Monday, March 06, 2017

The CAFC in Prism v. Sprint gives a detailed exposition on admissibility of settlements under FRE 403

As to evidentiary rulings:

We see no legal error or other abuse of discretion
in the district court’s allowing of Mr. Minor’s testimony.
See Gen. Elec. Co. v. Joiner, 522 U.S. 136, 141–43
(1997) (evidentiary rulings reviewed for abuse of discretion);
Highmark Inc. v. Allcare Health Mgt. Sys., Inc., 134
S. Ct. 1744, 1748 n.2 (2014) (decision based on legal error
is abuse of discretion); Harris v. Chand, 506 F.3d 1135,
1139 (8th Cir. 2007) (evidentiary rulings reviewed for
abuse of discretion).

Of legal vs. factual issues:

Sprint argues that the district court neglected its duty
to resolve the parties’ dispute over the scope of “Internet
Protocol network” by allowing the jury to decide whether
Sprint’s backhaul networks are sufficiently controlled to
constitute an “Internet Protocol network.” See O2 Micro
Int’l Ltd. v. Beyond Innovation Tech. Co., 521 F.3d 1351,
1360 (Fed. Cir. 2008). We disagree. The court’s order
denying Sprint’s exclusion request did not fail to resolve
the claim-construction issue; it resolved the issue. The
order makes clear the court’s determination that Mr.
Minor correctly interpreted the scope of the claims, i.e.,
that “Internet Protocol network” could indeed encompass
networks that “in the aggregate” have “no controlling
organization.” J.A. 93.

Whether Sprint’s backhaul networks actually constitute
such an aggregate network, as Mr. Minor argued,
was a question of fact, which the court properly reserved
for the jury. Sprint does not appear to dispute that there
is sufficient evidence to support an affirmative answer to that question.
Indeed, there was evidence, including from
Sprint’s witnesses, that each of the AAVs used by Sprint
(substantial in number) controls its own facilities and
may contract with other AAVs to complete backhaul
transmission paths to reach places in which it lacks its
own facilities.

Footnote 4 discusses "sufficiency of the evidence":

Sprint argues that we may order judgment in its
favor, for lack of sufficient evidence of infringement, if we
reverse the admission of Mr. Minor’s testimony—even
though it says that it is not “raising a sufficiency of the
evidence challenge,” Sprint’s Reply & Resp. Br. 7 n.1, and
does not dispute Prism’s observation that its JMOL
motion raised only a “divided infringement” argument,
outside the scope of its appeal. Although Sprint relies for
its remedy contention on Eon Corp. IP Holdings LLC v.
Silver Spring Networks, Inc., 815 F.3d 1314, 1320 & n.3
(Fed. Cir. 2016), the appellant in that case properly
preserved a sufficiency-of-the-evidence argument in the
district court, id. at 1318. In any event, we need not rule
on Sprint’s remedy contention because we reject its premise,
holding that the admission of Mr. Minor’s testimony
was proper.

As to the admission of the AT&T settlement agreement:

As we have noted, we review the court’s admission of this evidence
for legal error or other abuse of discretion. We
conclude that no such abuse occurred.

The CAFC noted that the decision to exclude evidence is explicitly
committed to the discretion of the court. This would be different, for
example, from a court "deeming" some submission to be a motion, which is not
committed to the discretion of the court. Of the exclusion:

By declaring that the district
court “may” exclude what is by assumption relevant
evidence, the Rule commits the weighing to the district
court’s “broad discretion,” which the Supreme Court has
said is “generally not amenable to broad per se rules.”
Sprint/United Mgmt. Co. v. Mendelsohn, 552 U.S. 379,
384, 387 (2008); see also Old Chief v. United States, 519
U.S. 172, 183 n.7 (1997); United States v. Abel, 469 U.S.
45, 54 (1984); United States v. Wardlow, 830 F.3d 817,
822 (8th Cir. 2016); Young Dental Mfg. Co. v. Q3 Special
Prods., Inc., 112 F.3d 1137, 1145–46 (Fed. Cir. 1997).

