Case 1:19-cv-11586-FDS Document 320 Filed 02/23/22 Page 1 of 22
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`UNITED STATES DISTRICT COURT
`FOR THE FIRST DISTRICT OF MASSACHUSETTS
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`PHILIPS NORTH AMERICA LLC,
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`FITBIT LLC,
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`Case No. 1:19-cv-11586-FDS
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`Plaintiff,
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`vs.
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`Defendant.
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`PLAINTIFF’S OPPOSITION TO DEFENDANT’S MOTION TO STRIKE PORTIONS
`OF THE EXPERT REPORT AND EXCLUDE CERTAIN OPINIONS AND TESTIMONY
`OF DR. MICHAEL P. AKEMANN
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`

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`Case 1:19-cv-11586-FDS Document 320 Filed 02/23/22 Page 2 of 22
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`I. 
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`II. 
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`TABLE OF CONTENTS
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`Introduction ......................................................................................................................... 1 
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`Legal Standards ................................................................................................................... 1 
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`III. 
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`Argument ............................................................................................................................ 2 
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`A. 
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`The Benchmark Licenses are properly used in Dr. Akemann’s
`comparables approach to form his opinion regarding a hypothetical license
`to the ’377 patent .................................................................................................... 2 
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`1. 
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`2. 
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`The ’191 patent and ’377 patent are technologically comparable .............. 3 
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`The Benchmark Licenses are economically comparable to the
`hypothetically negotiated license ................................................................ 7 
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`B. 
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`C. 
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`D. 
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`Dr. Akemann apportioned the value of the invention ............................................. 9 
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`Dr. Akemann’s adjustments to the Benchmark Licenses were specific and
`clearly disclosed .................................................................................................... 12 
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`Dr. Akemann did not use the “entire market value” approach ............................. 15 
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`IV. 
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`Conclusion ........................................................................................................................ 17 
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`i
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`Case 1:19-cv-11586-FDS Document 320 Filed 02/23/22 Page 3 of 22
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`TABLE OF AUTHORITIES
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`
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`Page(s)
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`
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`Cases
`
`Applera Corp. v. MJResearch Inc.,
`389 F. Supp. 2d 356 (D. Conn. 2005) ........................................................................................6
`
`Bio-Rad Laboratories, Inc. v. 10X Genomics Inc.,
`967 F.3d 1353 (Fed. Cir. 2020)............................................................................................5, 10
`
`Bricklayers and Trowel Trades Intern. Pension Fund v. Credit Suisse Securities (USA) LLC,
`752 F.3d 82 (1st Cir. 2014) ........................................................................................................1
`
`Daubert v. Merrell Dow Pharm., Inc.,
`509 U.S. 579 (1993) ...........................................................................................................1, 2, 4
`
`Elbit Sys. Land and C4I Ltd. v. Hughes Network Sys., LLC,
`927 F.3d 1292 (Fed. Cir. 2019)............................................................................................9, 10
`
`EMC Corp. v. Pure Storage, Inc.,
`154 F. Supp. 3d 81 (D. Del. 2016) .............................................................................................5
`
`Ericsson, Inc. v. D-Link Sys., Inc.,
`773 F.3d 1201 (Fed. Cir. 2014)................................................................................................11
`
`Finjan, Inc. v. Blue Coat Sys., Inc.,
`879 F.3d 1299 (Fed. Cir. 2018)................................................................................................15
`
`Gen. Elec. Co. v. Joiner,
`522 U.S. 136 (1997) ...............................................................................................................4, 5
