Case 2:22-md-03034-TGB ECF No. 262, PageID.23771 Filed 07/18/24 Page 1 of 44
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF MICHIGAN
`SOUTHERN DIVISION
`
`
`IN RE NEO WIRELESS, LLC
`PATENT LITIG.
`
`Case No. 2:22-md-03034-TGB
`HON. TERRENCE G. BERG
`JURY TRIAL DEMANDED
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`
`PLAINTIFF NEO WIRELESS, LLC’S BRIEF IN
`OPPOSITION TO DEFENDANTS’ MOTION TO EXCLUDE
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`FILED UNDER SEAL
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`

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`I.
`II.
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`TABLE OF CONTENTS
`LEGAL BACKGROUND ............................................................................... 1
`THE COURT SHOULD DENY DEFENDANTS’ MOTION TO
`EXCLUDE THE OPINIONS OF MS. HARVEY. ......................................... 3
`A.
`Background ........................................................................................... 5
`B. Argument .............................................................................................10
`1. Ms. Harvey Properly Analyzed the Royalty Structure the
`Contracting Parties Used in Comparable Licenses. ....................10
`2. Ms. Harvey Properly Relies on the Parties’ Negotiations to
`Further Apportion Comparable Licenses. ...................................14
`3. Ms. Harvey’s “Validity Premium” Is Directly Tied to the
`Facts of the Case. .........................................................................20
`4. Ericsson/CSIRO do not categorically bar consideration of
`Factor 8, 9, and 10. ......................................................................21
`Conclusion ...........................................................................................23
`C.
`III. THE COURT SHOULD DENY DEFENDANTS’ MOTION TO
`EXCLUDE THE OPINIONS OF MR. JONES AND DR. MAHON ...........23
`A.
`The General Structure of Neo’s Technical Expert Reports. ...............23
`1. The Mahon Reports ......................................................................24
`2. The Jones Report ..........................................................................27
`B. Defendants’ Motion to Exclude Mischaracterizes the Qualified
`Conclusions in the Jones Report .........................................................29
`C. Defendants’ Motion to Exclude Mischaracterizes the Basis for
`the Conclusions in the Mahon Report .................................................32
`D. Defendants’ Motion Does Not Meet the Legal Standard for
`Exclusion .............................................................................................33
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`i
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`E.
`Defendants’ Motion Fails to Propose the Scope of Exclusion with
`Adequate Specificity ...........................................................................34
`Conclusion ...........................................................................................35
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`F.
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`ii
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`STATEMENT OF ISSUES PRESENTED
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`1. Under Rule 702, where an expert’s opinion has “some sort of explanation, the
`issue . . . should be left to the trier of fact.” Teenier v. Charter Commc’ns,
`LLC, No. 16-CV-13226, 2017 WL 3141051, at *4 (E.D. Mich. July 25, 2017).
`Given that Neo’s damages expert’s opinion is based on executed license
`agreements, including their agreed underlying framework, for the asserted
`patents between Neo and similarly situated parties, should the jury hear Ms.
`Harvey’s opinions rooted in the specific facts of this case?
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`Answer: Yes.
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`2. Under Rule 702, where an expert’s opinion has “some sort of explanation, the
`issue . . . should be left to the trier of fact.” Teenier v. Charter Commc’ns,
`LLC, No. 16-CV-13226, 2017 WL 3141051, at *4 (E.D. Mich. July 25, 2017).
`Given Neo’s technical experts’ opinions related to source code are reliable and
`utilize corroborating evidence and experience, should the jury hear Dr.
`Mahon’s and Mr. Jones’s opinions on the voluminous source code production
`they analyzed for this case?
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`Answer: Yes.
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`iii
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`MOST APPROPRIATE AND CONTROLLING AUTHORITIES
`
`
`Motion to Exclude the Opinions of Bonnie Harvey
`Federal Rule of Evidence 702
`EcoFactor, Inc. v. Google LLC, 104 F.4th 243 (Fed. Cir. 2024)
`Pavo Solutions LLC v. Kingston Tech. Co., 35 F.4th 1367 (Fed. Cir. 2022)
`Vectura Ltd. v. Glaxosmithkline LLC, 981 F.3d 1030 (Fed. Cir. 2020)
`Bledsoe v. FCA US LLC, 4:16-cv-14024-TGB-RSW, 2022 WL 4596156
`(E.D. Mich. Sept. 30, 2022) (Berg, J.)
