United States District Court, E.D. Michigan, Southern Division
VISTEON GLOBAL TECHNOLOGIES, INC. AND VISTEON TECHNOLOGIES, LLC, Plaintiffs,
GARMIN INTERNATIONAL, INC., Defendant.
R. Grand United States Magistrate Judge.
OPINION AND ORDER (1) GRANTING IN PART GARMIN'S
MOTION IN LIMINE NO. 6 TO EXCLUDE EVIDENCE REGARDING
GARMIN'S REVENUES AND PROFITS (ECF NO. 265); AND (2)
DENYING GARMIN'S MOTION FOR LEAVE TO FILE SUPPLEMENTAL
EXPERT REPORT OF JOHN LAVRAKAS (ECF NO. 341)
D. BORMAN UNITED STATES DISTRICT JUDGE.
Visteon Global Technologies, Inc. and Visteon Technologies,
LLC's (“Visteon”) and Defendant Garmin
International, Inc.'s (“Garmin”), have filed
numerous motions in limine in this patent
infringement action. Presently before the Court are: (1)
Garmin's Motion In Limine No. 6 to Exclude
Evidence Regarding Garmin's Overall Revenue and Profits
(ECF No. 265); and (2) Garmin's Motion for Leave to Serve
the Supplemental Expert Report of John Lavrakas (ECF No.
341). The Court has determined that oral argument will not
assist in resolution of the matters raised in these motions
and accordingly will decide these matters on the parties'
written submissions. See E.D. Mich. L.R. 7.1(f)(2).
an action for patent infringement. In the claims that remain
for trial, Plaintiffs Visteon Global Technologies, Inc. and
Visteon Technologies, LLC (“Visteon”) contend
that Defendant Garmin International, Inc.
(“Garmin”) infringes, either directly or
indirectly, U.S. Patent No. 5, 544, 060 (“the
‘060 patent”), U.S. Patent No. 5, 654, 892
(“the ‘892 patent”) and U.S. Patent No. 5,
832, 408 (“the ‘408 patent”). In general,
the '060 patent is directed to a method of navigating a
human driven vehicle whereby a user can generate an optimal
path and then switch to an alternate navigation path before
beginning on the optimal path. Visteon contends that Garmin
directly infringes Claims 3, 4, and 6 and indirectly
infringes Claim 3 of the ‘060 patent. In general, the
‘892 patent is directed to a method for assisting the
navigation of a vehicle whereby a complex arrow icon is
generated and displayed to the driver at a predetermined time
or distance before the driver reaches a particular maneuver.
Visteon contends that Garmin directly and indirectly
infringes Claim 8 of the ‘892 patent. In general, the
‘408 patent is directed to a navigation system which
allows the user to search for a destination either from a
list of categories or from an alphanumeric search. Visteon
contends that Garmin directly and indirectly infringes Claims
4 and 5 of the ‘408 patent.
contends that a variety of Garmin navigation products
(“the accused products”) infringe one or more the
asserted claims literally and under the doctrine of
equivalents. Visteon contends that Garmin directly infringes,
actively induces infringement and/or contributorily infringes
one or more of the asserted claims of the asserted patents,
and that Garmin's infringement is and has been willful.
Visteon seeks damages in the form of a reasonable royalty for
Garmin's alleged infringement. Visteon also seeks
prejudgment interest, enhanced damages, attorneys' fees,
and costs, including without limitation any fees and costs
associated with participating in multiple ex parte
proceedings at the United States Patent and Trademark Office
(“USPTO”) as initiated by Garmin in this action.
Garmin denies that it directly, indirectly or contributorily
infringed or induced infringement of any of the patents in
suit and affirmatively asserts a host of invalidity defenses.
Garmin seeks judgment in its favor and requests that it be
awarded its costs and reasonable attorneys' fees incurred
in defending against Visteon's Complaint.
STANDARD OF REVIEW
Federal Rules of Evidence, the Federal Rules of Criminal and
Civil Procedure and interpretive rulings of the Supreme Court
and this court all encourage, and in some cases require,
parties and the court to utilize extensive pretrial
procedures - including motions in limine - in order
to narrow the issues remaining for trial and to minimize
disruptions at trial.” United States v.
Brawner, 173 F.3d 966, 970 (6th Cir. 1999). District
courts have broad discretion over matters involving the
admissibility of evidence at trial. United States v.
