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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 2 of 29 PageID #: 48641
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 3 of 29 PageID #: 48642
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 4 of 29 PageID #: 48643
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 5 of 29 PageID #: 48644
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 6 of 29 PageID #: 48645
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 7 of 29 PageID #: 48646
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 8 of 29 PageID #: 48647
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 9 of 29 PageID #: 48648
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 10 of 29 PageID #: 48649
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 11 of 29 PageID #: 48650
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 12 of 29 PageID #: 48651
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 13 of 29 PageID #: 48652
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`EXHIBIT 7
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 14 of 29 PageID #: 48653
`6/2/2017
`
`John Garland
`
`RECRUITER
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`John Garland
`President of Garland IP Services,
`LLC
`Flemington New Jersey Telecommunications
`
`Pretious positici
`at Constellation Technologies
`President
`LLC
`of Licensing
`Vice
`at Rockstar Consortium US LP
`President
`
`a
`
`ao
`
`=
`
`Recruitmg Tools
`
`Education
`Northweslern University Kellogg
`Development Program
`
`Schoolof Management h×ecutive
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`John Garland President of Garland
`IP Services has
`of experience as
`23 years
`a Licenstng Executive
`with worldwide transaction expenence including
`patent
`and outbound licensing)
`(Inbound
`licensing
`technology licensing
`ventures strategic
`spin-offs technology acquisition and
`alliances
`joint
`expenence in assisting clients
`IP strategy as well
`patent acquisitions and divestitures
`strategic
`on
`has worked in
`corporations and
`the start-up environment as
`John
`IP professional
`large
`an
`
`m
`
`E×pet
`
`lence
`
`President
`Garland IP Services
`LLC
`February 2015- Present
`(2 years
`
`4 months) Greater
`
`New
`
`York
`
`City Area
`
`IP Services offers professional services to
`Garland
`patent monetization assistance or
`clients
`that
`seek
`on strategic and
`desire support
`involving intellectual property
`tactical
`issues
`
`http
`
`//www garlandips
`
`com/
`
`President
`Constellation Technologies
`October 2013- January 2015
`
`LLC
`year
`
`(1
`
`3 months)
`
`Plano
`
`TX
`
`Constellation is
`a wholly owned Rockstar subsidiary Lead
`executive responsible for development and
`implementation of
`licensing program directed at managed sennces
`(voice
`communications)
`video
`data
`to Senace Providers in
`two pnmary market segments Cable
`and Telecommunications
`and directed
`Led
`hcensing discussions (including
`enforcement
`20 companies including
`required)
`with more
`than
`managing negotiations business/ficense proposals and negotiation of
`terms Provided direction to
`deal
`supporting technical
`& market/business analysts Responsible for providing annual
`legal
`quarterly and
`monthly revenue forecasts
`needed Board/Shareholder presentatrons
`including
`
`as
`
`as
`
`Recommendations (1)
`
`Vice President
`of Licensing
`Rockstar Consortium US
`LP
`- January 2015
`March 2012
`(2 years
`
`10 month3) . Un
`
`ted States
`
`Expenenced IT Telecom
`Executive
`Washington
`
`DC Metro Area
`
`& M&A
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`Video
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`Area
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`implementation of
`Led
`renowned patent
`programs
`licensing
`for
`portfolio originally
`that emerged from a
`of Nortel,
`2011 bankruptcy auction to become Rockstar.
`part
`December, 2014 Rockstar announced that
`its patent assets were being
`sold
`to RPX.
`
`In
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 15 of 29 PageID #: 48654
`
`6/2/2017
`
`John Garland
`
`Vice President
`of Business Development
`Rembrandt
`IP Solutions
`January 2010
`- March 2012
`
`(2 years
`
`2 months) Greater Philadelphia Area
`
`Led Business Development effort
`
`to identify and
`
`acquire high-quality inventions
`
`Executive Vice-President
`IP Management LLC
`Rembrandt
`February 2007- March 2012
`(5 years
`
`Senior executive focused on licensing
`assets.
