Case: 20-1413 Document: 98 Page: 1 Filed: 08/26/2021
United States Court of Appeals
for the Federal Circuit
______________________
MLC INTELLECTUAL PROPERTY, LLC,
Plaintiff-Appellant
v.
MICRON TECHNOLOGY, INC.,
Defendant-Appellee
______________________
2020-1413
______________________
Appeal from the United States District Court for the
Northern District of California in No. 3:14-cv-03657-SI,
Senior Judge Susan Y. Illston.
______________________
Decided: August 26, 2021
______________________
FABIO E. MARINO, Polsinelli PC, Palo Alto, CA, argued
for plaintiff-appellant. Also represented by TERI HONG-
PHUC NGUYEN.
RUFFIN B. CORDELL, Fish & Richardson PC, Washing-
ton, DC, argued for defendant-appellee. Also represented
by MICHAEL JOHN BALLANCO, CHRISTOPHER DRYER,
TIMOTHY W. RIFFE, ROBERT ANDREW SCHWENTKER, ADAM
SHARTZER.
WILLIAM F. LEE, Wilmer Cutler Pickering Hale and
Dorr LLP, Boston, MA, for amici curiae Apple Inc., Dell
Case: 20-1413 Document: 98 Page: 2 Filed: 08/26/2021
2 MLC INTELLECTIAL PROPERTY LLC V.
MICRON TECHNOLOGY, INC.
Inc., HP Inc., Intel Corporation. Also represented by
BENJAMIN NOAH ERNST, MARK CHRISTOPHER FLEMING,
LAUREN B. FLETCHER.
ANDREW DUFRESNE, Perkins Coie LLP, Madison, WI,
for amici curiae Computer & Communications Industry As-
sociation, High Tech Inventors Alliance. Also represented
by THOMAS ANDREW CULBERT, THERESA H. NGUYEN, Seat-
tle, WA.
PHILLIP R. MALONE, Juelsgaard Intellectual Property
and Innovation Clinic, Mills Legal Clinic, Stanford Law
School, Stanford, CA, for amici curiae Engine Advocacy,
The R Street Institute. Also represented by ABIGAIL A.
RIVES, Engine Advocacy, Washington, DC. Amicus curiae
The R Street Institute also represented by CHARLES DUAN,
R Street Institute, Washington, DC.
______________________
Before NEWMAN, REYNA, and STOLL, Circuit Judges.
STOLL, Circuit Judge.
MLC Intellectual Property, LLC seeks interlocutory re-
view of the United States District Court for the Northern
District of California’s orders excluding certain opinions of
MLC’s damages expert. For the reasons that follow, we af-
firm the district court’s orders precluding MLC’s damages
expert from characterizing certain license agreements as
reflecting a 0.25% royalty, opining on a reasonable royalty
rate when MLC failed to produce key documents and infor-
mation directed to its damages theory when requested
prior to expert discovery, and opining on the royalty base
and royalty rate where the expert failed to apportion for
non-patented features.
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MLC INTELLECTUAL PROPERTY LLC v. 3
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BACKGROUND
I
MLC sued Micron for infringing certain claims of
U.S. Patent No. 5,764,571. The ’571 patent, titled “Electri-
cally Alterable Non-Volatile Memory with N-bits Per Cell,”
describes methods of programming multi-level cells. The
specification discloses that, in conventional single-bit per
cell memory devices, a memory cell assumes either an “on”
state or an “off” state, defining one bit of information.
Thus, a memory device that stores n-bits of data requires n
separate memory cells, meaning that the number of
memory cells must increase on a one-for-one basis with the
number of bits to be stored.
The specification explains that an alternative approach
to the single-bit per cell approach involves storing multi-
ple-bits of data in a single memory cell, known as a multi-
level cell. Prior approaches to multiple-bit per cell non-vol-
atile memory have only used mask programmable read-
only-memories (ROMs). This may be accomplished by var-
ying the channel width or length of the memory cell “such
that 2n different conductivity values are obtained which
correspond to 2n different states corresponding to n-bits of
data which can be stored on a single memory cell.” ’571 pa-
tent col. 1 ll. 45–49. Another conventional ROM approach
involves varying an ion implant for the threshold voltage
“such that the memory cell will have 2n different voltage
thresholds (Vt) corresponding to 2n different states corre-
sponding to n-bits of data which can be stored on a single
memory cell.”
