Maquet Cardiovascular LLC v. Abiomed Inc. et al. (D. Mass 17-cv-12311).

Patent lawsuits often become a “battle of the experts,” particularly when complex technologies or financial situations are involved.  Accordingly, it should be no surprise that litigants go to great efforts to exclude or limit the testimony that the other party’s experts are permitted to put before a jury.  This case being no exception, with three Daubert motions filed between Maquet and Abiomed.

Judge Saylor first addressed Maquet’s proposed expert damages testimony on apportionment.  Apportionment can apply when an accused product includes multiple components, only some of which are accused of infringement.  Royalties on the overall product can be reduced where a full royalty would improperly compensate a patentee for the non-infringing components of the product.  Thus, typically the royalty, when only a part of the accused product is accused of infringement, is based on the smallest sellable practice-patenting unit.  An exception occurs when the patentee can show that the patented feature creates the demand for the product or create the value of the combination, which can permit royalties based on the sale of the full product despite the presence of non-infringing components.  Of course, expert testimony on these issues must be grounded in facts specific to the case.

Abiomed challenged Maquet’s damages expert on his proposed apportionment theories.  Maquet’s expert proposed four alternative analyses, including one that asserted that the claimed features were responsible for the majority of the value of the accused products and two that identified claimed and unclaimed portions and identified the value of the claimed portions to range from 47& to 69% of the overall value of the accused products.  Judge Saylor found that this opinion provided sufficient evidence that the percutaneous insertion of the patented design played a significant role in the success of the products covered by the design.  He noted, however, that portions of Maquet’s expert incorporated conventional components into the proposed royalty range because the expert based the range on a “percentage of novel components versus overall components” approach, rather than evaluate the actual contribution to the overall value of the novel components.  He thus excluded the opinions that utilized the “feature-counting” approach.

Judge Saylor next addressed Maquet’s fall-back position, which proposed that the entire market value rule should apply because the patented components created the “basis for customer demand.”  This rule requires the patentee to show not just that a customer would choose the patented product over one that does not include all of the patented limitations, but that the patented features are what drove the customer to by the product in the first place.  Judge Saylor determined that the expert had sufficiently opined that non-surgical patients (and, presumably, their physicians) would only choose an intravascular blood pump where it could be inserted over a guidewire, as there were no other non-surgical insertion techniques at the time the patent was filed.  Further, the parties agreed that a non-accused Abiomed product made up only 1.1% of sales of the accused products, suggesting that the novel features allegedly found in the accused products drove Abiomed’s sales.  Accordingly, this opinion was not stricken.

Abiomed also sought to strike testimony related to convoyed sales.  Abiomed contended that a non-patented product could only be considered a “convoyed” product if it would be useless without the patented product.  Abiomed asserted that the alleged convoyed products could be used with nonaccused Abiomed products, rendering them not functional units with the accused products.  Judge Saylor disagreed, noting that while Federal Circuit caselaw considered the use of an alleged convoyed product with a non-infringing product suggests a non-functional relationship, it does not mandate such a finding.  Accordingly, he did not strike the convoyed sales opinion.

Maquet, in the meanwhile, moved to exclude damages expert testimony proposed by Abiomed that also sought to address the apportionment issue, this one based on a survey of interventional cardiologists conducted in the regular course of Abiomed’s business.  Judge Saylor noted that, while a rebuttal expert need not offer an independent opinion on the matter on which he or she is offering rebuttal, where (as here) an independent opinion is being asserted in rebuttal, it is subject to all of the Daubert standards as it would be if it were in an initial report.  Maquet pointed to the exclusion of testimony from a different case in which the same expert had opined on the importance of various product features based on survey evidence, but Judge Saylor found that in the present case the expert had identified product attributes that were closely related to the claim terms, specifically the central advance of the claims being the guide mechanism (which was confirmed by testimony of other experts from both parties).  Judge Saylor thus declined to exclude this testimony.