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IP areas of expertise/education programs and expert network

July 2015

Intellectual property (IP) owners and licensees face increasingly complex IP challenges. To meet these challenges, Bates White continues to expand its scope of work in key areas, including:

We’ve highlighted significant engagements in which our team has been involved and have provided brief profiles of our key experts. We hope that you find the information helpful as you address your current projects or think about presentations for your firm.

For more information or to schedule a presentation for your firm, please contact Jeff Brown (858.523.2163).

Areas of expertise and case work

Analysis of SEPs and FRAND royalties

Certain Electronic Devices, Including Wireless Communication Devices, Tablet Computers, Media Players and Televisions, and Components Thereof
On behalf of Samsung, in an International Trade Commission (ITC) investigation involving SEPs, Joe Farrell, supported by a team led by Randy Heeb, analyzed how the licensing of SEPs may differ from the licensing of non-essential patents. As part of his analysis, Dr. Farrell developed and applied a conceptual framework for evaluating whether a given SEP bargaining environment is likely to raise concerns about patent holdup or royalty stacking. Dr. Farrell also analyzed the forms of consumer harm that arise when concerns of holdup and royalty stacking are found to be valid, and proposed appropriate remedies and procedures for addressing those concerns.

Antitrust counterclaims

E. I. du Pont de Nemours and Co. v. Kolon Industries
On behalf of DuPont, Scott Thompson provided expert testimony that identified deficiencies in Kolon’s relevant market and market power allegations. Dr. Thompson testified that DuPont faces substantial competition and is not a monopolist in the alleged market for para-aramid fiber and that the supply agreements at issue did not harm competition. DuPont was granted summary judgment in its favor, and Kolon Industries’ antitrust claims were dismissed with prejudice.

XY, LLC, Plaintiff v. Trans Ova Genetics, LLC, Defendant v. Inguran, LLC, Counterclaim Defendant
David DeRamus submitted expert reports on liability and damages in support of Trans Ova’s antitrust counterclaims in the market for technology used for cattle breeding. Dr. DeRamus’ liability analysis focused on restraints in licensing agreements that allowed XY to leverage its market power in the upstream technology market to prevent Trans Ova from expanding output in the downstream product market. His damages analysis considered several but-for scenarios and computed Trans Ova’s lost profits arising from XY’s conduct.

Static Control Components v. Lexmark International
Eric Gaier filed expert reports and testified in both the IP and counterclaim cases on affirmative defenses. Dr. Gaier’s testimony included opinions regarding market definition, market power, and competitive impact for a printer systems manufacturer defending allegations of monopolization.

Copyright royalties

In re Determination of Rates and Terms for Preexisting Subscription Services and Satellite Digital Audio Radio Services
Bates White affiliate Greg Crawford submitted an expert report and testified before the Copyright Royalty Board (CRB) regarding a reasonable royalty rate for the sound recording licenses that Music Choice obtains from record labels and artists. Dr. Crawford applied a bargaining model to explain why interactive webcasters that cannibalize record sales, such as Spotify, pay higher royalty rates, while preexisting services that promote record sales, such as Music Choice, pay lower royalty rates.

In re Petition of Pandora Media, Inc.
Leslie Marx submitted expert reports and testified on behalf of Pandora in its litigation with the American Society of Composers, Authors, and Publishers (ASCAP). A team led by Keith Waehrer supported the analysis and assisted with trial preparation. The court ultimately adopted key aspects of Dr. Marx’s analysis of ASCAP’s proposed benchmarks and set a rate within the range of rates proposed by Dr. Marx. For more information, see the press release.

Broadcast Music, Inc. v. Pandora Media, Inc.
Keith Waehrer provided expert testimony on behalf of Pandora in its litigation with Broadcast Music, Inc. (BMI) regarding the royalty rate for Pandora’s use of music licensed by BMI. Dr. Waehrer opined on what range of rates would be reasonable for Pandora’s blanket license to perform works in the BMI repertory; assessed an appropriate advertising sales cost deduction for a Pandora–BMI license; and proposed a method to adjust the royalties that Pandora would pay to BMI when compositions are either directly licensed or withdrawn from BMI.

Webcasting IV rate-setting proceeding
Keith Waehrer submitted testimony to the CRB on behalf of National Public Radio, Inc. and the Corporation for Public Broadcasting as part of the Webcasters IV proceeding to determine webcaster royalties for the digital performance rights in sound recordings and ephemeral recordings.