`
`Good Tech. Corp. v. Mobileiron, Inc.,
`5:12-CV-05826-PSG, 2015 WL 4197554 (N.D. Cal. July 10, 2015) ........................................5
`
`Masimo Corp. v. Philips Elecs. N.A. Corp.,
`CA 09-80-LPS-MPT, 2013 WL 2178047 (D. Del. May 20, 2013) ...........................................6
`
`Mfg. Resources Intl., Inc. v. Civiq Smartscapes, LLC,
`CV 17-269-RGA, 2019 WL 4198194 (D. Del. Sept. 4, 2019) ................................................14
`
`MLC Intell. Prop., LLC v. Micron Tech., Inc.,
`10 F.4th 1358 (Fed. Cir. 2021) ................................................................................................11
`
`Mondis Tech, Ltd. v. LG Electronics, Inc.,
`2:07-CV-565-TJW-CE, 2011 WL 2417367 (E.D. Tex. June 14, 2011) ..................................12
`
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`ii
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`Case 1:19-cv-11586-FDS Document 320 Filed 02/23/22 Page 4 of 22
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`Omega Patents, LLC v. CalAmp Corp.,
`13 F.4th 1361 (Fed. Cir. 2021) ..................................................................................................8
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`ResQNet.com, Inc. v. Lansa, Inc.,
`594 F.3d 860 (Fed.Cir.2010)....................................................................................................12
`
`Ruiz-Troche v. Pepsi Cola of Puerto Rico Bottling Co.,
`161 F.3d 77 (1st Cir. 1998) ........................................................................................................2
`
`Skyhook Wireless, Inc. v. Google, Inc.,
`CV 10-11571-RWZ, 2015 WL 13620764 (D. Mass. Feb. 18, 2015) ............................9, 12, 16
`
`Stickle v. Heublein, Inc.,
`716 F.2d 1550 (Fed. Cir. 1983)..................................................................................................6
`
`Sun Pharm. Industries, Ltd. v. Eli Lilly and Co.,
`611 F.3d 1381 (Fed. Cir. 2010)..................................................................................................3
`
`TiVo, Inc. v. EchoStar Communications Corp.,
`516 F.3d 1290 (Fed. Cir. 2008)..................................................................................................6
`
`TWM Mfg. Co., Inc. v. Dura Corp.,
`789 F.2d 895 (Fed.Cir.1986)....................................................................................................12
`
`Uniloc USA, Inc. v. Microsoft Corp.,
`632 F.3d 1292 (Fed. Cir. 2011)....................................................................................1, 2, 7, 12
`
`Virnetx, Inc. v. CiscoSys., Inc.,
`767 F.3d 1308 (Fed. Cir. 2014)....................................................................................1, 2, 9, 12
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`iii
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`Case 1:19-cv-11586-FDS Document 320 Filed 02/23/22 Page 5 of 22
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`I.
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`INTRODUCTION
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`Philips North America LLC (“Philips”) opposes Fitbit LLC’s (“Fitbit”) Motion to Strike
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`Portions of the Expert Report and Exclude Certain Opinions and Testimony of Dr. Michael P.
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`Akemann (“Motion”) regarding a reasonable royalty for Fitbit’s infringement of the ’377 patent.
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`(Dkt. 304.) Fitbit’s Motion mischaracterizes Dr. Akemann’s analytical methods, fails to cite
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`authority to support its position, and amounts to nothing more than a dispute as to the weight Dr.
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`Akemann’s testimony should be accorded rather than admissibility. Fitbit’s long-winded
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`complaint that Dr. Akemann fails to apportion the value of the invention’s contribution to the price
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`of the Accused Products confuses Dr. Akeman’s per-unit approach (based on the value of the
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`invention) with an ad valorem approach (based on the value of the infringing product) that Dr.
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`Akeman did not uilize. Ultimately, Fitbit rests on its own opinion that the Benchmark Licenses
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`relied on by Dr. Akemann are not comparable, but this is not a basis to exclude Dr. Akemann’s
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`opinion. Instead, this sort of challenge to Dr. Akemann’s analysis is best explored through cross-
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`examination. See Virnetx, Inc. v. CiscoSys., Inc., 767 F.3d 1308, 1331 (Fed. Cir. 2014)
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`(comparability of licenses is “factual issue best addressed by cross examination and not be
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`exclusion” and “the jury [is] entitled to hear the expert testimony and decide for itself what to
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`accept or reject.”).
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`As such Fitbit’s Motion is an unsupported and improper effort to exclude expert testimony
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`under Daubert. The Court should deny Fitbit’s Motion.