Id. at col. 1 ll. 49–54. In these multi-bit
ROM approaches, the 2n conductivity level must be deter-
mined during the manufacturing process, and the memory
can only be used for one data pattern. Thus, each time a
data pattern needs to be changed, a new batch of semicon-
ductor wafers must be processed.
Conventional alterable multiple-bit per cell memories
can store multiple levels of charge on a capacitive storage
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4 MLC INTELLECTIAL PROPERTY LLC V.
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element, such as dynamic random access memory (DRAM)
or charge-coupled devices (CCDs). These approaches use
volatile storage by providing “2n different volatile charge
levels on a capacitor to define 2n different states corre-
sponding to n-bits of data per memory cell.”
Id. at col. 2
ll. 22–25. The problem with volatile storage is that a cell
loses its data whenever power is removed, and cells must
be periodically refreshed as they can lose charge over time.
The ’571 patent purports to solve these problems in
ROM and DRAM multiple-bit memories by disclosing a
multi-bit semiconductor memory cell that has the non-vol-
atile characteristics of ROM, as well as the electrically al-
terable characteristics of a multi-bit per cell DRAM.
Particularly, the specification describes a multi-bit per cell
electrically alterable non-volatile memory (EANVM) where
each cell stores information in Kn memory states, “where K
is a base of a predetermined number system, n is a number
of bits stored per cell, and Kn>2.”
Id. at col. 2 ll. 58–61.
Moreover, the ’571 patent discloses programming the
multi-level cell to a state corresponding to the input infor-
mation and comparing the memory state of the multi-level
cell with the input information, where the input infor-
mation corresponds to a reference voltage.
On appeal, MLC only asserts claim 30 of the ’571 pa-
tent against Micron, which reads as follows:
30. Apparatus for programming an electrically al-
terable non-volatile memory cell having more than
two predetermined memory states, comprising:
a selecting device which selects one of a plurality of
reference signals in accordance with information
indicating a memory state to which said memory
cell is to be programmed, each reference signal cor-
responding to a different memory state of said
memory cell;
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a programming signal source to apply a program-
ming signal to said memory cell; and
a control device to control the application of said
programming signal to said memory cell based on
the selected reference signal.
Id. at col. 15 ll. 10–22. The scope of claim 30 is narrower
than the scope of the other independent claims in the
’571 patent. While the other independent claims are di-
rected to a “multi-level memory device” or a “multi-level
memory apparatus,” claim 30 is more narrowly directed to
an “[a]pparatus for programming an electrically alterable
non-volatile memory cell having more than two predeter-
mined memory states.” Compare, e.g.,
id. at col. 12 l. 6,
with
id. at col. 15 ll. 10–12.
II
Micron manufactures and sells NAND flash wafers and
packages. Flash memory is a type of non-volatile memory,
and NAND flash memory is a low-cost, high-density
memory option. As such, NAND flash memory is consid-
ered the standard for storage-related applications. Both
Micron’s NAND flash wafer, or bare die assembly, and
NAND flash package may include multiple dies. Included
in each die is a memory array, which may comprise both
single-level and multi-level memory cells. Micron assem-
bles and sells its products in a variety of ways, including
individually as wafers or in completed assemblies as pack-
ages. Wafers may be used to make NAND flash packages,
while flash packages encapsulate sorted functional dies
that are connected to external leads in a plastic package.
Micron contends that while a wafer having a single die is
the smallest saleable patent practicing unit, there are nu-
merous other non-infringing features in Micron’s die, in-
cluding “error correction hardware,” “data clocking
hardware,” “addressing hardware,” “cache registers,” and
“digital to analog converters.” J.A. 1242.
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6 MLC INTELLECTIAL PROPERTY LLC V.
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III
In his expert report, MLC’s damages expert, Michael
Milani, first provided his understanding of the technology
relevant to the ’571 patent. He explained that, based on
his discussion with MLC’s technical expert, Dr. Jack Lee,
he understood that the ’571 patent relates to technology
that enables multi-level cell and triple-level cell flash
memory.