Injunctions and exclusion orders

Certain Wireless Devices with 3G and/or 4G Capabilities and Components Thereof
On behalf of Samsung, in an ITC investigation involving SEPs, Joseph Farrell, supported by a team led by Jeff Brown, analyzed the ITC Section 337 public interest implications of issuing exclusion orders for FRAND-encumbered SEPs. Dr. Farrell testified that, in certain circumstances, the availability of exclusion orders could result in harm to consumers and competitive conditions. As part of his testimony, Dr. Farrell evaluated theoretical and empirical evidence of patent holdup and royalty stacking in the wireless telecommunications industry.

Allure Energy, Inc. v. Nest Labs, Inc.
David DeRamus submitted a declaration on behalf of Nest Labs regarding the propriety of injunctive relief for allegations of patent infringement. Dr. DeRamus performed an economic analysis of the four eBay factors to assess whether a preliminary injunction against Nest Labs should be granted. Plaintiff’s request for a preliminary injunction was denied.

Teva v. Amgen
Bates White affiliate Tom Philipson, supported by a team led by Randy Heeb, submitted an expert report and testified on behalf of Amgen regarding patent infringement in the market for biosimilar pharmaceuticals. Dr. Philipson’s analysis of the eBay factors supported an injunction to prevent Teva from launching its infringing drug, Neutroval. A court-approved settlement enjoined Teva from introducing Neutroval into the United States until one month before the relevant patents were due to expire.

Patent damages

Ameranth Inc. v. Genesis Gaming Solutions Inc.
Jeff Brown submitted two expert reports on behalf of Ameranth regarding damages arising from patent infringement in the market for poker room management software. Dr. Brown also submitted an expert report in response to defendant’s counterclaims of trade secret misappropriation. The parties reached a settlement approximately one week before trial was scheduled to begin. 

Ameranth Inc. v. PAR Technology Corp.
Jeff Brown submitted affirmative and rebuttal reports regarding damages arising from patent infringement in the market for wireless data synchronization technology. Dr. Brown’s testimony involved analysis of a reasonable royalty rate applied to sales of accused software products and addressed issues related to the entire market value rule and comparable licenses. The case settled before trial.

XY, LLC v. Trans Ova Genetics, LLC
David DeRamus submitted a rebuttal report in response to XY’s allegations of patent infringement against Trans Ova. Dr. DeRamus critiqued the royalty rate computed by XY’s expert as inconsistent with actual rates negotiated between XY and Trans Ova and with rates estimated by third-party auditors. He also testified that XY’s expert inflated damages by using an improper royalty base.

Sky Technologies v. SAP
Randy Heeb led a team supporting an academic expert, who submitted an expert report and testified on behalf of SAP in a patent infringement dispute involving enterprise software. Dr. Pakes’ testimony included analysis of the contribution to customer demand resulting from the accused product features and estimates of royalty rates from past financial transactions and licensing agreements.

St. Clair Intellectual Property Consultants Inc. v. Acer Inc. et al.
Randy Heeb was retained to provide an expert report and testimony on damages for Toshiba in an IP dispute involving patents on computer components. The matter settled prior to testimony.

Patent validity and infringement

In Purdue Pharma L.P. v. Depomed, Inc.
Eric Gaier is serving as a testifying expert on commercial success as an objective indicator of patent non-obviousness on behalf of Petitioner Purdue’s Inter Partes Review (IPR) challenge to the validity of certain Depomed patents. Dr. Gaier has provided a declaration and deposition testimony.

Janssen Products, L.P. v. Lupin Ltd.
Eric Gaier served as a testifying expert regarding commercial success as a secondary consideration of patent nonobviousness on behalf of plaintiff Janssen alleging patent infringement in connection with certain generic drug manufacturers’ Paragraph IV Abbreviated New Drug Applications (ANDAs) concerning generic versions of Janssen’s PREZISTA HIV treatment prescription drug. Dr. Gaier provided expert report and deposition testimony.

In re Covered Business Method Post-Grant Review of U.S. Patent Nos. 8,036,916 and 8,489,420
Richard Manning was engaged as a testifying expert and filed a declaration in the US Patent Trial and Appeals Board relating to the characteristics of patents covering business methods for managing the provision of healthcare benefits.