`
`Recommendations (1)
`
`1 month) Greater Philadelphia Area
`
`and commercialization efforts associated with Rembrandt patent
`
`Executive Vice-President
`ThinkFire
`July
`2001
`
`- January 2007
`
`(5 years
`
`8 months)
`
`21¾ßik
`
`Executive VP
`responsible for ThinkFire's overall efforts
`& General Manager
`and patent
`licensing
`valuation and
`services,
`as developing and delivering IP management and strategy
`brokering
`as well
`consulting services to leading
`experience in
`'high-tech'
`around the
`high-tech
`clients
`globe.
`Broad
`IP
`transactions such
`negotiations, patent/technology acquistions and divestitures,
`as patent
`licensing
`technology licensing,
`IP matters in establishing within
`Joint Ventures, and development and
`handling
`implementation of
`IP defense and commercialization strategies.
`
`in
`
`Director of Worldwide
`Licensing
`Lucent Technologies
`IP Division
`May 1993-July 2001
`2 months)
`(8 years
`
`in
`
`a
`
`Worldwide responsibility for managing
`executives,
`team of
`leading
`licensing
`and
`including
`of Lucent's patents
`to leading semiconductor, multimedia, and
`licensing
`Paris,
`the
`optical
`companies. Leading
`and negotiating patent
`technology license agreements with
`and
`companies in North America, Asia,
`and Europe.
`
`an office
`in
`networking
`tech'
`'high
`
`leading
`
`Recommendations (1)
`
`Product Manager
`AT&T Microelectronics
`- May 1993
`1989
`July
`
`(3 years
`
`10 months)
`
`Marketing Manager
`AT&T Microelectronics with worldwide responsibilities for
`a portfolio of high
`with
`voltage analog/digital
`integrated circuits
`semi-custom, and standard products). Achieved greater
`(ASIC,
`200% revenue growth during the
`four-year period (1989-93)
`1991 was awarded the
`than
`and
`Outstanding Marketing Support Award for Europe.
`
`in
`
`Engineer
`AT&T Microelectronics
`-
`(4 years)
`1985
`July
`July
`1989
`Test engineer and
`IC fabrication engineer participated in
`development, yield enhancement, cost
`circuit
`reduction, chip
`failure mode analysis and
`improving manufacturing processes for
`re-design,
`family of
`integrated circuits
`Voice Communication System.
`used
`AT&T's
`Digital
`
`in
`
`a
`
`Education
`
`Northwestern University - Kellogg School
`Executive Development Program
`-
`1998
`1998
`
`of Management
`
`Lehigh University
`MBA, Marketing
`1986-1990
`
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`
`2/4
`
`

`

`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 16 of 29 PageID #: 48655
`6/2/2017
`
`John Garland
`
`Lafayette College
`BSEE, Electrical Engineering
`1981-1985
`
`Father Judge HS
`
`1977
`
`-
`
`1981
`
`Additional
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`Info
`
`Contact
`for
`Career opportunities
`New ventures
`Job
`inquiries
`Expertise requests
`Business deals
`Getting
`back
`
`in
`
`touch
`
`(cid:127)
`
`(cid:127)
`
`(cid:127)
`
`(cid:127)
`
`(cid:127)
`
`Skills
`
`& Expertise
`
`Business Strategy
`Management Consulting
`Mergers
`' Cross-functional Team
`Leadership
`* Telecommunications
`Contract Negotiations
`Patent Prosecution
`CRM
`Patents
`Due Diligence
`Divestitures
`Licensing
`investing
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`Invention
`Go-to-market Strategy
`M&A expenence
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`Recommendations
`
`& Acquisitions
`- Mergers
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`Executive Management
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`Business Development
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`Intellectual Property Valuation
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`* Venture Financing
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`* Stait-ups
`- Product Marketing
`- Customer Relations
`- Semiconductors
`Intemational Business
`- Entrepreneurship
`(cid:127)Acquisition integration
`* Global Business Development
`* Competitive Intelligence
`* Business Modeling
`* Commercialization
`
`-
`
`Russ Barron
`Chief Operating Officer, Secretary and General Counsel at Velico Medical,
`Greate- Boston
`Area
`
`Inc.