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`II.
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`LEGAL STANDARDS
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`Under Daubert, the district judge is a gatekeeper, not a fact finder. Bricklayers and Trowel
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`Trades Intern. Pension Fund v. Credit Suisse Securities (USA) LLC, 752 F.3d 82, 91 (1st Cir.
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`2014); Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292, 1305–06 (Fed. Cir. 2011) (“First
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`Circuit law does not allow the district court in a jury trial to evaluate ‘the credibility of witnesses,
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`4866-2385-9982.2
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`Case 1:19-cv-11586-FDS Document 320 Filed 02/23/22 Page 6 of 22
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`resolve conflicts in testimony, or evaluate the weight of the evidence.’ Under Daubert, the district
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`court must exercise its ‘gatekeeper’ function in ensuring that scientific testimony is relevant and
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`reliable.”) (internal citations omitted). “Daubert does not require that a party who proffers expert
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`testimony carry the burden of proving to the judge that the expert’s assessment of the situation is
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`correct.... In short, Daubert neither requires nor empowers trial courts to determine which of
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`several competing theories has the best provenance. It demands only that the proponent of the
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`evidence show that the expert’s conclusion has been arrived at in a scientifically sound and
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`methodologically reliable fashion.” Ruiz-Troche v. Pepsi Cola of Puerto Rico Bottling Co., 161
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`F.3d 77, 85 (1st Cir. 1998) (internal citations omitted). “Vigorous cross-examination, presentation
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`of contrary evidence, and careful instruction on the burden of proof are the traditional and
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`appropriate means of attacking shaky, but admissible evidence.” Daubert v. Merrell Dow Pharm.,
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`Inc., 509 U.S. 579, 596 (1993).
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`III. ARGUMENT
`A.
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`The Benchmark Licenses are properly used in Dr. Akemann’s comparables
`approach to form his opinion regarding a hypothetical license to the ’377
`patent
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`Fitbit spends an inordinate amount of ink attempting to undermine Dr. Akemann’s
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`comparables approach by insisting there were substantial differences between the Benchmark
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`Licenses and the hypothetical license and that Dr. Akemann failed to account for such alleged
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`differences. (Dkt. 310 at 3-11.) Fitbit’s protestations regarding the purported substantial
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`differences are merely a difference of opinion between the experts and cannot form a basis to
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`exclude Dr. Akemann’s opinion. See Virnetx, 767 F.3d at 1331 (comparability of licenses is
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`“factual issue best addressed by cross examination and not by exclusion” and “the jury [is] entitled
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`to hear the expert testimony and decide for itself what to accept or reject.”); Uniloc, 632 F.3d at
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`1306 (Fed. Cir. 2011) (“It is decidedly the jury’s role to evaluate the weight to be given to the
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`Case 1:19-cv-11586-FDS Document 320 Filed 02/23/22 Page 7 of 22
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`testimony of dueling qualified experts.”). In the context of the comparability of a sale which is a
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`completely different transaction, between two parties that both want to be licensors as opposed to
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`a hypothetical licensor/licensee deal, Fitbit’s own expert has asserted that sales are comparable.
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`(See, e.g., Ex. 1, Kindler Report, ¶¶ 117, 118, Exhibit 7.) Philips disputes such comparability, but
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`as with comparable licenses, these matters of disagreement among the parties go to the weight of
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`the evidence and expert opinion, not to whether the comparable licenses are proper information
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`for experts to consider. For all of Fitbit’s disagreement with the per-unit value Dr. Akemann
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`determined based on the comparable licenses, Fitbit’s disagreement goes to values determined by
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`Dr. Akemann. Dr. Akemann did not base his analysis on the price of a Fitbit device (i.e., ad
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`valorem) implicating an Entire Market Value of all features. Dr. Akemann did not base his analysis
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`on the Entire Market Value (or price of) the Fitbit product at all. Dr. Akemann determined the
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`hypothetical royalty rate for the invention on a per unit basis. In this manner, the issues raised by
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`Fitbit are based on a false characterization of Dr. Akemann’s analysis.
