MLC Intellectual Property, LLC v. Micron Technology, Inc.

Background

MLC alleged that Micron infringed U.S. Patent No. 5,764,571. The patent expired on June 9, 2015, and MLC was not seeking an injunction, so any trial would concern liability and damages. The court had already conducted extensive claim construction, discovery, and pretrial proceedings.

Before this order, the court entered three relevant damages orders. It granted in part Micron’s damages motion in limine, ruling that MLC’s damages expert, Michael Milani, could not use certain lump-sum licenses to support a particular royalty rate because the licenses did not contain that rate or explain how the lump sums were calculated, and because MLC had not disclosed all supporting evidence during discovery. The court later excluded Milani’s damages testimony under the rule governing the reliability of expert evidence, finding problems with his royalty-rate analysis and his failure to limit the royalty base to revenue attributable to the patented technology. The court also granted in part Micron’s motion to strike portions of Milani’s report for failure to disclose damages evidence. The certified orders were Docket Nos. 639, 668, and 672.

Micron’s Summary-Judgment Motion

Micron moved for summary judgment on the ground that MLC could not prove damages. Micron argued that, after the court excluded MLC’s damages experts and other evidence, MLC had no admissible evidence supporting a reasonable royalty. Micron contended that because MLC sought only damages, its liability claims were moot.

The court denied the motion. It relied on Federal Circuit authority stating that summary judgment for zero damages is proper only when the record is undisputed that zero is the only reasonable royalty. Although MLC’s opposition did not address Micron’s arguments or identify remaining evidence supporting damages, the court concluded that it could not find that zero was the only reasonable royalty, assuming infringement.

Interlocutory Appeal

The court certified the three damages orders for interlocutory appeal under 28 U.S.C. § 1292(b). This procedure permits an appellate court to review an order before the entire case is finished when the order presents a controlling legal question, there is substantial disagreement about that question, and immediate review could materially advance the litigation.

The court found all three requirements satisfied. It identified legal questions concerning the expert’s comparative-license analysis, apportionment of the royalty base, the support for the proposed royalty rate, and MLC’s obligation to disclose the factual basis for its reasonable-royalty claim. The court also found that appellate review could avoid an expensive liability-only trial. If the appellate court affirmed, the case could reach its conclusion; if it reversed, the parties could proceed to a trial involving liability and damages.

MLC’s Filings

The court struck MLC’s opposition papers and related administrative motions and declarations, Docket Nos. 692 through 696. It found that the filings did not respond to Micron’s summary-judgment arguments and instead functioned as an unauthorized motion to reconsider the earlier damages orders.

The court stated that MLC had not requested permission to seek reconsideration, had not shown the required diligence, had repeated earlier arguments, and had submitted new arguments and evidence that could improperly expand the appellate record. For any appeal, the court held that MLC would be limited to the record it had previously created.

Disposition

The court denied Micron’s motion for summary judgment of no remedy; certified the damages orders for interlocutory appeal; struck MLC’s improper summary-judgment filings; and denied all other pending motions as moot.