`Teenier v. Charter Commc’ns, LLC, No. 16-CV-13226, 2017 WL 3141051
`(E.D. Mich. July 25, 2017)
`
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`Motion to Exclude the Opinions of Mr. Jones and Dr. Mahon
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`Federal Rule of Evidence 702
`Bledsoe v. FCA US LLC, 4:16-cv-14024-TGB-RSW, 2022 WL 4596156
`(E.D. Mich. Sept. 30, 2022) (Berg, J.)
`Teenier v. Charter Commc’ns, LLC, No. 16-CV-13226, 2017 WL 3141051
`(E.D. Mich. July 25, 2017)
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`iv
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`TABLE OF AUTHORITIES
`
`CASES
`Apple Inc. v. Motorola, Inc.,
`757 F.3d 1286 (Fed. Cir. 2014) ............................................................................22
`AVM Techs., LLC v. Intel Corp.,
`927 F. Supp. 2d 139 (D. Del. 2013) .....................................................................15
`Bio-Rad Labs., Inc. v. 10X Genomics Inc.,
`967 F.3d 1353 (Fed. Cir. 2020) ................................................................... 2, 3, 18
`Bledsoe v. FCA US LLC,
`4:16-cv-14024-TGB-RSW, 2022 WL 4596156 (E.D. Mich. Sept. 30,
`2022) .................................................................................................................1, 34
`Chapman v. Gen. Motors LLC,
`No. 2:19-CV-12333-TGBEiben-DRG, 2023 WL 2745161 (E.D. Mich.
`Mar. 31, 2023) ......................................................................................... 32, 33, 35
`Commonwealth Sci. & Indus. Rsch. Organisation v. Cisco Sys., Inc.,
`809 F.3d 1295 (Fed. Cir. 2015) ..................................................................... 21, 22
`EcoFactor, Inc. v. Google LLC,
`104 F.4th 243 (Fed. Cir. 2024) ............................................................ 2, 15, 18, 19
`Eiben v. Gorilla Ladder Co.,
`2013 WL 1721677 (E.D. Mich. Apr. 22, 2013 ....................................................31
`Ericsson, Inc. v. D-Link Systems, Inc.,
`773 F.3d 1201 (Fed. Cir. 2014) ..................................................................... 21, 22
`Gen. Elec. Co. v. Joiner,
`522 U.S. 136 (1997) .............................................................................................31
`In re Scrap Metal Antitrust Litig.,
`527 F.3d 517 (6th Cir. 2008) .................................................................................. 1
`LaserDynamics, Inc. v. Quanta Computer, Inc.,
`694 F.3d 51 (Fed. Cir. 2012) ................................................................................16
`
`v
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`Lucent Techs., Inc. v. Gateway, Inc.,
`580 F.3d 1301 (Fed. Cir. 2009) .............................................................................. 3
`McLean v. 988011 Ontario, Ltd.,
`224 F.3d 797 (6th Cir. 2000) .................................................................................. 1
`Mondis Tech. Ltd v. LG Elecs., Inc.,
`407 F. Supp. 3d 482 (D.N.J. 2019) ...................................................................3, 20
`Omega Patents, LLC v. CalAmp Corp.,
`13 F.4th 1361 (Fed. Cir. 2021) ...................................................................... 18, 19
`Pavo Solutions LLC v. Kingston Tech. Co.,
`35 F.4th 1367 (Fed. Cir. 2022) .............................................................. 2, 5, 13, 15
`Rembrandt Wireless Techs., LP v. Samsung Electronics Co., Ltd.,
`853 F.3d 1370 (Fed. Cir. 2017) ............................................................................16
`Smith Wholesale Co., Inc. v. R. J. Reynolds Tobacco Co.,
`No. 2:03-CV-30, 2005 WL 8162569 (E.D. Tenn. Feb. 23, 2005) .......................35
`Spectralytics, Inc. v. Cordis Corp.,
`649 F.3d 1336 (Fed. Cir. 2011) .............................................................................. 3
`Teenier v. Charter Commc’ns, LLC,
`No. 16-CV-13226, 2017 WL 3141051 (E.D. Mich. July 25, 2017) ......... 1, 10, 34
`Thomas v. City of Chattanooga,
`398 F.3d 426 (6th Cir. 2005) ......................................................................... 31, 32
`Uniloc USA, Inc. v. Microsoft Corp.,
`632 F.3d 1292 (Fed. Cir. 2011) ............................................................................13
`Vectura Ltd. v. Glaxosmithkline LLC,
` 981 F.3d 1030 (Fed. Cir. 2020) ................................................................ 2, 13, 17
`VirnetX, Inc. v. Cisco Sys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014) .............................................................................. 3
`RULES
`FED. R. EVID. 702 ....................................................................................................... 1
`
`vi
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`
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`I.