Mr. Milani next addressed the flash memory market as
a whole, explaining that as the market became more satu-
rated, production in the market shifted to NAND flash
memory devices. Mr. Milani opined that by 2006, the
NAND flash market had become a commodity market, with
competitors mainly competing on price.
Mr. Milani next explained that MLC was formed in
2006 by Jerry Banks and Robert Hinkley. In 1997,
Mr. Banks assigned to BTG International, Inc. the rights
to a sizeable patent portfolio (the “MLCIP Patent Portfo-
lio”), which included the ’571 patent among forty other pa-
tents. BTG subsequently granted non-exclusive licenses to
practice the MLCIP Patent Portfolio to Renesas Electronics
Corporation in November 2006, Hynix Semiconductor Inc.
in April 2007, and Toshiba Corporation in April 2007. Af-
ter BTG sued Samsung Electronics Co. for infringement of
certain patents in the MLCIP Patent Portfolio, BTG and
Samsung entered into a settlement and license agreement
in December 2010. MLC reacquired the rights to the
MLCIP Patent Portfolio in 2012.
With this background, Mr. Milani attempted to recon-
struct the hypothetical negotiation between MLC and Mi-
cron. Mr. Milani began by opining that the hypothetical
negotiation date occurred in the fourth quarter of 2006,
around the time that Micron first began selling the accused
devices. He further opined that the compensation period
began on August 12, 2008, six years prior to the filing of
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the complaint, and continued through the expiration of the
’571 patent on June 9, 2015.
Turning next to the royalty base, Mr. Milani opined on
two separate approaches for determining the royalty base:
(1) a comparable license approach and (2) the smallest
saleable patent practicing unit (SSPPU) approach. As for
the comparable license approach, Mr. Milani included all
of the revenue associated with the accused products, rea-
soning that the royalty rate associated with the compara-
ble license agreements already apportioned for other
components in those products. As to the SSPPU approach,
Mr. Milani began with the premise that the SSPPU is a
bare die. Mr. Milani did not apportion the revenue from
sales of a bare die or wafer. For sales of a non-SSPPU prod-
uct, Mr. Milani apportioned the revenue by limiting the
cost of each non-SSPPU product to the average selling price
of each die. Thus, Mr. Milani ultimately applied an appor-
tionment factor of approximately 87.4% of the total accused
product revenue for the SSPPU approach.
Mr. Milani next considered each of the factors set out
in Georgia-Pacific Corp. v. U.S. Plywood Corp.,
318 F. Supp. 1116, 1120 (S.D.N.Y. 1970), to determine an
appropriate royalty rate. As to the first factor—“royalties
received by the patentee for the licensing of the patent in
suit, proving or tending to prove an established royalty,”
id.—Mr. Milani considered BTG’s license agreements with
Hynix and Toshiba to be the most relevant license agree-
ments to consider in a hypothetical negotiation. Mr. Milani
acknowledged that the Hynix license agreement required a
lump sum of $21 million for the entire MLCIP Patent Port-
folio rather than specifying a running royalty, but nonethe-
less relied on a “most-favored customer” provision in the
license to derive a royalty rate. The “most favored cus-
tomer” provision states:
In the event that BTG grants a license under the
Licensed Patents after the Effective Date, other
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8 MLC INTELLECTIAL PROPERTY LLC V.
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than a license granted in settlement of litigation,
in which the royalty is less than 0.25%, then as its
sole remedy, Hynix’s future payments (if any) shall
be reduced so that Hynix, in total pays not more
than 90% of the royalty rate paid by the new licen-
see.
J.A. 1084. Mr. Milani explained that he considered the
0.25% royalty rate called for in this provision “to reflect a
relevant consideration for evaluating a reasonable royalty
and underst[ood] that rate was applied to Hynix worldwide
sales.” J.A. 906 (emphasis added). Turning to the Toshiba
license agreement, Mr. Milani acknowledged that Toshiba
paid BTG $25 million, but opined that, “given the most fa-
vored customer provision in the Hynix Agreement, and the
fact both agreements were executed on the same day, it’s
reasonable to presume BTG considered the royalty rate in
the Toshiba Agreement to reflect a running royalty that is
at least equal to the rate reflected by the Hynix Agree-
ment.” J.A. 907.
