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Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC

United States District Court for the District of Delaware

October 21, 2019, Decided; October 21, 2019, Filed

C.A. No. 17-189-LPS-CJB

Opinion

MEMORANDUM ORDER

Pending before the Court are the parties' Daubert motions. (D.I. 166, 168, 170) Plaintiff Roche Diagnostic Corp. ("Roche" or "Plaintiff") [*2]  moves to exclude certain opinions of Drs. Quentin Mimms and James Wilbur. (D.I. 170) Defendant Meso Scale Diagnostics, LLC ("Meso" or "Defendant") moves to exclude certain opinions from Drs. Richard Crooks and Rene Befurt. (D.I. 166, 168)

Having considered the parties' briefing (D.I. 167, 169, 171, 186, 189, 192, 202-04) and related materials, and having heard oral argument on July 23 ("Tr."), IT IS HEREBY ORDERED that Roche's motion (D.I. 170) is GRANTED IN PART and DENIED IN PART, Meso's motion to exclude certain opinions of Dr. Crooks (D.I. 166) is GRANTED, and Meso's motion to exclude certain opinions of Dr. Befurt (D.I. 168) is DENIED.1

1. Roche's motion (D.I. 170) is granted to the extent it is directed to Dr. Mimms' opinions on apportionment.

The Court agrees with Roche that Meso cannot rely on Roche's valuation of BioVeris to prove damages because the disputes in this litigation involve just 10 of the more than 100 patents involved in Roche's acquisition of BioVeris.2 (D.I. 171 at 32-36) Meso contends the Roche valuation is an appropriate basis from which to calculate damages because the 10 asserted patents are core (or essential) to the ECL technology to which [*3]  Roche sought to acquire full rights. (D.I. 192 at 27-28) In essence, Meso argues apportionment is not required because ownership of rights in any of the 10 essential patents would have permitted BioVeris (or any party with exclusionary rights in the essential patents) to engage in a "hold-up" of Roche. (D.I. 192 at 28-29)

Meso fails to cite any case that supports its view of the BioVeris valuation or recognizes an exception in these circumstances to the requirement that patent damages must be apportioned and awarded on only the patented features.3 Even accepting that a reasonable factfinder could find that Roche may have been willing to pay a premium to acquire the patents subject to Meso's exclusive license, that premium can be accounted for using the appropriate, required apportionment/reasonable royalty analysis.4

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2019 U.S. Dist. LEXIS 181500 *; 2019 WL 5310220

ROCHE DIAGNOSTICS CORP., Plaintiff, v. MESO SCALE DIAGNOSTICS, LLC., Defendants.MESO SCALE DIAGNOSTICS, LLC, Counterclaim Plaintiff v. ROCHE DIAGNOSTICS CORP. and BIOVERIS CORPORATION, Counterclaim Defendants

Prior History: Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC, 2018 U.S. Dist. LEXIS 173187 (D. Del., Oct. 9, 2018)

CORE TERMS

patents, negotiation, hypothetical, infringement, reliable, methodology, valuation