`
`is probably the smartest and most
`John Garland
`a great negotiator as welL Highly
`recommended
`
`is
`
`experienced person in
`
`IP licensing.
`
`He
`
`Gene Potkay
`Intellectual Property, Nielsen
`SVP
`Greater New York City Area
`
`a substantial contributor at AT&TILucent and
`John Garland was
`held positions of
`lead
`negotiator for major closures with particular emphasis on semiconductors that extended to
`multimedia and ultimately to much
`broader management oversight and coaching. He
`holds
`and delivers results
`broad
`skills
`
`Derek de Laat MBA, CPA, CMA
`Senior Director, Business Analytics
`Canada Area
`Ottawa,
`
`is
`
`all
`
`of
`
`of working for
`John Garland overthe course
`pleasure
`tenure at Rockstar
`I had
`the
`of my
`Consortium. John
`incredibly talented in
`IP transactions including
`facets
`technical
`analysis,
`analysis, deal making, strategy, and
`financial
`leamer and
`John
`legal.
`life
`incredibly driven and
`hard working. John
`supervisor and mentor and
`great
`was
`look
`future
`forward to working with
`him again
`the
`
`a
`
`I
`
`is
`
`a
`
`in
`
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 17 of 29 PageID #: 48656
`
`6/2/2017
`
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`1.ehigh University
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 18 of 29 PageID #: 48657
`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 18 of 29 PagelD #: 48657
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`EXHIBIT 8
`EXHIBIT 8
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`
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`

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`Page | of 4
`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 19 of 29 PageID #: 48658
`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 19 of 29 PagelD #: 48658
`
`
`
`The Inventors Guide
`to -—
`Royalty Rates
`
`One of the most important steps in licensing a patent or idea is
`establishing the royalty rate you will receive In return for granting a
`licensee the right to manufacture and sell your invention. In this article
`we will explain what royalty rates are, how to calculate the proper
`royalty rates, elements that effect royalty rates, protections to put in
`place, and other important things to consider when licensing an idea.
`
`— What are Royalties?
`
`ne
`
`Royalties are payments that are provided to a licensorby a licensee in
`exchange forthe right to operate under youridea.
`
`Royalty rates are affected by several criteria:
`
`Exclusive or Non-Exclusive
`If your intellectual property requires testing orcertification
`prior to being brought to market. having these milestones
`completed will lead to higher royalty rates.
`OPP eE CEO Tf oe errr ee er rer errr ee eee ee ee ee eee rer reer terror rr eer errr ey
`
`25°)
`
`Upfront Sum
`The higherthe up-front sum being paid to the licensee,
`the lower royalty rate the licensor will likely receive as it
`is an element of the overall compensation.
`
`Industry Standard Royalty Rates
`Each industry tends to have an industry standard’
`royalty rate, See the endof this article for a list of
`industries and their average royalty rates.
`
`Company Standard Rates
`Companies that have a good amount of experience in
`licensing ideas tend to have a standard package that
`they offer inventors. The larger the company is and the
`
`https://assets.entrepreneur.com/article/1406054592-one-stop-guide-royalty-rates-infographic.jpg?_g... 6/6/2017
`AB-AB 004474
`
`

`

`Page 2 of 4
`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 20 of 29 PageID #: 48659
`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 20 of 29 PagelD #: 48659
`
`ay” bigger their track record, the more leverage they will
`have in negotiating your royalty rate.
`
`
`
`Intellectual Property Stage
`The further along the intellectual property is to
`commiercialization, the less risk the licensee will face,
`and the higher the royalty will be paid to the licensor.
`
`Market Potential
`The royalty rate will heavily depend upon the market
`potential of the idea you are looking to license. This can
`be difficult when you are trying to license an invention
`that is developing a new marketoris part of a new
`market that has not yet shown it’s full potential
`
`Licensing to an Infringer
`Each industry tends to have an ‘industry standard’
`royalty rate. Seetheend of this article for a list of
`industries and their average royalty rates.