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`1.
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`The ’191 patent and ’377 patent are technologically comparable
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`Dr. Akemann relied on Philips’s technical expert’s opinion that the ’191 patent and the
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`’377 patent are technologically comparable even though the claims from the two patents are not
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`identical (nor could they be1). (Ex. 2, Martin Report at ¶¶ 279-288.) There is no dispute that both
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`patents share the same specification and some claims of priority. Fitbit’s lengthy recitation of Dr.
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`Paradiso’s review of the claims of the ’191 patent and the ’377 patent as revealing “significant
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`distinctions” fails to identify why any of these differences matter to the value that would be
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`1 To the extent Fitbit suggests that to be technically comparable a patent must have the same claims
`that is an impossibility, meaning that no two patents could ever been described as covering
`comparable technology. See Sun Pharm. Industries, Ltd. v. Eli Lilly and Co., 611 F.3d 1381, 1384
`(Fed. Cir. 2010) (“statutory double patenting, which stems from 35 U.S.C. § 101[] prohibits a later
`patent from covering the same invention, i.e., identical subject matter, as an earlier patent.”).
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`3
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`allocated in a similar (albeit hypothetical) negotiation. (See Dkt. No. 310 at 6-7.) It is unclear
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`what Fitbit is arguing when it faults Dr. Akemann for relying on Philips’s technical expert, Dr.
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`Martin, in regards to the technological comparability of the ’191 patent, which is licensed in the
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`Benchmark Licenses, and the asserted ’377 patent. It is entirely proper for an expert to rely on
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`other experts and witnesses when forming their expert opinion, especially for technical
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`information. (See, e.g., Ex. 3, Akemann Tr. at 89:17-20, 97:20-21, 100:12-21; 102:16-21; 104:2-
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`7 (“Since I’m not a technical expert, I’m not able to offer technical opinions on the ’191 versus
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`the ’377 patent. For example, I’d have to rely on a technical expert like Dr. Martin for his view on
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`technical comparability, which is precisely what I’ve done here.”).) Moreover, Fitbit’s citation to
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`Dr. Martin’s testimony paints an incomplete picture. Indeed Dr. Martin provided an opinion in his
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`report and testimony that the ’191 patent and ’377 patent “are technologically similar to each
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`other” and “were directed towards the same general type of technology, in terms of monitoring
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`health and exercise parameters.” (Ex.2, Martin Report, ¶ 288; Ex. 4, Martin Tr. at 306:20-22.)
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`Fitbit has not sought to exclude Dr. Martin’s testimony under Daubert as being somehow
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`inadmissible.
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`Nor is it improper for Dr. Akemann to rely on Philips’s employee Mr. Tol to gather
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`information regarding whether the ’191 patent and the ’377 patent cover comparable technology.
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`Indeed, Fitbit’s own damages expert, Ms. Kindler, relies extensively on Fitbit’s technical expert,
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`Dr. Paradiso, as well as five Fitbit employees. (Ex. 1, Kindler Rebuttal Damages Report at ¶¶ 8,
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`22, 46, 110, 144; footnotes 34, 67, 75, 95, 96, 160, 161, 164, 182, 194, 283, 309, 324, 334, 337,
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`338, 341, 380, 381, 390, 413, 425; Exhibit 7 at p. 10 of 11.) Tellingly, Fitbit cites to no relevant
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`authority that Dr. Akemann’s reliance on Mr. Tol’s testimony renders Dr. Akemann’s opinion so
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`outside the realm of accepted practice that it should be withheld from the jury. Fitbit’s use of Gen.