As to the third factor—“[t]he nature and scope of the
license, as exclusive or non-exclusive; or as restricted or
non-restricted in terms of territory or with respect to whom
the manufactured product may be sold,” Georgia-Pacific,
318 F. Supp. at 1120—Mr. Milani determined that, be-
cause the Hynix agreement was based upon worldwide
shipments, the “0.25% royalty rate reflected within the
Hynix agreement” was a discounted royalty rate to account
for the fact that the MLCIP Patent Portfolio was predomi-
nantly made up of U.S. rights. J.A. 913. Specifically,
Mr. Milani relied on testimony that the U.S. sales reflected
only a third of a licensee’s total shipments to determine
that the proper rate to apply to U.S. sales in this case would
be 0.75%. Accordingly, Mr. Milani concluded that “the
Hynix Agreement suggests a royalty rate of 0.75% is the
proper rate to consider in connection with determining a
reasonable royalty in a hypothetical negotiation.”
Id.
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Considering the seventh factor—“[t]he duration of the
patent and the term of the license,” Georgia-Pacific,
318 F. Supp. at 1120—Mr. Milani recognized that the
Hynix agreement would run from April 11, 2007, to the ex-
piration of the ’571 patent, June 9, 2015, or approximately
eight years. Nonetheless, he determined that this factor
was neutral “relative to the rate reflected in the Hynix
agreement.” J.A. 915.
Mr. Milani also addressed factors nine and ten—“[t]he
utility and advantages of the patent property over the old
modes or devices, if any, that had been used for working
out similar results” and “[t]he nature of the patented in-
vention; the character of the commercial embodiment of it
as owned and produced by the licensor; and the benefits to
those who have used the invention,” Georgia-Pacific,
318 F. Supp. at 1120. In particular, Mr. Milani explained
that, in his view, “the features and benefits of the
’571 [p]atent and the existence or acceptability of potential
non-infringing alternatives would have been implicitly ac-
counted for in the negotiation between Hynix and BTG.”
J.A. 919.
Considering the twelfth factor—“[t]he portion of the
profit or of the selling price that may be customary in the
particular business or in comparable businesses to allow
for the use of the invention or analogous inventions,” Geor-
gia-Pacific,
318 F. Supp. at 1120—Mr. Milani again stated
that “the Hynix Agreement reflects a 0.25% royalty,”
J.A. 921, and identified extrinsic evidence to support his
contention that the Hynix agreement reflected a 0.25% roy-
alty rate. Specifically, Mr. Milani relied on (1) a BTG
“Briefing Paper” summarizing negotiations with Samsung
and stating that the parties discussed a 0.25% royalty rate;
(2) a BTG letter offering to license the MLCIP Patent Port-
folio to STMicroelectronics, Inc. at a 0.25% royalty rate;
(3) a BTG letter offering to license the MLCIP Patent Port-
folio to Micron at a 0.25% royalty rate; and (4) a BTG mem-
orandum prepared during negotiations with Acacia Patent
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10 MLC INTELLECTIAL PROPERTY LLC V.
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Acquisition LLC, which indicated that the Toshiba and
Hynix agreements used an effective royalty rate of 0.25%.
As to the thirteenth factor—“[t]he portion of the realiz-
able profit that should be credited to the invention as dis-
tinguished from non-patented elements, the
manufacturing process, business risks, or significant fea-
tures or improvements added by the infringer,” Georgia-
Pacific,
318 F. Supp. at 1120—Mr. Milani explained that
he believed it reasonable to presume that at least fifty per-
cent of the licensing value of the MLCIP Patent Portfolio
was attributable to the ’571 patent, and so he adjusted the
0.75% royalty to 0.375%. Mr. Milani relied on testimony
from Dr. Lee, who stated that “the vast majority of the tech-
nical value of the MLCIP portfolio is attributable to the
’571 patent,” J.A. 2194, notwithstanding the fact that the
MLCIP Patent Portfolio consisted of forty-one patent as-
sets, including twenty-eight granted U.S. Patents, two U.S.
Patent Applications, ten foreign granted patents, and one
foreign patent application.