`
`Related Intellectual Property Included
`Companies that have a good amountof experience in
`licensing ideas tend to have a standard package that
`they offer inventors. The larger the companyis and the
`bigger their track record, the more leverage they will
`have in negotiating your royalty rate,
`
`Testing/Certification
`Thefurther along the intellectual property is to
`commercialization, the less risk the licensee will face,
`and the higher the royalty will be paid to the licensor.
`
`Investment Required
`The royalty rate will heavily depend upon the market
`potential of the idea you are looking to license. This can
`be difficult when you are trying to license an invention
`that is developing a new marketor is part of a new
`market that has not yet shownit’s full potential.
`
`
`
`ea
`
`A
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`Page 3 of 4
`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 21 of 29 PageID #: 48660
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`Page 4 of 4
`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 22 of 29 PageID #: 48661
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`https: //assets.entrepreneur.com/article/1406054592-one-stop-guide-royalty-rates-infographic.jpg?_g... 6/6/2017
`AB-AB 004477
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 23 of 29 PageID #: 48662
`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 23 of 29 PagelD #: 48662
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`EXHIBIT 9
`EXHIBIT 9
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 24 of 29 PageID #: 48663
`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 24 of 29 PagelD #: 48663
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`THIS EXHIBIT HAS BEEN
`THIS EXHIBIT HAS BEEN
`REDACTED ,IN ITS ENTIRETY
`REDACTEDIN ITS ENTIRETY
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 25 of 29 PageID #: 48664
`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 25 of 29 PagelD #: 48664
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`EXHIBIT 10
`EXHIBIT 10
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`Case 1:16-cv-00453-RGA Document 593-1 Filed 10/16/18 Page 26 of 29 PageID #: 48665
`Case 1:15-cv-00033-RGA Document 690 Filed 05/01/17 Page 1 of 4 PageID #: 34280
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF DELAWARE
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`AVM TECHNOLOGIES, LLC,
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`Plaintiff;
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`V.
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`INTEL CORPORATION,
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`Civil Action No. 15-33-RGA
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`Defendant.
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`MEMORANDUM ORDER
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`"Shoot for the moon, but remember that if you miss, you will be floating off into the inky
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`blackness of space with no hope of survival or rescue." 1 A VM shot for the moon, and, in my
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`opinion, missed. The question now is whether it can survive. I think the answer is yes.
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`A VM proffers a variety of sources from which a jury could find a reasonable royalty. I
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`believe that A VM can put evidence into the record from which a jury could find a reasonable
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`royalty. Such evidence includes historical facts, such as how much A VM paid for the patent,
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`what its licensing approach was, and what sorts of offers Mr. Tran made to Intel in the past to
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`license the patent. There may be problems at the margins in terms of when testimony becomes
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`expert testimony or when it is hypothetical (see Civ. Act. No. 10-630, D.I. 283 at 9-14), but
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`A VM can certainly put on fact testimony giving the jury some basis for finding a reasonable
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`royalty. And, as I decide below, A VM can call Julie Davis as a witness and put on her expert
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`testimony should it decide to do so.
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`Much oflntel's argument is that A VM has violated the rules. The disclosures and
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`interrogatory answers may be inadequate, but, under a Pennypack analysis, I will permit A VM to
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`1 I am not sure of the source of this, but it is not original with me.
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`Case 1:15-cv-00033-RGA Document 690 Filed 05/01/17 Page 2 of 4 PageID #: 34281
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`proceed. Under Pennypack, factors to consider when determining whether to exclude evidence
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`include:
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`(1) the prejudice or surprise in fact of the party against whom the excluded
`witnesses would have testified, (2) the ability of that party to cure the prejudice,
`(3) the extent to which [allowing the late-offered testimony] would disrupt the
`orderly and efficient trial of the case or of other cases in the court, and ( 4) bad
`faith or willfulness in failing to comply with the court's order.