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`4
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`Case 1:19-cv-11586-FDS Document 320 Filed 02/23/22 Page 9 of 22
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`Elec. Co. v. Joiner, 522 U.S. 136 (1997) for the proposition that it was improper for Dr. Akemann
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`to rely on “ipse dixit” statements from Mr. Tol is inapposite. In GE, the Supreme Court agreed
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`that a “court may conclude that there is simply too great an analytical gap between the data and
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`the opinion proffered” when the epidemiological studies the expert relied on to prove PCB’s
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`caused small-cell lung cancer were not directed to proving such causation. Id. at 146. Mr. Tol’s
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`opinions that Dr. Akemann relied on were based on Mr. Tol’s experience with the ’191 patent and
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`the ’377 patent, from both a technology and licensing standpoint. Fitbit’s own expert relies on the
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`testimony and instances are legion where fact witnesses are considered by damages experts. See,
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`e.g., Bio-Rad Laboratories, Inc. v. 10X Genomics Inc., 967 F.3d 1353, 1377 (Fed. Cir. 2020)
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`(damages expert “relied on the reports, testimony, and conclusions of other witnesses to understand
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`that the licenses were technologically comparable”); Good Tech. Corp. v. Mobileiron, Inc., 5:12-
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`CV-05826-PSG, 2015 WL 4197554, at *4 (N.D. Cal. July 10, 2015) (denying motion to exclude
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`damages expert opinion that relied on a party’s witness regarding non-infringing alternatives);
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`EMC Corp. v. Pure Storage, Inc., 154 F. Supp. 3d 81, 117 (D. Del. 2016) (same). Indeed, Fitbit
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`would undoubtedly argue that it would be impermissible to ignore Mr. Tol’s testimony. Therefore
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`this was not an “analytical gap” between the data Dr. Akemann received and the opinion he
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`offered, but rather Dr. Akemann considering the data he received in the context of other
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`information he gathered.
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`Fitbit’s criticism of Dr. Akemann’s treatment of the technical benefits of the ’377 patent
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`and the ’191 patent is also without merit. Dr. Akemann does provide a discussion of the technical
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`benefits in his report and Fitbit does nothing more than complain in vague terms as to what it
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`deems is amiss. Fitbit’s persistent focus on the differences between the claim language of the ’191
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`patent and the ’377 patent fails to ever identify how these differences are pertinent to the degree
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`5
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`Case 1:19-cv-11586-FDS Document 320 Filed 02/23/22 Page 10 of 22
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`of technical comparability such that it matters to Dr. Akemann’s analysis. See, e.g., Applera Corp.
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`v. MJResearch Inc., 389 F.Supp.2d 356, 361 (D. Conn. 2005) (“Notwithstanding [a finding of non-
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`infringement as to one claim], there is no basis for adjusting or vacating the jury’s damages
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`award.”); TiVo, Inc. v. EchoStar Communications Corp., 516 F.3d 1290, 1312 (Fed. Cir. 2008)
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`(upholding damages award after claim found non-infringed “[b]ecause the damages calculation at
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`trial was not predicated on the infringement of particular claims, and because . . . all of the accused
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`devices infringe the software claims”); Stickle v. Heublein, Inc., 716 F.2d 1550, 1561 n. 8 (Fed.
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`Cir. 1983) (Approving the treatment of “mechanical and process patents as a unitary licensing
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`property.”). Fitbit points to Masimo Corp. v. Philips Elecs. N.A. Corp., CA 09-80-LPS-MPT, 2013
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`WL 2178047 (D. Del. May 20, 2013) for the concept that to use a prior agreement in a hypothetical
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`negotiation analysis, “the licensed technology [needs to be] ‘substantially similar’ to the
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`technology claimed by the asserted patents.” (Dkt. 310 at 8.) In Masimo, the court addressed “past
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`licenses to technologies other than the patents in suit.” Masimo, 2013 WL 2178047 at *20. Thus,
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`the circumstances in Masimo do not apply to the instant case and do not support Fitbit’s Motion.
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`In Masimo, the license agreement did not identify the specific products and “it does not specifically
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`identify the technology” to be licensed under the agreement, therefore the court concluded it did
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`not “contemplate comparable technology to the patents-in-suit” and could not be used to calculate
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`a reasonable royalty rate. Id. at *20. Here, Dr. Martin provided a written opinion and testified
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`under oath that the ’191 patent and the ’377 “patents are technologically similar to each other.”
