refers to as
[Defendants'] U.S. sales." (D.I. 152-8 at 9 & n.9, 48-49). Although Mr. Bero's testimony has been excluded, I
assume that the issue of what products Plaintiff wants to include in a future damages calculation remains the same.

21

shipped by [Defendants] to a facility abroad prior to being imported into the United States."
(D.I. 174 at 8).
I extensively considered identical arguments in the Telit SJ opinion. (C.A. No. 12-33RGA, D.I. 247 at 35-48). I stated the relevant legal framework there. (Id. at 35-38, 45-46).
The crux of my opinion in the Telit case was that where, as here, a defendant's products are
manufactured abroad and shipped abroad to a foreign contract manufacturer, "it is Plaintiffs
burden to prove that the accused products made it into the United States, for purposes of proving
that anyone directly infringed." (Id. at 46). I suggested that Plaintiff could have met that burden
by "present[ing] any evidence from which a jury could determine how many products sold
abroad actually made their way into the U.S .... " (Id. at 43-44). I also reasoned that "Plaintiff
could have taken some third-party discovery of these customers to prove that at least some
accused products were eventually imported to the U.S ..... [which] could conceivably have
provided Plaintiffs expert with a reasonable basis to estimate how many accused products made
it into the U.S." (Id. at 44).·
The situation presented here is nearly identical to that considered in the Telit SJ opinion.
Accordingly, the rationale of the Telit SJ opinion applies with equal force here. As with Telit,
the products at issue here, which are manufactured abroad and shipped to destinations abroad,
amount to "domestic contracts for foreign sales." (Id. at 42). Therefore, it is Plaintiffs burden
to offer evidence of which products shipped abroad actually made it to the U.S. and are therefore
subject to 35 U.S.C. § 271. As in the Telit case, Plaintiffs expert again employs an all-ornothing approach, seeking to assess damages on Defendants' worldwide sales, rather than
presenting facts or a data-backed estimate of how many products shipped abroad actually reach
the U.S. Plaintiffs approach is plainly insufficient to overcome the presumption against

22

extraterritoriality. See, e.g., Microsoft v. AT&T Corp., 550 U.S. 437, 454--55 (2007) ("The
presumption that United States law governs domestically but does not rule the world applies with
particular force in patent law."); Lake Cherokee Hard Drive Techs., L.L. C. v. Marvell
Semiconductor, Inc., 964 F. Supp. 2d 653, 655-56 (E.D. Tex. 2013) ("Any doubt regarding
whether conduct falls outside the purview of United States patent law should be resolved by the
presumption against extraterritoriality." (citing Microsoft, 550 U.S. at 454)).
Plaintiff argues that the Court's rationale from the Telit SJ opinion should not apply here,
because the facts here are distinguishable. (D.I. 201 at 2). Specifically, Plaintiff asserts that
Defendants' Rule 30(b)(6) representative, Ron Schooler, admitted that he is aware that some of
Defendants' customers may request that products purchased be shipped to contract
manufacturers abroad, even though the products eventually end up in the U.S. (Id.). Indeed, Mr.
Schooler admitted during his deposition that customers do this from time of time. (D.I. 175-1 at
29). He identified one company that did this (Company C), and indicated that Company C was
.Defendants' largest customer. 10 (Id. at 30, 35). Mr. Schooler estimated that Company C
purchases approximately $8 million of accused products per year from Defendants and mainly
distributes products in the U.S. (Id. at 30, 35).
Implicit in Plaintiff's later assertion of these admissions seems to be an argument that
Plaintiff should be able to include sales to Company C that are shipped abroad in its damages
calculation. The Court is not aware, however, of any expert opinion that includes only sales to
Company C within Plaintiff's damages estimate and Plaintiff has never made this argument. The
issue present! y before the Court is whether Plaintiff may seek damages on all of Defendants'
sales that were manufactured and shipped abroad, with only proof that a single customer of

10

Again, to protect third-party confidentiality, a pseudonym, "Company C," is used here.