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`LEGAL BACKGROUND
`How courts evaluate challenges to the factual basis for expert opinions.
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`Rule 702 requires that an expert’s opinion be “based on sufficient facts or data,” and
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`apply “reliable principles and methods” “to the facts of the case.” FED. R. EVID. 702.
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`But while there must be some factual basis for the expert’s opinions, “[d]isputes
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`regarding implementing valid methodologies, the appropriateness of an expert’s use
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`and interpretation of data, or claims of ‘weaknesses in the factual basis of an expert
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`witness’ opinion…bear on the weight of the evidence rather than on its
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`admissibility.’” Bledsoe v. FCA US LLC, 4:16-cv-14024-TGB-RSW, 2022 WL
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`4596156, at *4 (E.D. Mich. Sept. 30, 2022) (Berg, J.) (quoting McLean v. 988011
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`Ontario, Ltd., 224 F.3d 797, 801 (6th Cir. 2000)). When there is “some sort of
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`explanation, the issue becomes one of weight, which should be left to the trier of
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`fact.” Teenier v. Charter Commc’ns, LLC, No. 16-CV-13226, 2017 WL 3141051, at
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`*4 (E.D. Mich. July 25, 2017). As such, “rejection of expert testimony is the
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`exception, rather than the rule.” In re Scrap Metal Antitrust Litig., 527 F.3d 517, 530
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`(6th Cir. 2008) (citing Fed. R. Evid. 702 advisory committee’s note, 2000 amend).
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`How courts assess damages based on comparable licenses. The parties
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`agree that using comparable licenses to determine a per-unit royalty for the Asserted
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`Patents is an appropriate methodology for assessing patent damages. See ECF 249
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`1
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`at PageID.13947. And “when a sufficiently comparable license is used as the basis
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`for determining the appropriate royalty, further apportionment may not necessarily
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`be required…because a comparable license (or a comparable negotiation) may in
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`some cases have ‘built-in apportionment.’” Vectura Ltd. v. Glaxosmithkline LLC,
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`981 F.3d 1030, 1040 (Fed. Cir. 2020). When evaluating a comparable license, a
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`damages expert may look not just to the express amount paid by the licensee, but
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`also to “context for the royalty,” including “testimony…explaining the structure of
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`the [license].” See Pavo Solutions LLC v. Kingston Tech. Co., 35 F.4th 1367, 1380
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`(Fed. Cir. 2022) (allowing testimony wherein expert used 1-cent-per-unit license to
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`extrapolate a 40-cent-per-unit rate); accord EcoFactor, Inc. v. Google LLC, 104
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`F.4th 243 (Fed. Cir. 2024) (approving use of license itself, testimony of plaintiff,
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`and negotiation emails to assess the effective royalty rate in a comparable license).