Of the thought process for settling, the CAFC wrote

As to settlements generally, the Supreme Court has explained
the normal settlement calculus for litigants: “Most defendants
are unlikely to settle unless the cost of the
predicted judgment, discounted by its probability, plus the
transaction costs of further litigation, are greater than the
cost of the settlement package.” Evans v. Jeff D., 475 U.S.
717, 734 (1986); Staton v. Boeing Co., 327 F.3d 938, 964
(9th Cir. 2003) (quoting Evans, 475 U.S. at 734). That
formulation—enumerating “the cost of the predicted
judgment,” “its probability,” and “costs of further litigation”—
helps identify why and when a district court,
conducting the inquiry required by Rule 403, can find
earlier patent-suit settlements admissible in valuing a
patented technology.

The CAFC makes clear that a patent is a "right to exclude" and
is not a "right to make" (i.e., a monopoly) :

A patent gives nothing but the right to exclude,
which in our system generally means a
right to call on the courts. See, e.g., Crown Die & Tool Co.
v. Nye Tool & Mach. Works, 261 U.S. 24, 35 (1923);
Bloomer v. McQuewan, 55 U.S. (14 How.) 539, 549 (1852).
We have frequently recognized that a (non-exclusive)
license to practice a patent is in substance nothing but a
covenant not to sue: what such a license is, at its core, is
an elimination of the potential for litigation. See
TransCore, LP v. Elec. Transactions Consultants Corp.,
563 F.3d 1271, 1275–76 (Fed. Cir. 2009). Although the
potential for litigation therefore must loom over patent
licenses generally, including those signed without any
suit ever being filed, Sprint has not contested the longaccepted
proposition that a “party may use the royalty
rate from sufficiently comparable licenses.” Summit 6,
LLC v. Samsung Elecs. Co., 802 F.3d 1283, 1296 (Fed. Cir.
2015); see also Ericsson, 773 F.3d at 1227;

Getting back to the "evidence exclusion" issue under FRE 403,
the CAFC observed:

But, as a logical matter, the mere
filing of a complaint—shifting from potential to actual
litigation—does not automatically turn the prejudice side
of the Rule 403 balance into one that substantially outweighs
the probativeness side. The particulars of the case
that was settled and the settlement, as well as of the case
in which the settlement is offered as evidence, matter to
the Rule 403 balance.


The district court had an adequate basis for admitting
the AT&T Settlement Agreement. That Agreement
covered the patents at issue here, though not only the
patents at issue here. In that common situation, evidence
was needed that reasonably addressed what bearing the
amounts in that Agreement had on the value of the particular
patents at issue here. See, e.g., Wordtech Sys., 609
F.3d at 1320–21. Prism supplied such evidence, including
what the AT&T Settlement Agreement itself says about
attributing amounts to particular patents and, more
reliably, creditable expert evidence about how the other
Agreement-covered patents relate to AT&T’s business


The circumstances of the AT&T Settlement Agreement
affect the Rule 403 assessment in ways that support
the district court’s admission of the Agreement. The
Agreement was entered into, not just after all discovery
was complete, but after the entire trial was finished,
except for closing arguments and jury deliberations.
Thus, the record was fully developed and thoroughly
tested in the adversarial process, enhancing the reliability
of the basis on which Prism and AT&T were assessing the
likely outcome. The timing of the settlement also means
that a very large share of litigation costs had already been
sunk, reducing (though of course not eliminating) the role
of litigation-cost avoidance in the settlement decision.
Moreover, Sprint has not suggested that enhanced damages
were at issue by the time of the settlement; and the
proposed jury instructions and verdict forms suggest that
they were not. On the other hand, validity and infringement
were still open issues at the time of the settlement.
But Sprint cannot rely on that fact: possible non-liability
is a factor that tends to make settlements too low, not too

For those reasons, we see no abuse of discretion by the
district court in this case in rejecting Sprint’s Rule 403
argument that, while the many lower-amount Prism
settlements should be admitted into evidence, the AT&T
Settlement Agreement must be excluded.

Also of interest in the context of "what is not contained
in legal opinions"

Sprint argues that, in denying Sprint’s motion for a
new trial, the district court considered only whether the
weight of the evidence supported the jury’s verdict and
ignored Sprint’s allegations of legal error. We do not infer
failure to consider Sprint’s legal-error arguments from the
district court’s opinion, which we read as reflecting only a
choice about what to discuss, not a choice about what to
consider. See Hartman v. Nicholson, 483 F.3d 1311, 1315
(Fed. Cir. 2007) (“That the court did not specifically
mention the [argument] in its opinion forms no basis for
an assumption that it did not consider [it] . . . .’ The court
may have merely concluded, for various reasons, that
discussion of the issue was neither necessary nor appropriate.”
(alterations in original) (citations omitted)). In
any event, Sprint has not shown harmful error. See 28
U.S.C. § 2111. We have reviewed all the alleged errors
Sprint has presented on appeal, and we have been given
insufficient details about other allegations of error to
suggest harmfulness.

