STC.UNM v. Intel Corporation

Filing 95

MOTION for Leave to File To File A Supplemental Submission In Support of Motion to Compel by STC. UNM. (Attachments: # 1 STC's Supplemental Submission In Support of Motion to Compel, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C)(Pedersen, Steven)

Download PDF
UNITED STATES DISTRICT COURT DISTRICT OF NEW MEXICO STC.UNM, Plaintiff, v. INTEL CORPORATION, Civil No. 10-CV-01077-RB-WDS Defendant. STC'S SUPPLEMENTAL SUBMISSION IN SUPPORT OF MOTION TO COMPEL STC is compelled to bring to the attention of the Court a misrepresentation made by Intel's counsel regarding Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 434 F. Supp.2d 257 (S.D.N.Y. 2006). Specifically, during oral argument, Intel's counsel had the following to say: So the Merck case . . . had a number of different theories in the case, and one of the theories was: Hey, we're entitled to a reasonable royalty for your stuff that's going to happen after the patent expires. The Court actually granted summary judgment on that and said: No. But with respect to the lost profits component of your model, stuff where you can actually prove that you're losing sales, the case law does say accelerated market entry is a viable theory. (emphasis added). Transcript (May 18, 2011) (Ex. A) at 24:15-24. The Merck decision, however, does not include the words royalty or royalties, and, let alone any discussion of the availability of accelerated market entry to a claim for reasonable royalty damages. At no time did the court distinguish between lost profits and reasonable royalties for purposes of accelerated market entry. See id. at 265-66. Nor was the court in Merck required to do so, as Merck was not seeking a reasonable royalty. A review of the declaration of Merck's expert submitted in opposition to the summary judgment motion that resulted in the afore-cited Merck decision reveals the Merck sought only lost profits. Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 1:05-cv-03650-DC, Declaration of Raymond S. Sims (S.D.N.Y. Nov. 23, 2005) [Docket No. 25] (Ex. B). Thus, the court in Merck had no occasion to address the applicability of accelerated market entry to reasonable royalty damages. Even more importantly, in its opposition, Merck cited a case in which an accelerated market entry component was included as part of the reasonable royalty damages awarded to the patentee. Merck & Co., Inc. v. Mediplan Health Consulting, Inc., 1:05-cv-03650-DC, Merck's Opposition (S.D.N.Y. No. 23, 2005) [Docket No. 23] (Ex. C) at 17, citing Coyle v. Sega of America, CV 90-2323 RJK (C.D. Cal. April 10, 1991) (jury awarded the patentee $21 million in reasonable royalties for accelerated market entry).1 Of course, this is contrary to Intel’s main argument for denying STC’s Motion to Compel, which is that AME damages are not available to a reasonable royalty plaintiff. In sum, Merck was not seeking a reasonable royalty, and the court in Merck had no occasion to address the availability of accelerated market entry damages as part of a reasonable royalty award, contrary to the express representation made by Intel's counsel at oral argument. Further, Merck did cite to a case where accelerated market entry did apply to a reasonable royalty claim.                                                              1  Merck also cited Bayer AG. v. Housey Pharms., in which the court stated "[a]ccelerated reentry damages … are not the equivalent of a royalty which extends beyond the expiration of the patent." Bayer AG. v. Housey Pharms., 228 F. Supp.2d 467, 473 (D. Del. 2002), quoting Amsted Indus. Inc. v. National Castings Inc., 1990 U.S. Dist. LEXIS 8553 (N.D. Ill. Jul. 11, 1990).     2   Dated: May 25, 2011 Respectfully submitted, Deron B. Knoner KELEHER & MCLEOD, P.A 201 Third Street NW, 12th Floor PO Box AA Albuquerque, New Mexico 87103 (505) 346-4646 /s/ Steven R. Pedersen Rolf O. Stadheim Joseph A. Grear George C. Summerfield Keith A. Vogt Steven R. Pedersen STADHEIM & GREAR, LTD. 400 N. Michigan Avenue, Suite 2200 Chicago, Illinois 60611 (312) 755-4400 Attorneys for Plaintiff STC.UNM Certificate of Service: I hereby certify that on May 25, 2011, I caused the foregoing to be electronically filed with the Clerk of the Court using the CM/ECF system which will send notification of such filing via electronic mail to all counsel of record. /s/ Steven R. Pedersen   3  

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.

Why Is My Information Online?