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`(Ex. 2, Martin Report, ¶ 288; Ex. 4 Martin Tr. at 306:20-22 (“they were directed towards the same
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`general type of technology, in terms of monitoring health and exercise parameters”).) Both patents
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`share a common specification and description. Also, as Fitbit admits, the products in the
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`6
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`Case 1:19-cv-11586-FDS Document 320 Filed 02/23/22 Page 11 of 22
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`Benchmark Licenses are identified such that it can be determined what technology from the ’191
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`patent was contemplated by the license. (Dkt. 310 at 8.)
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`2.
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`The Benchmark Licenses are economically comparable to the
`hypothetically negotiated license
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`Again, Fitbit complains and disagrees with the conclusions that Dr. Akemann draws from
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`his economic analysis of the comparability between the Benchmark Licenses and the
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`hypothetically negotiated license. (Dkt. 310 at 9-10.) As in other situations, this is a matter of
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`parties disagreeing over the weight to be given various forms of evidence and the conclusions to
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`be drawn from them. As part of his analysis, Dr. Akemann provided a myriad of economic factors
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`that create comparability between the Benchmark Licenses and the hypothetical license. (Dkt.
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`307-1, Akemann Report, ¶¶ 245-248.) For instance, Dr. Akemann identifies that the Benchmark
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`License and the hypothetical license are economically comparable because they both
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`(Id., ¶ 248.) That Fitbit’s expert does not agree or has a contrary opinion does not make Dr.
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`Akemann’s opinion inadmissible. Uniloc, 632 F.3d at 1306 (Fed. Cir. 2011) (“It is decidedly the
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`jury's role to evaluate the weight to be given to the testimony of dueling qualified experts.”).
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`7
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`(See also ¶¶ 43-46,
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`150-160, 248, 320-321.)
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`Fitbit’s complaints that Dr. Akemann “fail[s] to explain how the benchmark licenses
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`covering multiple patents are sufficiently comparable to the hypothetical license solely for the ’377
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`patent.” (Dkt. 310 at 11.) However, what Fitbit is really complaining about is that it does not agree
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`with Dr. Akemann’s analysis but this disagreement does not make Dr. Akemann’s opinion
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`unreliable, but rather goes to the weight accorded Dr. Akemann’s opinion. Moreover, Fitbit’s
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`authority for its position are distinguishable. In Omega Patents, LLC v. CalAmp Corp., 13 F.4th
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`1361 (Fed. Cir. 2021), the court “concluded that Omega failed to adequately account for substantial
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`‘distinguishing facts’ between the proffered licenses and a hypothetical negotiation over a single-
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`patent license to the ’278 patent. Most glaringly, each of the eighteen proffered licenses involves
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`numerous patents, in contrast to a hypothetical negotiation for a single-patent license.” Id. at 1380.
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`Moreover, the expert only “identified differences” but did not “account for such distinguishing
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`facts.” Id. at 1381. As discussed below, unlike the expert in Omega, Dr. Akemann’s analysis
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`8
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`Case 1:19-cv-11586-FDS Document 320 Filed 02/23/22 Page 13 of 22
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`allocated the value of the Benchmark Licenses attributed to the ’191 patent using forward-citation
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`analysis,
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` and adjusted for the differences in the
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`licensed devices and the Accused Products.
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`Skyhook Wireless, Inc. v. Google, Inc., CV 10-11571-RWZ, 2015 WL 13620764 (D. Mass.
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`Feb. 18, 2015) is also distinguishable. In Skyhook, defendant’s technical expert’s opinion was
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`excluded regarding “whether the technologies underlying 21 [defendant’s] licenses (consisting of
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`more than 100 patents) were comparable to the technologies claimed in the asserted patent.” Id.
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`The technical expert offered no analysis, admitted he had not analyzed the asserted claims and
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`“merely analyzed what he calls the ‘totality of the patents’” Id. at *2. In the instant case, Philips’s
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`technical expert analyzed the differences and similarities between the ’191 patent and the ’377
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`patent, which is a continuation of the ’191 patent – unlike the completely unrelated patents
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`analyzed by the technical expert in Skyhook. Further, Dr. Akemann use of the Benchmark Licenses
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`included the ’191 patent unlike the utterly unrelated patents (licensed by the defendant) in Skyhook.