23

Defendants sometimes imports products shipped abroad into the U.S. I conclude that Plaintiff
cannot arbitrarily seek damages on all of Defendants' worldwide sales in this fashion, because it
would flout the presumption against extraterritoriality, as explained more thoroughly in the Telit
SJ opinion. Accordingly, I will grant Defendants' motion for summary judgment of no damages
for foreign sales.

2. Motion to Limit Damages to $120,000
Defendants argue that-because their technical expert, Dr. Kevin Negus, presented
unrebutted testimony that a commercially acceptable, non-infringing alternative could be
implemented for no more than $60,000-the Court should limit Plaintiffs potential damages to
$120,000 with a summary judgment ruling. (D.I. 144 at 13-22). In light of Dr. Negus's
testimony, Defendants' damages expert, Dr. Choi, opined that a reasonable royalty would have
been no greater than $120,000, in light of the direct and indirect costs to implement one of those
non-infringing alternatives. (Id. at 14-15 (citing D.I. 152-12 at iii! 2, 87)). More specifically, Dr.
Negus opined that Defendants could have implemented at least three commercially-acceptable
alternatives that would not infringe, summarized in Defendants' brief as follows:

•
•

•

Alternative #2: "eliminate both the MDMID and API Password fields from
all AT commands"-which would cost no more than $40,000 to implement;
Alternative # 3: "eliminate both the MDMID and API Password fields
from the AT Commands that modify entries within the SMSDA facility and
the modem friend/server list facility''-which would cost no more than
$60,000 to implement; and
Alternative #5: Novatel's N4A Platform-which would not cost anything
to implement in and of itself.

(Id. at 14 (citing D.I. 152-7 at 60-63, iii! 411-12, 414)). Defendants argue that Plaintiff has not
provided any credible evidence to rebut Dr. Negus's testimony that these various alternatives
were non-infringing, commercially acceptable, and available at the ease and cost outlined. (Id. at
15). Specifically, Defendants point out that the only evidence Plaintiff presents to counter this
24

testimony is the unsupported opinion of Mr. Bluestein, a non-technical expert whose testimony
has since been excluded by this Court. (Id. at 15-21; D.I. 210 at 1). Thus, Defendants contend
that-because the opinions of Dr. Negus and Dr. Choi on the cost, availability, and commercial
acceptability of non-infringing alternatives stand unrebutted-there are no genuine issues of
material fact and damages in the case should be limited to $120,000.
Plaintiff originally contended-relying on the opinions of Mr. Bluestein and his analysis
of the Beacham Reports-that Dr. Negus's proposed alternatives would n_ot be commercially
acceptable to. a significant amount of customers, were not available at the time of the
hypothetical negotiation, and that Defendants' sales may not have been the same without the
accused features. (D.I. 174 at 10-18 (citing D.I. 175-6 at 3-5, ifif 5-6, 8)). 11 In the alternative,
Plaintiff contends that Defendants' argument is erroneous as a matter of law, because "the
Federal Circuit has made clear that reasonable royalty damages are not capped at the cost of
implementing the cheapest available alternative." (Id. at 11).
I have already excluded Mr. Bluestein's testimony in this case and the Telit case, and I
likewise find that he is not qualified to testify, relying on the unrelated Beacham Reports or
otherwise, as to whether Defendants' proposed design around would be commercially
acceptable, feasible, or non-infringing. (See generally C.A. No. 12-33-RGA, D.I. 295 at 5-14).
Yet while Defendants are busy pointing out the lack of remaining expert testimony challenging
Dr. Negus's conclusions, they still must also prove their entitlement to judgment as a matter of
law in order to warrant summary judgment. 12 Defendants' argument that damages can be no

11

Plaintiff also argues that it properly considered non-infringing alternatives, because the damages analysis of
Mr. Bluestein and Mr. Bero was based off of costs related to Dr. Negus's proposed alternative #5, a dedicated cloudbased platform. (D.I. 174 at 10). Because Mr. Bluestein's theory, that the next-best-alternative to the patented
technology is a dedicated cloud-based platform, is no longer a part of this case, both parties' arguments regarding the
availability of a dedicated cloud-based platform are no longer relevant.
12
Defendants' briefing on this issue has virtually no legal analysis.