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`Meyers v. Pennypack Woods Home Ownership Assn., 559 F.2d 894, 904-05 (3d Cir. 1977).
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`Since I do not think A VM acted willfully or in bad faith here, the fourth factor weighs in favor of
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`allowing the testimony. Since I am only allowing testimony that has already been disclosed
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`during discovery, and because trial will proceed as scheduled, the third factor also weighs in
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`favor of allowing the testimony. As to prejudice, I am not persuaded that there is incurable
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`prejudice to Intel by allowing Mr. Tran to testify to the facts I discussed above. Intel has
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`deposed Mr. Tran extensively on these subjects and there is nothing that A VM is proposing to
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`present at trial (or that I will allow to be presented) that was not already disclosed. The proposed
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`testimony and evidence are not new to Intel. On the whole, the Pennypack factors weigh in
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`favor of admitting the testimony.
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`As for A VM calling Julie Davis to testify if Intel does not call her, it is within my
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`discretion to allow A VM to call Intel's expert witness to testify even if Intel chooses not to call
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`her. Peterson v. Willie, 81F.3d1033, 1037-38 & n.4 (I Ith Cir. 1996). In making this
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`discretionary decision, courts weigh the interests of the party seeking to call the expert and of the
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`court in reaching an informed resolution of the case against the possible prejudice to the party
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`who originally retained the expert. N5 Techs. LLC v. Capital One NA., 56 F. Supp. 3d 755, 766
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`(E.D. Va. 2014). Here, I am hard pressed to see the prejudice to Intel. Intel designated Ms.
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`Davis as an expert witness, she was deposed, and Intel presumably is quite knowledgeable about
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`2
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`Case 1:15-cv-00033-RGA Document 690 Filed 05/01/17 Page 3 of 4 PageID #: 34282
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`the testimony she has offered. In contrast, to preclude A VM from eliciting her testimony once it
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`has been disclosed through the expert report and deposition process would inhibit A VM's ability
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`to proceed with the case. A VM is in a comer, and the bits of historical fact that it can produce
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`are a thin reed on which to obtain a reasonable royalty that would withstand appellate review
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`(assuming it satisfies the jury and me). On the other hand, Ms. Davis's opinions would likely
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`provide a sound basis for a damages award. lfthere is liability here, the court and the jury would
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`benefit from hearing Ms. Davis's opinions in reaching an informed resolution. Thus, I think it is
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`fair to allow A VM to call Ms. Davis as a witness in its case if it chooses to do so. If A VM does
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`not call Ms. Davis, Intel will have complete freedom, just as it would anyway, to call her or not
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`to call her. This does not mean, however, that A VM has free reign to explore any topics with her
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`that it wishes. Ms. Davis's testimony must be limited to what was disclosed in her expert report.
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`Penn Nat. Ins. v. HNI Corp., 245 F.R.D. 190, 194-95 (M.D. Pa. 2007). Further, of course, at
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`AVM's request, I have excluded some of her testimony already.
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`If A VM does not call her, and if Intel does not call her, her report is inadmissible hearsay
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`that does not fall within one of the exceptions to the hearsay rule. N5 Technologies, 56 F. Supp.
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`3d at 765.
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`Intel is directed to ensure Ms. Davis is present at trial if necessary. If AVM wants to call
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`her as a witness, A VM needs to make that decision and advise Intel of its decision by 11 :00 p.m.
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`tonight. If A VM decides that it will call her as a witness by 11 :00 p.m. tonight, it is responsible
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`to reimburse Intel for all of Ms. Davis's contractual obligations effective beginning tomorrow.
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`A VM can, of course, change its mind during the trial about calling Ms. Davis, but it will still be
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`obligated to reimburse Intel through to the point where A VM releases her.
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`All this being said, if A VM does not put on an expert computation of damages, A VM
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`3
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`! ; I
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`cannot make arguments based on non-expert testimony that it could not make based on expert
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`testimony.
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`Entered this ?Oday of April, 2017.
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`4
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