Considering the fifteenth factor—“[t]he amount that a
licensor (such as the patentee) and a licensee (such as the
infringer) would have agreed upon (at the time the in-
fringement began) if both had been reasonably and volun-
tarily trying to reach an agreement,” Georgia-Pacific,
318 F. Supp. at 1120—Mr. Milani applied the royalty rate
of 0.375% to the royalty bases calculated under the compa-
rable licensing approach and the SSPPU approach, arriv-
ing at lump sum payments of $70,207,876 and $63,142,053,
respectively.
IV
Micron filed a motion in limine to preclude Mr. Milani
from mischaracterizing the Hynix and Toshiba agreements
as reflecting a 0.25% royalty rate. In addition, Micron
moved to strike portions of Mr. Milani’s expert report un-
der Rule 37 of the Federal Rules of Civil Procedure as being
based on facts, evidence, and theories that MLC disclosed
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for the first time in Mr. Milani’s expert report. Micron had
asked for MLC’s damages theories—as well as any facts,
evidence, and testimony regarding any applicable royalty
rate—during fact discovery in its Interrogatory Nos. 6 and
22 and during a Rule 30(b)(6) deposition of a corporate de-
signee. Finally, Micron filed a Daubert motion, seeking to
exclude Mr. Milani’s reasonable royalty opinion for failure
to apportion out the value of non-patented features. The
district court granted all three motions.
First, the district court granted in part Micron’s motion
in limine, holding that “[Mr.] Milani may not testify that
the Hynix and Toshiba agreements contain or ‘reflect’ spe-
cific royalty rates because the documents speak for them-
selves and neither provides for an applicable royalty rate.”
MLC Intell. Prop., LLC v. Micron Tech., Inc. (MLC I),
No. 14-CV-03657,
2019 WL 2863585, at *13 (N.D. Cal.
July 2, 2019). The court reasoned that Mr. Milani’s “testi-
mony about the Hynix and Toshiba licenses containing a
0.25% royalty rate is not ‘based on sufficient facts or data’
and is not ‘the product of reliable principles and methods.’”
Id. (quoting Fed. R. Evid. 702). The district court rejected
Mr. Milani’s reliance on the “most favored customer” pro-
vision to establish that the Hynix and Toshiba agreements
reflected a 0.25% royalty rate.
Id. The court reasoned that
the most favored customer provision did not state that the
0.25% royalty rate was applied to calculate the lump sum
payment in either the Hynix or Toshiba license; nor did the
licenses provide any insight as to how the lump sum pay-
ments were actually calculated.
Id. The district court also
noted that had the lump sum payments been calculated
based on the actual term of the license (2007–2017), “the
effective royalty rate would be less than 0.25%.”
Id.
Second, the district court granted in part Micron’s mo-
tion to strike portions of Mr. Milani’s expert report under
Rule 37(c)(1). MLC Intell. Prop., LLC v. Micron Tech., Inc.
(MLC II), No. 14-CV-03657 (N.D. Cal. July 12, 2019), ECF
No. 672 (incorporating its reasoning in MLC I, 2019 WL
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12 MLC INTELLECTIAL PROPERTY LLC V.
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2863585, at *14–15). The court concluded that “MLC never
disclosed the factual underpinnings of its claim that the
Hynix and Toshiba licenses ‘reflect’ a 0.25% royalty rate,
and that pursuant to Rule 37(c)(1), this failure is a separate
and independent basis for excluding evidence and argu-
ment that those licenses contain such a rate.” MLC I,
2019 WL 2863585, at *14. The court further held that the
extrinsic evidence relied on by Mr. Milani to opine that the
Hynix and Toshiba licenses reflect a 0.25% royalty rate
“was never disclosed by MLC and thus MLC may not rely
on this evidence to assert that the Hynix and Toshiba li-
censes ‘reflect’ a 0.25% rate.”
Id. at *15.
Finally, the district court granted Micron’s Daubert
motion to exclude the expert testimony of Mr. Milani re-
garding the royalty base. MLC Intell. Prop., LLC v. Micron
Tech., Inc. (MLC III), No. 14-CV-03657,
2019 WL 3070567,
at *1 (N.D. Cal. July 12, 2019). The district court initially
noted that MLC defended Mr. Milani’s comparable license
approach and his SSPPU approach to calculating the roy-
alty base by arguing that the royalty rate from the Hynix
license already addressed apportionment and thus appor-
tionment was accounted for in the 0.25% royalty rate.