First American CoreLogic, Inc. v. Fiserv
Karl Snow submitted expert reports and testified in court regarding validity and infringement of patents for estimating residential property values. Dr. Snow’s opinions assessed the validity of the patent in light of the prior art, which included both academic research and industry-based estimation systems and analysis. He also investigated allegations that a specific automated valuation model infringed the patents in suit.

Trade secret damages

Activist Special Advisory Services LLC v. Phoenix Real Estate Solutions Ltd.
Randy Heeb was retained on behalf of Activist Special Advisory Services to assess damages, if any, arising from the alleged misappropriation of Activist’s trade secrets, which include a technology platform for performing complex analysis of financial securities, such as collateralized debt obligations. Dr. Heeb submitted an expert report and testified before an arbitration panel regarding the appropriate valuation methodology to be applied.

Marosvari v. Scentsy, Inc.
Randy Heeb was retained by Scentsy, Inc., a direct sales company offering wickless candles and other scented products, to determine the appropriate framework for calculating damages for the alleged misappropriation of IP contained in the Scentsy Buddies product line. Dr. Heeb submitted an expert report and testified before an arbitration panel. 

InfoSpan, Inc. v. Emirates NBD Bank
Randy Heeb led a team supporting an academic expert, who submitted expert reports and provided deposition testimony on damages arising from the alleged misappropriation of mobile payment technology on behalf of InfoSpan. Dr. Pakes’ testimony included an analysis of the market for cross-border remittances, an analysis of the unique value proposition offered by the trade secrets, and a valuation of the trade secrets based on several methodologies.

Expert network

Bates White’s expert network includes the in-house experts and academic affiliates listed below. All are experienced testifiers with deep expertise in a range of specialties in the IP industry.

Jeffrey F. Brown is a Partner at Bates White and has over 20 years of experience as an economist in projects related to litigation and business strategy. His expertise includes empirical analysis of issues involving IP, strategic pricing, and damages estimation.

Gregory Crawford is a Bates White academic affiliate and Professor of Applied Microeconomics at the University of Zürich and specializes in empirical industrial organization. He has extensive communications and media experience and served as Chief Economist of the Federal Communications Commission (FCC) from 2007 to 2008.

David W. DeRamus is a founding member of Bates White. He specializes in economic and financial analysis, quantitative modeling, antitrust analysis, pricing analysis, damages analysis, and valuation. Dr. DeRamus has an extensive background in industrial organization, international economics, antitrust economics, microeconomics, finance, financial modeling, and statistical analysis.

Joseph Farrell is a Partner at Bates White and Professor of Economics at the University of California, Berkeley. From 2009 to 2012, Dr. Farrell served as Director of the Bureau of Economics at the Federal Trade Commission (FTC). Prior to the FTC, he served as Deputy Assistant Attorney General for Economic Analysis for the Antitrust Division of the US Department of Justice (DOJ) and as Chief Economist for the FCC.

Eric M. Gaier is a founding member of Bates White and has significant experience in the application of economic and statistical analysis to antitrust, False Claims Act (FCA), Employee Retirement Income Security Act (ERISA), California Unfair Competition Law (UCL), and commercial success. Dr. Gaier specializes in economic analysis of issues associated with class certification, liability, causation, and damages.

Randal D. Heeb is a Partner at Bates White and has 30 years of experience providing economic analysis in both the private and public sectors. His expertise includes analysis of liability, damages, and other remedies in IP and antitrust disputes.

Leslie M. Marx is a Partner at Bates White and the Robert A. Bandeen Professor of Economics at the Fuqua School of Business at Duke University. Dr. Marx served as the Chief Economist of the FCC from August 2005 through August 2006.

Tomas J. Philipson is a Bates White academic affiliate and the Daniel Levin Professor of Public Policy Studies in the Irving B. Harris Graduate School of Public Policy Studies at the University of Chicago. Dr. Philipson served as senior economic advisor to the head of the Food and Drug Administration (FDA) and senior economic advisor to the head of the Centers for Medicare & Medicaid Services (CMS).

Keith Waehrer is a Partner at Bates White and specializes in mergers, monopolization claims, and calculations of reasonable royalties. Previously, he was a Research Economist with the Antitrust Division of the DOJ.

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