Seago, 930 F.2d 482, 494 (6th Cir. 1991).
Garmin's Motion in Limine No. 6 to Exclude
Evidence of Garmin's Overall Revenue and Profits (ECF No.
Response to this motion indicates that Visteon intends to
introduce evidence of Garmin's profit margins
only, not evidence of Garmin's overall profits. (ECF No.
286, Visteon's Resp. 3-5.) Garmin does not object to the
introduction of evidence regarding its profit margins. (ECF
No. 324, Garmin's Reply 5-6.) Accordingly, the Court
GRANTS the motion to exclude evidence of Garmin's overall
profits but will permit evidence of Garmin's profit
margins, assuming that such evidence meets all other rules
for admissibility at the time of trial.
regard to Garmin's motion to exclude evidence of its
overall revenues, it is not entirely clear whether
Garmin's motion is an indirect challenge to Visteon's
damages methodology that relies on the MITAC license (which
Garmin did not challenge in a Daubert motion) or
whether Garmin's motion is strictly challenging the
evidentiary basis for admission into evidence of the actual
overall revenue figures themselves. In seeking exclusion,
Garmin relies on the Federal Circuit's recognition of the
“danger of admitting consideration of the entire market
value of the accused [product] where the patented component
does not create the basis for customer demand.”
Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292,
1320 (Fed. Cir. 2011) (alteration added). “The
disclosure that a company has made $19 billion dollars in
revenue from an infringing product cannot help but skew the
damages horizon for the jury, regardless of the contribution
of the patented component to this revenue.”
Id. There is no argument here by Visteon that the
entire market value rule applies or that the accused patented
features drive demand for the Garmin accused devices. Indeed
Visteon's expert, Peter Smith, states in his Report:
“Because it is my opinion that the entire market value
rule does not apply in this case, I do not believe that sales
revenue is an appropriate royalty base for the purposes of
the damages calculation.” ECF No. 268, Ex. M, Expert
Report of Peter Smith 29. Indeed, this Court has already
acknowledged that the accused patented features that remain
in suit here do not drive consumer demand for Garmin's
PNDs and has ruled that Visteon is required to “give
evidence tending to separate or apportion the defendant's
profits and the patentee's damages between the patented
feature and the unpatented features” of the accused
devices. Garretson v. Clark, 111 U.S. 120, 121
(1884) (internal quotation marks omitted).
also well established, however, that “[a]ctual licenses
to the patented technology are highly probative as to what
constitutes a reasonable royalty for those patent rights
because such actual licenses most clearly reflect the
economic value of the patented technology in the
marketplace.” Laser Dynamics, Inc. v. Quanta
Computer, Inc., 694 F.3d 51, 79 (Fed. Cir. 2012). The
MITAC license agreement is such a license here, as it
includes a license to the very patents that remain in suit
(among others). (ECF No. 268, Ex. B, Newell Report
¶¶ 123-126.) Garmin's expert challenges the
comparability of the MITAC license, but this Court has also
ruled that comparability is an issue for cross-examination,
not a basis for exclusion. Indeed Garmin's expert, Mr.
Newell, in his rebuttal report, describes the MITAC license
as a “relevant benchmark license agreement for the
patents in suit” and found the MITAC license
“informative, ” although he concludes that it is
“less informative” than another comparable
license. Id. Moreover, Garmin did not move to
exclude Mr. Smith's damages model based on the MITAC
license and cannot seriously question that it is
“relevant” in a broad sense to the reasonable
royalty issue. The problem here is that the MITAC model
employed by Mr. Smith relies on Garmin's overall
revenues, creating a tension between the high probative value
of a prior license to the very patents in suit and the
evidentiary principle that disclosure of an alleged
infringer's overall revenues to the jury, in a case where
the accused patented features admittedly do not drive
consumer demand for the end product, is highly prejudicial.
urges the Court to consider Mondis Tech., Ltd. v. LG
Elec. Inc., No. 07-cv-565, 2011 WL 2417367 (E.D. Tex.
June 14, 2011), in which the court permitted an expert
opinion that employed total revenues even though there was no
showing that the accused features provided the basis for
customer demand of the end product. Mondis is
certainly instructive in its recognition of the inherent
challenge faced by a patentee who concedes that the accused
features do not drive demand for the alleged infringer's
product yet attempts to rely on arguably relevant licenses to
the very same technology that were negotiated based upon the
entire value of the end product. Acknowledging the Federal