DDE denies SJ of no damages where plaintiff's expert had been excluded

On April 21, 2014, Judge Stark of the District of Delaware issued an opinion in Intellectual Ventures I LLC v. Xilinx, Inc., Civil Action No. 10-1065-LPS, in which the court denied in part and granted in part Xilinx's motion for summary judgment of no damages. (The court also granted Xilinx's summary judgment motion of no willful infringement.) The primary damages issue was whether IV could go forward on damages at all after the court had excluded the testimony of IV's sole damages expert, Michael J. Wagner. The court concluded that sufficient evidence existed for IV to put on a reasonable royalty case without its expert testifying. The court cited two sources of evidence to support the denial of summary judgment of no damages: (1) IV-Xilinx agreements, and (2) Xilinx's damages expert. A second issue was whether Xilinx was entitled to summary judgment of no damages for inducement because IV could not prove actual use of the patented features. The court denied this motion because IV's technical expert testified that the patented feature was the default in Xilinx's chips and the setting most easily used by Xilinx's customers. The court concluded that there was evidence that the products, as sold, necessarily infringe the patents. On a third damages issue, the court granted Xilinx's damages motion. Xilinx moved for summary judgment of no damages for distributor sales. The court reasoned that this motion "relied entirely on Xilinx's criticism of Wagner's expert report, and because the Court has stricken Wagner's testimony, it follows that the Court must grant Xilinx summary judgment on this ground as well." Slip op. at 7.