Home » Patent » Damages » Motion to Strike Expert Opinions Granted-in-Part / Denied-in-Part

Motion to Strike Expert Opinions Granted-in-Part / Denied-in-Part

McDavid v. Nike USA, 8-CV-6854, Slip Op. (N.D. Ill. Apr. 23, 2013)(Holderman)

Nike challenged supplemental expert reports submitted by McDavid.  In particular, Nike alleged that McDavid’s expert attempted to add a new theory of infringement.  Nike asserted that McDavid had a duty to disclose this theory of infringement under Rule 26(e)(1), and the Court agreed.  However, McDavid countered that it had disclosed the new theory of infringement with respect to a different, but related, patent.  The Court found that this was not sufficient, and, as the new theory of infringement would have been prejudicial to Nike, who would not have sufficient time to prepare its defense, struck the new expert report.

Nike also challenged McDavid’s supplemental report on damages, which sought to switch from an entire market value theory to a theory based on only part of the Nike’s sales of the infringing product.  McDavid argued that the law surrounding when a patentee could base a reasonable royalty on the entire market value of a product had changed after the Federal Circuit’s Uniloc decision.  Somewhat surprisingly, the Court disagreed, and instead, found that Uniloc was perfectly consistent with Lucent and other cases discussing access to the entire market value.

However, the Court also found that new sales data, only available since the expert’s last opinion was offered, could have necessitated the change, and accordingly allowed McDavid’s updated report on damages into evidence.

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