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`Use of a comparable license “must account for differences in the technologies
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`and economic circumstances of the contracting parties” relative to the hypothetical
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`negotiation (for example, whether the comparable license included rights to more
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`than the Asserted Patents). Vectura, 981 F.3d at 1041. But “there is no blanket rule
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`of quantitative apportionment in every comparable license case.” Bio-Rad Labs.,
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`Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1376 (Fed. Cir. 2020) (emphasis in
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`original). The Federal Circuit has “never required absolute precision in applying the
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`principles of apportionment; on the contrary, it is well-understood that this process
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`2
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`may involve some degree of approximation and uncertainty.” Id. at 1377 (cleaned
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`up) (quoting VirnetX, Inc. v. Cisco Sys., Inc., 767 F.3d 1308, 1328 (Fed. Cir. 2014)).
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`Other assumptions about the hypothetical negotiation include: a willing
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`licensor and licensee; an assumption of validity and infringement; and a presumption
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`that the negotiating parties know all relevant facts, even post-dating the negotiation.
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`See Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1325, 1333 (Fed. Cir. 2009).
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`In accounting for the assumption of validity and infringement (which is generally
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`not present in real world license negotiations), “[t]he Federal Circuit has recognized
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`the appropriateness of considering an uncertainty discount in the damages inquiry.”
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`Mondis Tech. Ltd v. LG Elecs., Inc., 407 F. Supp. 3d 482, 498 (D.N.J. 2019)
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`(approving expert testimony proposing to triple the baseline royalty rate to account
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`for the presumption of infringement and validity) (discussing, e.g., Spectralytics,
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`Inc. v. Cordis Corp., 649 F.3d 1336, 1347 (Fed. Cir. 2011)).
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`II. THE COURT SHOULD DENY DEFENDANTS’ MOTION TO
`EXCLUDE THE OPINIONS OF MS. HARVEY.
`As Defendants acknowledge, their experts and Ms. Harvey agree that
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`extrapolating a per-unit rate from Neo’s prior licenses is an appropriate and
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`acceptable way to derive damages in this case. Yet Defendants take the
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`irreconcilable and hypocritical position that while their experts can cherry-pick
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`portions of those licenses and use arbitrary extrinsic evidence (including third-party
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`3
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`data) to derive the lowest possible effective royalty rates; it is somehow Ms. Harvey
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`who is unreliable when she relies on the actual negotiations between the contracting
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`parties to interpret and evaluate Neo’s licenses.
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`Defendants can only make these arguments by plainly misrepresenting the
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`damages evidence in this case. For example, while Defendants contend that
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`determining an effective rate from Neo’s licenses is a “straightforward exercise,”
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`they do not mention that their three different damages experts (Mr. Meyer for Honda;
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`Ms. Dean for GM/Ford/FCA/Tesla; and Mr. Bakewell for Toyota/Nissan) all come
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`up with different answers even when applying their overly simplistic and flawed
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`approach.1 And most importantly, the bulk of their Motion mischaracterizes Ms.
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`Harvey’s entire methodology: they contend that she uses various inputs to derive
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`damages (purportedly without justifying their usage), without informing the Court
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`that Ms. Harvey actually observes and employs the methodology that the parties
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`used to arrive at the comparable licenses. Ms. Harvey’s goal was to determine “the
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`largely overlapping, reports for Toyota and Nissan respectively. For this brief,
`Bakewell’s Toyota Report will be cited to as exemplary of his opinions, unless
`otherwise noted.
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`4
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`value that the contracting parties settled on for the patent.” Pavo, 35 F.4th at 1380
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`(emphasis added). And while Defendants did not share that goal,2 Ms. Harvey’s
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`opinions are consistent with Federal Circuit law. The Court should decline
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`Defendants’ invitation to adopt Defendants’ own subjective, factually disconnected
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`interpretations of Neo’s licenses over Ms. Harvey’s, and deny their motion.
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`A. Background
`Consistent with the above, Defendants’ purportedly factual description of the
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`background of this motion is only sometimes factual.
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`Defendants’ description of “Ms. Harvey’s approach” is equally misleading.