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`B.
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`Dr. Akemann apportioned the value of the invention
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`Dr. Akemann applied the widely acceptable and reliable comparables approach to
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`apportion the value of the ’377 patent in his reasonable royalty analysis. Elbit Sys. Land and C4I
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`Ltd. v. Hughes Network Sys., LLC, 927 F.3d 1292, 1299 (Fed. Cir. 2019) (collecting cases). As
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`set forth in Virnetx, the use of actual past licenses to inform the hypothetical negotiation does not
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`“require[] identity of circumstances” Virnetx, 767 F.3d at 1330. However, “the prior licenses []
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`need to be ‘sufficiently comparable’ for evidentiary purposes and any differences must be soundly
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`accounted for.” Elbit, 927 F.3d at 1299. As set forth throughout Dr. Akemann’s report, any
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`differences between the Benchmark Licenses and the hypothetically negotiated license are soundly
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`accounted for. (Dkt. 307-1, ¶¶ 241-295.) First Dr. Akemann accounts for the relevant differences
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`between the ’191 patent and the ’377 patent by relying on Dr. Martin’s opinion that because the
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`Case 1:19-cv-11586-FDS Document 320 Filed 02/23/22 Page 14 of 22
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`two patents relate to the accused functionality, the patents are technically comparable. (Dkt. 307-
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`1, ¶ 244.) Dr. Akemann goes further in support of this position by relying on Philips’s witness,
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`Mr. Tol, to determine that Philips considers the ’191 patent to be a proxy for the ’377 patent. (Id.,
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`¶ 245); Elbit, 927 F.3d at 1301 (finding that the expert appropriately accounted for the differences
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`between the technology at issue in the comparable agreement and the accused technology).
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`Dr. Akemann, relying on Dr. Martin’s opinion that the patented functionality at issue in
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`the Benchmark Licenses was comparable to the infringing functionality of Fitbit’s Accused
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`Products, then used the Benchmark Licenses for the purpose of identifying the license rate on a
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`per-unit basis apart from other features and any related increase in pricing. Elbit, 927 F.3d at 1301
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`(“[the expert’s] testimony allowed the jury to find that the components at issue, for purposes of
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`apportionment to the value of a larger product or service, were comparable to the components at
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`issue in the [comparable] agreement... [The parties to the comparable agreement] would have had
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`to consider the benefit from the patented technology over other technology and account for that in
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`the [comparable agreement]. As a result, when [the expert] used the [comparable agreement] as
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`his starting point, his analysis could reasonably be found to incorporate the required
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`apportionment.”). Dr. Akeman’s analysis is not based on the pricing of other features of the
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`products, but rather the license per-unit rate for the licensed technology.
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`It is not controversial or improper that Dr. Akemann “relied on the reports, testimony, and
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`conclusions of other witnesses to understand that the licenses were technologically comparable,
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`and that the proportion of licensed/unlicensed features was comparable to the present case.” Bio-
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`Rad., 967 F.3d at 1377 (finding expert’s analysis of comparable licenses “could reasonably be
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`found to incorporate the required apportionment.”) (citing Virnetx, 767 F.3d at 1328 (“[W]e note
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`that we have never required absolute precision in [applying the principles of apportionment]; on
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`the contrary, it is well-understood that this process may involve some degree of approximation and
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`uncertainty.”); see also Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201, 1227 (Fed. Cir. 2014)
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`(recognizing that, even though “[p]rior licenses ... are almost never perfectly analogous to the
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`infringement action,” if accompanied by testimony accounting for the distinguishing facts, prior
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`licenses may help the jury decide an appropriate royalty award). Of course, in the present case,
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`Dr. Akeman was able to assign a value to the patented technology based on the value paid for
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`similar technology such that the license value can be established on a per-unit basis as opposed to
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`pricing of the final product. In this manner, the price assigned for other features is taken into
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`account and excluded because the price is for the technology of relevance alone. Dr. Akeman does
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`not present an entire market value approach.