Of the citation to the Hartman case, one notes that, although
a CAFC case, Hartman is NOT a patent case but does contain further
interesting text on the writing of decisions, not included in
Prism v. Sprint.

Of the subject matter:

The appellant, Marcellus S. Hartman, served in the Army from 1969 to 1972, including a year in Vietnam.   In 1986 he wrote to the Department's regional office that because of his post-traumatic stress disorder (“PTSD”), his time for utilizing his veteran's educational benefits should be extended.

Of what is NOT required in opinions:

Hartman primarily contends that the Veterans Court failed to consider this argument because it did not explicitly address it.  “That the court did not specifically mention the [argument] in its opinion forms no basis for an assumption that it did not consider [it]․ That a court ‘do[es] not discuss certain propositions do[es] not make the decision inadequate or suggest the ․ court failed to understand them.’ ” Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 901 (Fed.Cir.1984) (quoting Schilling v. Schwitzer-Cummins Co., 142 F.2d 82, 84 (D.C.Cir.1944)).   The court may have merely concluded, for various reasons, that discussion of the issue was neither necessary nor appropriate.

 A “ ‘litigant's right to have all issues fully considered and ruled on by the appellate court does not equate to a right to a full written opinion on every issue raised.’ ” Bernklau v. Principi, 291 F.3d 795, 801 (Fed.Cir.2002) (quoting United States v. Garza, 165 F.3d 312, 314 (5th Cir.1999)).   Here, the Veterans Court stated that “Mr. Hartman has not demonstrated that the Board committed prejudicial error in its findings of fact, conclusions of law, compliance with procedural requirements, articulation of reasons or bases, or application of the equipoise standard that would warrant reversal or remand.”  Dingess, 19 Vet.App. at 501.  “While it may be desirable in some cases to afford each issue a complete written discussion, no statute or rule compels such an approach by the Court of Appeals for Veterans Claims (or indeed any other court).”  Bernklau, 291 F.3d at 801 (citation omitted).   Hartman's contention that the Veterans Court did not properly consider his argument fails.

One notes that the thinking in Prism v. Sprint and in Hartman v. Nicholson is in tension with the viewpoint of CAFC Judge Plager:

Judge Plager stated in In re Packard, 751 F.3d 1307, 1314 (CAFC 2014) :
“I write separately because I am of the view that a petitioner to this court seeking
reversal of a decision is entitled to an explanation of why the arguments on which
he relied for his appeal did not prevail."

The "Rule 36" practice of the CAFC

Additionally, as to Sprint's argument about the damage model of Prism:

Sprint’s argument that Prism’s damages model was
not sufficiently tied to the “footprint” of the invention
misapprehends the relevant legal principles.


Although a patentee “must carefully tie proof of damages to the
claimed invention’s footprint in the market place,” Uniloc,
632 F.3d at 1317 (quoting, 594 F.3d at 869),
that requirement for valuing the patented technology can
be met if the patentee adequately shows that the defendant’s
infringement allowed it to avoid taking a different,
more costly course of action. A price for a hypothetical
license may appropriately be based on consideration of
the “costs and availability of non-infringing alternatives”
and the potential infringer’s “cost savings.” Aqua Shield,
774 F.3d at 771–72; see also Hanson, 718 F.2d at 1080–81
(“Reliance upon estimated cost savings from use of the
infringing product is a well-settled method of determining
a reasonable royalty.”); Powell v. Home Depot, U.S.A.,
Inc., 663 F.3d 1221, 1240–41 (Fed. Cir. 2011); Slimfold
Mfg. Co. v. Kinkead Indus., Inc., 932 F.2d 1453, 1458–59
(Fed. Cir. 1991).

Here, Prism’s damages evidence complied with those
principles. Prism’s experts Mr. Minor and Mr. Malackowski
testified that, in the absence of a license, Sprint would
have attempted to design around the patented invention
by building its own private backhaul network.

link to case:


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