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`They couch
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`steps of her analysis as
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`Harvey’s own, from-scratch damages model, Defendants can purport to criticize her
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`for not fully explaining and justifying each input in that model. But in a remarkable
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`omission, Defendants never once inform the Court that the methodology Ms. Harvey
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`analyzes, and the inputs Defendants criticize, comes directly from the methodology
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`the contracting parties used,
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`As part of factor 1 in her exhaustive Georgia-Pacific analysis, Ms. Harvey
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`evaluates all licenses produced in the case,
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`are the most comparable.4 ECF No. 249-7(“Harvey
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`Rpt.”) at PageID.14228, ¶ 80. Then, in the context of Georgia-Pacific factor 15,
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` Instead, she evaluates how the licensing
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`parties negotiated and arrived at the agreements,
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` Id. at PageID.14304–14317.
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`With this understanding of Neo’s licenses and the bases for the royalty rates
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`reflected therein, Ms. Harvey then applies them to the hypothetical negotiation.
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` ECF 249-7 at PageID.14319, ¶ 272. Next,
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`because the parties at the hypothetical negotiation would have complete knowledge
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`of the relevant facts,
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`Finally,
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`In sum, Ms. Harvey uses executed licenses to the Asserted Patents and their
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`negotiation history to determine the royalty rates implied by those licenses. There is
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`no question that Ms. Harvey has “some sort of explanation” for her analysis—an
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`exhaustive one—and as such “the issue becomes one of weight, which should be left
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`to the trier of fact.” Teenier, 2017 WL 3141051, at *4. The Court should decline
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`Defendants’ invitation to take this question away from the jury.
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`B. Argument
`1. Ms. Harvey Properly Analyzed the Royalty Structure the
`Contracting Parties Used in Comparable Licenses.
`With the proper framing above, the Court can deny the majority of
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`Defendants’ motion
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`reason that Ms. Harvey did not truly use those inputs at all.5
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`To understand how the hypothetical negotiation parties would apply that rate
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`to the specific facts of this case, Ms. Harvey examines how the comparable license
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`parties arrived at the rate. But Defendants attack a straw man when they insinuate
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`that Ms. Harvey employed the underlying methodology herself.
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`Case 2:22-md-03034-TGB ECF No. 262, PageID.23789 Filed 07/18/24 Page 19 of 44
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`To be clear, Neo disagrees that the methodology employed by the parties to
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`the comparable licenses is flawed, and Ms. Harvey did evaluate its general
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`reasonableness in the course of her report.6 But ultimately, none of this matters for
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`the Court’s decision. The ultimate proof of the reasonableness of this methodology
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`is that sophisticated licensees paid real money based on it.
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` The notion that, because Ms. Harvey went into more
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`depth in analyzing and understanding their basis, her opinions become less reliable,
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`is untenable. And the Court does not have any “basic gatekeeping function”
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`ECF 249 at PageID.13961–13962. The utility of using
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`comparable licenses to assess damages is to obviate the need to independently value
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`the patented technology, since the licensing parties already did that. See Vectura,
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`981 F.3d at 1041 (“Built-in apportionment effectively assumes that the negotiators
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`of a comparable license settled on a royalty rate and royalty base combination
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`embodying the value of the asserted patent.”). In fact, the Federal Circuit has
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`approved use of comparable licenses even when the license’s royalty base or rate, if
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`used independently by a damages expert, would violate Federal Circuit law.7
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`7 Compare Pavo, 35 F.4th at 1379 (allowing use of comparable license rate which
`was “approximately equal to [25%] of [the licensee’s] profits”), with Uniloc USA,
`Inc. v. Microsoft Corp., 632 F.3d 1292, 1315 (Fed. Cir. 2011) (rejecting the “25
`percent rule of thumb”); see also Vectura, 981 F.3d at 1040 (explaining how
`comparable license royalty base need not comply with “entire market value rule”).