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`Fitbit asserts that MLC Intell. Prop., LLC v. Micron Tech., Inc., 10 F.4th 1358 (Fed. Cir.
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`2021) supports its arguments, however MLC is distinguishable. In MLC, the Federal Circuit
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`affirmed the exclusion of the damages expert’s opinion where he applied a .25% royalty rate that
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`did not appear in the agreements used by the expert, and rejected “the view that the [] agreements
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`are comparable licenses. As the district court properly explained, ‘there is no evidence regarding
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`the [] agreement that supports [the expert’s] opinion that a specific royalty rate derived from the []
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`agreement already accounts for apportionment of non-patented features’ in this case.” MLC, 10
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`F.4th at 1374. The expert in MLC only generalized the relevant market “as a commodity market”
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`and the agreement granted “a license to a portfolio of forty-one U.S. and international patents and
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`patent applications, and only one of those forty-one patents is at issue in the hypothetical
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`negotiation” for which the expert made no adjustment for. MLC, 10 F.4th at 1374–75. Unlike the
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`expert in MLC, as set-forth below, Dr. Akemann allocates for the value of the ’191 patent in the
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`Benchmark Licenses (containing multiple patents) by using forward-citation analysis.
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`As with the rest of Fitbit’s arguments, this disagreement does not make Dr. Akemann’s
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`opinion unreliable, but rather it is for the jury to determine weight and credibility. See Virnetx, 767
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`F.3d at 1331 (comparability of licenses is “factual issue best addressed by cross examination and
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`not be exclusion” and “the jury [is] entitled to hear the expert testimony and decide for itself what
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`to accept or reject.”); Uniloc, 632 F.3d at 1306 (Fed. Cir. 2011) (“It is decidedly the jury's role to
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`evaluate the weight to be given to the testimony of dueling qualified experts.”); Skyhook, 2015 WL
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`13620764, at *9 (“To the extent that [defendant] disagrees with the conclusions of [plaintiff’s
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`expert’s] apportionment methods, its recourse lies in cross-examination, not exclusion.”).
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`C.
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`Dr. Akemann’s adjustments to the Benchmark Licenses were specific and
`clearly disclosed
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`All of Dr. Akemann’s adjustments to the Benchmark Licenses royalty rate are clearly
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`supported by the evidence and thoroughly described in his report. At bottom, Fitbit’s arguments
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`against Dr. Akemann’s adjustment of the reasonable royalty rates are merely attorney argument.
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`As a general matter, the courts have recognized that the reasonable royalty rate calculation can be
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`orders of magnitude higher than comparable licenses, simply because the hypothetical negotiation
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`sets a license rate on the premise that a jury has found the defendant guilty of infringement and
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`there is no discount for uncertainty. Mondis Tech, Ltd. v. LG Electronics, Inc., 2:07-CV-565-TJW-
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`CE, 2011 WL 2417367, at *4 (E.D. Tex. June 14, 2011) (allowing tripling of standard royalty rates
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`to account for uncertainty); ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 872
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`(Fed.Cir.2010) (“[A] reasonable royalty may permissibly reflect the fact that an infringer had to
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`be ordered by a court to pay damages rather than agreeing to a reasonable royalty.”) (internal
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`quotation marks omitted); TWM Mfg. Co., Inc. v. Dura Corp., 789 F.2d 895, 900
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`(Fed.Cir.1986) (“That [the patentee] might have agreed to a lesser royalty is of little relevance, for
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`to look only at that question would be to pretend that infringement never happened. It would also
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`make an election to infringe a handy means for competitors to impose a compulsory license policy
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`upon every patent owner.”) (internal quotation marks and citations omitted).
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`First, the argument against Dr. Akemann’s upward adjustment because “the Accused
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`Products are more valuable, multi-function devices” (Dkt. 310 at 13), is solely based on Fitbit’s
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`disagreement with Dr. Akemann that the infringing features of “Cardio Fitness Score” and “Cardio
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`Fitness Level” have value to the user because of the multitude of activities