Id.
at *2. The district court determined that there was “no ev-
idence regarding the Hynix agreement that supports
[Mr.] Milani’s opinion that a specific royalty rate derived
from the Hynix agreement already accounts for apportion-
ment of non-patented features in Micron’s accused prod-
ucts and thus can be applied to all the revenue for Micron’s
accused products.”
Id. at *3. The district court based its
conclusion in part on the fact that the Hynix agreement did
not actually contain a royalty rate and there was no expla-
nation as to how the lump sum in the Hynix agreement was
determined.
Id. at *2. Notably, it found relevant that
Mr. Milani failed to compare Micron’s accused products to
the licensed Hynix products, especially in view of the fact
that the Hynix agreement covered worldwide rights to
forty-one patents for all of the Hynix products.
Id. As to
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the SSPPU approach, the district court additionally criti-
cized Mr. Milani’s approach because he failed to apportion
for non-infringing features, such as “error-correction soft-
ware and implementation of copy-back technology.”
Id.
at *3. The court held that Mr. Milani’s failure to apportion
for these non-patented technologies rendered his analysis
unreliable and excludable.
Id.
Thereafter, the district court certified the preceding
three damages orders for interlocutory appeal pursuant to
28 U.S.C. § 1292(b). MLC Intell. Prop., LLC v. Micron
Tech., Inc. (MLC IV), No. 14-CV-03657,
2019 WL 5269014,
at *5 (N.D. Cal. Oct. 17, 2019). We granted MLC’s petition
for permission to appeal. MLC Intell. Prop., LLC v. Micron
Tech., Inc. (MLC V), 794 F. App’x 951, 953 (Fed. Cir. 2020).
We have jurisdiction under
28 U.S.C. § 1292(b).
DISCUSSION
“When reviewing damages in patent cases, we apply re-
gional circuit law to procedural issues and Federal Circuit
law to substantive and procedural issues pertaining to pa-
tent law.” Whitserve, LLC v. Comput. Packages, Inc.,
694 F.3d 10, 26 (Fed. Cir. 2012) (quoting Wordtech Sys.,
Inc. v. Integrated Networks Sols., Inc.,
609 F.3d 1308, 1318
(Fed. Cir. 2010)). The Ninth Circuit reviews “a district
court’s evidentiary rulings, such as its decisions to exclude
expert testimony and to impose discovery sanctions, for an
abuse of discretion.” Ollier v. Sweetwater Union High Sch.
Dist.,
768 F.3d 843, 859 (9th Cir. 2014); see also Gen. Elec.
Co. v. Joiner,
522 U.S. 136, 141 (1997) (“[A]buse of discre-
tion is the proper standard of review of a district court’s
evidentiary rulings.”).
On appeal, MLC challenges all three of the district
court’s exclusion orders. We address each in turn below.
I
MLC first argues that the district court erred in exclud-
ing Mr. Milani’s opinion that the Hynix and Toshiba
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14 MLC INTELLECTIAL PROPERTY LLC V.
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agreements reflect a 0.25% royalty rate. We are not per-
suaded. As a gatekeeper, the district judge was required
to “ensure that any and all scientific testimony or evidence
admitted is not only relevant, but reliable.” Daubert
v. Merrell Dow Pharms., Inc.,
509 U.S. 579, 589 (1993). In-
deed, the Federal Rules of Evidence “leave in place the
‘gatekeeper’ role of the trial judge in screening such evi-
dence.” Gen. Elec.,
522 U.S. at 142. In this case, the dis-
trict court properly determined that Mr. Milani’s
“testimony about the Hynix and Toshiba licenses contain-
ing a 0.25% royalty rate [was] not ‘based on sufficient facts
or data’ and [was] not ‘the product of reliable principles and
methods.’” 1 MLC I,
2019 WL 2863585, at *13 (quoting
Fed. R. Evid. 702).
We see no abuse of discretion in the district court’s ex-
clusion of Mr. Milani’s testimony that the Hynix and
Toshiba agreements contain or reflect a specific royalty
rate of 0.25%. Instead of resting on an accepted scientific
theory or technique, Mr. Milani’s testimony that he under-
stood the Hynix and Toshiba licenses to use a 0.25% royalty
is not sufficiently tethered to the evidence presented. Nei-
ther the Hynix agreement nor the Toshiba agreement dis-
closes any royalty rate. Rather than deriving a rate from
the lump-sum payments and projected sales, Mr. Milani’s
testimony rests on an inference from the most favored cus-
tomer clause that goes well beyond what the clause implies
and is incompatible with the Hynix agreement as a whole.
