Jury May Pick Royalty Rate from Range Offered in Expert Testimony

By Gene Quinn
June 2, 2021

https://depositphotos.com/61513531/stock-photo-court-gavel.htmlEarlier this year, the Federal Circuit issued a precedential decision in Bayer Healthcare LLC v. Baxalta Inc. in which the court affirmed rulings from the District of Delaware finding that Baxalta’s hemophilia treatment Adynovate infringes patent claims owned by Bayer, that the asserted claims were enabled, and that Baxalta did not commit willful infringement as a matter of law. Relating to the question of damages, the court explained that an expert need not select a specific royalty rate for the jury to adopt, and that a jury may adopt any royalty rate within the range offered during testimony by the expert provided the methodology used by the expert is sound.

Prior to trial, Baxalta moved to exclude the testimony of Bayer’s damages expert, Dr. Addanki, regarding his proposed reasonable-royalty rate. In his expert report, Dr. Addanki opined that Bayer was entitled to a royalty rate of 23.75%—the midpoint of the bargaining range of 5.1% to 42.4%—based on the Nash Bargaining Solution. In the Daubert ruling, the district court concluded that the expert failed to tie his 50/50 split to the facts of the case, and thus excluded his “opinion that a reasonable royalty rate is ‘the mid-point of the bargaining range’, including any subsequent opinions that rely on that mid-point rate.” However, the district court denied Baxalta’s request to exclude Dr. Addanki’s evidence and prohibit him from testifying as to his proposed bargaining range of 5.1% to 42.4%.

After the conclusion of the trial, the jury found that Baxalta infringed asserted claims 1–3 and 8 of Bayer’s U.S. Patent No. 9,364,520, and that none of those claims were invalid for lack of enablement. The jury also found that Bayer was entitled to $155,190,264 in reasonable-royalty damages for the time period from June 14, 2016 through November 30, 2018 based on a 17.78% royalty rate applied to a $872,836,128 royalty base.

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Following the verdict, Baxalta moved for JMOL or a new trial on the issues of infringement, enablement, and damages, all of which were denied by the district court.

On appeal to the Federal Circuit, Baxalta argued that the district court erroneously permitted Bayer to rely on a flawed and speculative methodology. The alleged improper methodology was to ask the jury to pick a rate between the range of feasible rates presented by Dr. Addanki as the reasonable royalty rate.

The Federal Circuit, in an opinion authored by Judge Stoll, found that the district court properly exercised its discretion in allowing Bayer to ask the jury to select a rate between the range presented.

While an expert must use reliable methodology for determining the range of possible hypothetical negotiation royalty rates, we are aware of no precedent that requires an expert to provide a single proposed royalty rate. As an initial matter, a jury is ‘entitled to choose a damages award within the amounts advocated by the op- posing parties” and is “not bound to accept a rate proffered by one party’s expert but rather may choose an intermediate royalty rate.’ Powell v. Home Depot U.S.A., Inc., 663 F.3d 1221, 1241 (Fed. Cir. 2011) (quoting Spectralytics, Inc. v. Cordis Corp., 649 F.3d 1336, 1347 (Fed. Cir. 2011)). In addition, we have previously held that a jury’s damages award that fell within the range suggested by the patentee’s damages expert was supported by substantial evidence. See Rembrandt Wireless Techs., LP v. Samsung Elecs. Co., 853 F.3d 1370, 1382 (Fed. Cir. 2017).

The Federal Circuit went on to explain that the testimony of Dr. Addanki was further appropriate because he considered and discussed the appropriate Georgia-Pacific factors at length in determining the range of reasonable royalties, and because in its closing statement Bayer explained to the jury that its damages award should fall within that negotiating range set forth in Dr. Addanki’s testimony.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

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  1. anonymous June 2, 2021 8:41 pm

    It is further notable that plaintiff’s damages expert said the royalty rate should be in the range between 5.1% and 42.4%, but that the court excluded the opinion that the midpoint of that range at 23.75% was best. Defendant’s expert said 1%. The jury said 17.78%.

    Under this precedent, a jury verdict of 42.4% in this case would need to be sustained. I suspect more damages experts will be using a range rather than a specific rate, if the facts support a range. This case happened to have a huge range and large royalty rates, and the court was fine with it since the expert was subject to cross examination and defendant had its own chance to proffer its own expert with a low 1% damages theory.

    Once again, the jury found that infringer’s damages expert was off by a factor of 17.

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