`
`Case 3:17-cv-05659-WHA Document 239-12 Filed 11/19/18 Page 1 of 4
`
`EXHIBIT 11
`
`
`
`Case 3:17-cv-05659-WHA Document 239-12 Filed 11/19/18 Page 2 of 4
`Case 1:01-cv-03578-RWS Document 335 Filed 12/06/11 Page 1 of 21
`
`ORIGINAL
`
`
`--- ---X
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`
`RESQNET.COM, INC.,
`
`Plaintiff,
`
`against
`
`LANSA, INC.,
`
`01 Civ. 3578
`
`OPINION
`
`"~,.,..,, .u......,..,~~
`
`Defendant.
`
`~
`
`-X
`
`l:
`
`I
`, t . ~
`
`A P PEA RAN C E S:
`
`At
`
`for Plaintiff
`
`SORIN ROYER COOPER LLP
`
`Two Tower Center Boulevard, 11th
`East Brunswick, N.J.
`08816
`
`By:
`Jeffrey Kaplan, Esq.
`
`
`oor
`
`
`Attorneys for Defendant
`
`ARENT FOX LLP
`
`1675 Broadway
`
`10019
`
`New York, N.Y.
`By: David Wynn, Esq.
`
`
`1050 Connecticut Avenue, NW
`
`Washington, D.C. 20036
`
`By:
`James Hulme, Esq.
`
`Janine Carlan, Esq.
`
`Taniel Anderson, Esq.
`
`
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`
`Case 3:17-cv-05659-WHA Document 239-12 Filed 11/19/18 Page 3 of 4
`Case 1:01-cv-03578-RWS Document 335 Filed 12/06/11 Page 5 of 21
`
`The more
`
`common
`
`approach of determining damages
`
`attempts
`
`to ascertain the royalty rate to which
`
`the parties
`
`would have agreed had
`
`they negotiated an agreement prior to
`
`infringement.
`
`See, e.g., Unisplay, S.A. v. American Elec. Sign
`
`Co., Inc., 69 F.3d 512, 517 (Fed.Cir. 1995).
`
`"The hypothetical
`
`negotiation tries, as best as possible, to recreate the ex ante
`
`licensing negotiation scenario and
`
`to describe
`
`the resulting
`
`agreement
`
`.
`
`. The hypothetical negotiation also assumes that
`
`the asserted patent claims are valid and infringed. /I
`
`Lucent,
`
`580 F.3d at 1324.
`
`In calculating a reasonable royalty under
`
`this approach, courts rely on the comprehensive, if overlapping,
`
`list of fifteen factors det
`
`led in Georgia-PCicific Corp. v.
`
`United States Plywood Corp., 318 F.Supp. 1116, 1120
`
`(S.D.N.Y.
`
`1970), often termed the "Georgia-Pacific factors./I
`
`The first
`
`factor requires considering
`
`past and present royal ties received by the patentee "for the
`
`licensing of the patent in suit, proving or tending to prove an
`
`established royalty." 318 F.Supp. at 1120.
`
`"[T]his factor
`
`considers only past and present licenses to the actual patent
`
`and the actual claims in litigation."
`
`. com, 594 F. 3d at
`-----"=----
`
`869
`
`(citing Lucent, 580 F.3d at 1329).
`
`Thus,
`
`the damages
`
`calculation may not
`
`rely on
`
`licenses
`
`that are "radically
`
`4
`
`
`
`Case 3:17-cv-05659-WHA Document 239-12 Filed 11/19/18 Page 4 of 4
`Case 1:01-cv-03578-RWS Document 335 Filed 12/06/11 Page 6 of 21
`
`different from the hypothetical agreement under consideration."
`
`Lucent, 580 F.3d at 1327-28.
`
`In addition,
`
`the hypothetical negotiation must be
`
`assumed to have occurred prior to litigation over the patent
`
`because the threat of suit may skew a fee's negotiation,
`
`see
`
`Hanson v. Alpine VCl11ey Ski Area, Inc., 718 F.2d 1075, 1078 79
`
`(Fed. Cir. 1983), and established royalty rates are therefore
`
`evaluated in this light. Similarly, a reasonable royalty can be
`
`different
`
`than
`
`an
`
`established
`
`royalty when widespread
`
`infringement artificially depressed past licenses.
`
`See, e.g.,
`
`Co., 847 F.2d 795, 798
`Inc. v. Rol
`Nickson Indus.
`----------------~--~--------------~------
`
`(Fed.
`
`Cir. 1988).
`
`The second Georgia ~acific factor considers "the rates
`
`paid by the licensee for the use of other patents comparable to
`
`the patents in suit." Georgia Pacific 318 F.Supp. at 1120. The
`
`third factor weighs "[t]he nature and scope of the license, as
`
`exclusive or non-exclusive; or as restricted or non-restricted."
`
`Id.
`
`fourth Georgia-Pacific factor concerns the licensor's
`
`policies and practices regarding the grant of licenses to its
`
`technology.
`
`Id.
`
`The
`
`fifth
`
`addresses
`
`the
`
`commercial
`
`relationship between the licensor and the licensee.
`
`Id.
`
`The
`
`sixth factor is "[t]he effect of selling the patented specialty
`
`5
`
`
`
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