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`13
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`Case 2:22-md-03034-TGB ECF No. 262, PageID.23791 Filed 07/18/24 Page 21 of 44
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`Finally, even to the extent Ms. Harvey did arguably
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` under various Georgia-Pacific
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`factors,
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` (see ECF 249-7 at PageID.14333–14335, ¶
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`290–291)—that too would be proper, since those inputs were used in comparable
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`licenses. In Pavo, the comparable license at issue charged a 1-cent per unit running
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`royalty to the licensee. 35 F.4th at 1379. Nevertheless, in applying it to the
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`hypothetical negotiation, the damages expert proposed a 40-cent per unit rate
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`premised not on the 1-cent license rate, but on statements in the comparable license
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`and witness testimony that the 1-cent rate represented 25% of the licensee’s profits
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`per unit. Id. The Federal Circuit held that this was “not unduly speculative,” and the
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`expert was entitled to look not just at the rate paid, but the evidence about how that
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`rate was derived, which “provides greater context for the royalty.” Id. That is exactly
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`what Ms. Harvey does in this case.
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`2. Ms. Harvey Properly Relies on the Parties’ Negotiations to
`Further Apportion Comparable Licenses.
`Consistent with their theme of ignoring the factual context of Neo’s licenses,
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`Defendants next argue that Ms. Harvey “rewrote” Neo’s comparable licenses, ECF
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`249 at PageID.13966, when all she did was evaluate them in the context of the
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`extensive record of negotiation documents and testimony of Neo’s principals.
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`14
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`Case 2:22-md-03034-TGB ECF No. 262, PageID.23792 Filed 07/18/24 Page 22 of 44
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`As a preliminary matter, Defendants (and their experts) again ignore
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` So
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`the notion that Ms. Harvey relies entirely on “parol evidence” is simply false.
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`But even if it were true, damages experts do not interpret a legal document as
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`a court would do to understand its legal import; they use their expertise to assess
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`how the parties at the hypothetical negotiation would understand the license
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`agreement for valuing the asserted patents. Defendants cite no case supporting that
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`damages experts must adhere to the same interpretive legal restrictions as judges,
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`and in fact damages experts routinely rely, admissibly, on evidence outside the
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`contract itself to contextualize the royalty payment. See, e.g., discussion of Pavo,
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`supra; Ecofactor, 104 F.4th 243 (consulting “the three license agreements,
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`[plaintiff’s] testimony, and the Ecofactor-Johnson email chain” to conclude that
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`Ecofactor’s expert’s interpretation of the licenses was admissible); cf. AVM Techs.,
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`LLC v. Intel Corp., 927 F. Supp. 2d 139, 145 (D. Del. 2013) (excluding expert
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`testimony on an agreement for lack of “analysis of the underlying negotiations . . .
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`or the context in which the settlement agreement was reached”).
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`For the same reasons, Defendants’ citation to Rule 408, ECF 249 at
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`PageID.13967, is equally misplaced, since their argument for excluding the
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`15
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`Case 2:22-md-03034-TGB ECF No. 262, PageID.23793 Filed 07/18/24 Page 23 of 44
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`negotiations of these agreements would just as well prohibit the use of settlement
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`agreements altogether if correct. Yet Defendants rely on these same agreements
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`(including portions of the negotiation history), and offer no argument for why the
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`agreements should be admissible but not their contextualizing information.8
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`Without these (unavailing) attempts to exclude the evidence Ms. Harvey does
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`rely on for her apportionment analysis, Defendants cannot plausibly claim that she
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`fails to apportion. As such, their arguments amount to simply ignoring the
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`painstaking analysis Ms. Harvey undertakes:
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`•
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`8 Defendants cite Laserdynamics, but at that time the Federal Circuit had only
`“recently permitted such reliance [on settlement agreements] under certain limited
`circumstances.” LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 77
`(Fed. Cir. 2012). Since then, courts have routinely allowed settlement agreements to
`inform patent damages, without excluding their negotiations from evidence. See,
`e.g., Rembrandt Wireless Techs., LP v. Samsung Electronics Co., Ltd., 853 F.3d
`1370, 1381 (Fed. Cir. 2017) (allowing damages expert to discuss settlement
`agreement and its negotiations, because “our cases allow relevant settlement
`agreements to be considered in determining a reasonable royalty rate.”).