25

greater than the cost of a non-infringing alternative plus indirect costs fails as a matter oflaw.
The Federal Circuit has outright rejected such arguments:
[E]ven if [Defendant] had shown that it had an acceptable noninfringing alternative
at the time of the hypothetical negotiation, [Defendant] is wrong as a matter of law
to claim that reasonable royalty damages are capped at the cost of implementing
the cheapest available, acceptable, noninfringing alternative .... To the contrary,
an infringer may be liable for damages, including reasonable royalty damages, that
exceed the amount that the infringer could have paid to avoid infringement.

Mars, Inc. v. Coin Acceptors, Inc., 527 F.3d 1359, 1373 (Fed. Cir. 2008). Likewise, while the
existence of a non-infringing alternative "is a factor relevant to the determination of a proper
royalty during hypothetical negotiations," it remains just that, a factor, and does not conclusively
establish an upper limit on a reasonably royalty. See Zygo Corp. v. Wyko Corp., 79 F.3d 1563,
1571-72 (Fed. Cir. 1996). That this is the state of the law makes a great deal of sense, to the
extent that it is almost tautological. It remains the province of the jury to credit or discredit the
opinions of Dr. Choi and Dr. Negus as to the feasibility, commercial acceptability, cost, and
availability of their proposed, non-infringing alternatives. See, e.g., Apple Inc. v. Motorola, Inc.,
757 F.3d 1286, 1314 (Fed. Cir. 2014) ("An expert may provide expert testimony based on a valid
and properly applied methodology and still offer a conclusion that is subject to doubt. It is the
role of the jury to weigh these sources of doubt. ... [T]he jury must still be allowed to play its
essential role as the arbiter of the weight and credibility of expert testimony." (internal quotation
marks omitted)).
Despite the exclusion of Plaintiffs current damages theory, I assume that if this case
reaches trial, Plaintiff will offer some theory of damages. Any damages opinion ultimately
suggesting a reasonable royalty other than $120,000 will create a factual dispute for the jury to
decide. In any event, of even greater significance for purposes of this motion, expert testimony
is not necessary to render the proper amount of damages a disputed issue. See Dow Chemical
26

Co. v. Mee Indus., Inc., 341F.3d1370, 1382 (Fed. Cir. 2003) ("[S]ection 284 is clear that expert
testimony is not necessary to the award of damages, but rather 'may [be] received[ d] ... as an
aid."' (quoting 35 U.S.C. § 284) (alterations in original)). While Defendants criticize Plaintiff
for offering attorney argument criticizing Dr. Negus's conclusions, Plaintiff may seek to
discredit Dr. Negus's conclusions through cross-examination. "[G]iven the great financial
incentive parties have to exploit the inherent imprecision in patent valuation," a reasonable jury
could reject the testimony of Dr. Negus and Dr. Choi that these proposed non-infringing
alternatives were feasible, readily available, so inexpensive, and would not otherwise adversely
affect Defendants' sales. See CSIRO v. Cisco Sys., Inc., 809 F.3d 1295, 1301 (Fed. Cir. 2015)
(internal quotation marks omitted). Accordingly, I will deny Defendants' motion for summary
judgment to cap damages at $120,000.
IV.

CONCLUSION

For the reasons set forth above, the Court will grant-in-part and deny-in-part Defendants'
Motion for Summary Judgment of Non-Infringement and No Willfulness (D.I. 145), grant-inpart and deny-in-part Defendants' Motion for Summary Judgment on Damages Issues (D.I. 142),
grant Defendants' Motion to Exclude M2M's Damages Experts Richard Bero and Whitey
Bluestein (D.I. 147), and grant Plaintiffs Motion to Exclude Opinions of Dr. Choi (D.I. 140). A
separate order, consistent with this Memorandum Opinion, will be entered.

27