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`16
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`Case 2:22-md-03034-TGB ECF No. 262, PageID.23794 Filed 07/18/24 Page 24 of 44
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`Ms. Harvey in fact performs a detailed analysis to determine the proper value
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`that the parties at the hypothetical negotiation would attribute to the Asserted Patents
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`specifically,
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`. Thus, to “account for differences
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`in the technologies and economic circumstances of the contracting parties” relative
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`to the hypothetical negotiation, Vectura, 981 F.3d at 1041,
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`17
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`Case 2:22-md-03034-TGB ECF No. 262, PageID.23795 Filed 07/18/24 Page 25 of 44
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`Note that this exercise does not simply conclude
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`In short, Ms. Harvey follows the record evidence
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`where it leads, and “sufficiently account[s] for the economic differences between the
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`patents in the [] license agreements (asserted and non-asserted) and the
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`hypothetically negotiated agreement.” EcoFactor, 104 F.4th at 256.
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`Defendants may not like the outcome, or find some of the evidence “self-
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`serving,” ECF 249 at PageID.13958, but “whether [evidence is] ‘self-serving’…is a
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`question for the jury.” EcoFactor, 104 F.4th at 254. And Defendants are flatly
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`incorrect to claim that the Omega Court held that “apportionment must be based on
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`a quantitative evaluation.” ECF 249 at PageID.13973. Putting aside that Ms.
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`Harvey’s analysis is quantitative, Omega says no such thing, and elsewhere the
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`Federal Circuit has expressly said the opposite: “there is no blanket rule of
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`quantitative apportionment in every comparable license case.” Bio-Rad Labs., 967
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`18
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`Case 2:22-md-03034-TGB ECF No. 262, PageID.23796 Filed 07/18/24 Page 26 of 44
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`F.3d at 1376 (emphasis in original). And the Federal Circuit just last month
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`explained that Omega only rejected the expert’s opinion because “the expert ‘merely
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`identified…differences’ between the patents in the licenses and the patents in the
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`hypothetical negotiation and did not distinguish such facts.” EcoFactor, 104 F.4th
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`at 256 (quoting Omega Patents, LLC v. CalAmp Corp., 13 F.4th 1361, 1379 (Fed.
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`Cir. 2021)). “Unlike in Omega…, here…[Ms. Harvey] addressed and distinguished
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`the remaining patents discussed in the license agreements.” Id. As such, “if there
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`were any failures to control for certain variables in comparability, these factual
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`issues [are] for the jury to decide.” Id.9
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`In sum, Defendants cannot credibly contend that Ms. Harvey’s methodology
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`lacks sufficient factual support. Ms. Harvey’s apportionment methodology is based
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`on the factual record of the licenses themselves. Defendants’ critiques are for cross-
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`examination; there is no basis for the Court to exclude Ms. Harvey’s testimony.
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`9 Omega also does not support Defendants’ contention that Ms. Harvey could not
`rely on conversations with Neo to support her reallocation analysis. Omega did not
`categorically criticize use of patentee testimony or negotiation history in the
`apportionment inquiry; it criticized specific testimony that the plaintiff “sought the
`same licensing fee regardless of what patents were included or what technology was
`covered,” which amounted to “avoid[ing] the task of apportionment.” 13 F.4th at
`1379.
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`She does not say that
`any Neo patent would warrant her full royalty; she determines the specific royalty
`these Asserted Patents warrant based on the record, and applies a different rate to
`each asserted family (and one unasserted family) according to that analysis.
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`19
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`Case 2:22-md-03034-TGB ECF No. 262, PageID.23797 Filed 07/18/24 Page 27 of 44
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`3. Ms. Harvey’s “Validity Premium” Is Directly Tied to the
`Facts of the Case.
`Turning to Ms. Harvey’s rate adjustment
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`Defendants do not dispute that making a numerical adjustment to comparable
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`licenses to account for the lack of assumed validity is appropriate; nor could they.
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`Mondis Tech. Ltd., 407 F. Supp. 3d at 498 (“The Federal Circuit has recognized the
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`appropriateness of considering an uncertainty discount in the damages inquiry.”).
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`Defendants just quibble with the way Ms. Harvey made that adjustment.
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`But their first cr