As the district court pointed out, if a 0.25% royalty had
1 MLC also argues that the district court erred in ex-
cluding Mr. Milani’s expert testimony under the parol evi-
dence rule, an alternative ground addressed by the district
court in a footnote. See MLC I,
2019 WL 2863585, at *13
n.14. Because we affirm on the primary ground identified
by the district court, we do not reach the parol evidence
issue.
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been applied to forecasts of revenue for the term of the li-
censes (2007–2017), the lump-sum amounts would have
been far greater than $21 and $25 million. See MLC I,
2019 WL 2863585, at *13.
We reached a similar conclusion based on similar facts
in Whitserve, where we determined that “multiple errors in
[the expert’s] royalty rate calculation cause[d] his ultimate
opinion regarding a reasonable royalty rate to be specula-
tive.” 694 F.3d at 29. In that case, the expert identified
two lump-sum payments in the range of approximately
$2–3 million as evidence to support an increased royalty
rate of 19%. Id. at 30. Because the expert offered no testi-
mony as to how those lump-sum payments could be con-
verted to any royalty rate, let alone a 19% royalty rate, we
affirmed the district court’s determination that the lump-
sum agreements did not support a 19% running royalty.
Id. The same rationale supports the district court’s deter-
mination here.
We addressed the fundamental differences between
lump-sum agreements and running-royalty agreements in
Lucent Technologies, Inc. v. Gateway, Inc.,
580 F.3d 1301
(Fed. Cir. 2009). In Lucent, we explained that, “[f]or a jury
to use a running-royalty agreement as a basis to award
lump-sum damages . . . , some basis for comparison must
exist in the evidence presented to the jury.”
Id. at 1330.
Lucent cited four running-royalty licenses to support a
lump-sum damages award.
Id. at 1329. Because Lucent
provided almost no testimony for the jury to recalculate the
value of the royalty agreements to arrive at the lump-sum
damages award, we determined that the running royalties
disclosed in the agreements did not support the award.
Id.
at 1330. This case involves a similar problem, though in
the mirror-image situation where lump-sum agreements
are being asserted as a basis to infer a rate for running roy-
alty. Because Mr. Milani did not provide mathematical
analysis to derive the 0.25% royalty rate from the lump-
sum payments in the Hynix and Toshiba licenses, the
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16 MLC INTELLECTIAL PROPERTY LLC V.
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district court could reasonably determine that those li-
censes cannot support testimony that the lump-sum pay-
ments were, in fact, based on that royalty rate.
We acknowledge that Mr. Milani’s testimony may well
have been proper had he merely asserted that he “con-
sider[ed] the 0.25% royalty rate called for in the most fa-
vored customer provision to reflect a relevant consideration
for evaluating a reasonable royalty.” J.A. 906. But he
crossed the line when he stated that he “under[stood] that
[the 0.25%] rate was applied to Hynix worldwide sales” in
calculating the lump-sum license payment of $21 million.
Id. As the expert failed to do in Whitserve, Mr. Milani of-
fered no testimony as to how the $21 million lump-sum
payment could be converted to any royalty rate, let alone a
0.25% royalty rate. See 694 F.3d at 30. Nonetheless,
Mr. Milani repeatedly took the unsupported position that
the 0.25% royalty rate represented the lump sum amounts
in both agreements. J.A. 921 (the “Hynix Agreement re-
flects a 0.25% royalty applied to worldwide shipments”);
J.A. 926 (“I also recognize the lump-sum payments in-
cluded in the BTG license agreements reflect the applica-
tion of the 0.25% royalty rate reflected in the agreements
to a royalty base comprised of estimated worldwide sales.”);
J.A. 1145 (Milani Dep. 146:21–24) (“I would tell the jury
that when this agreement was negotiated, that the parties
to the agreement considered 0.25 percent to be the effective
royalty rate to which they were agreeing.”). Accordingly,
we agree with the district court that Mr. Milani’s charac-
terization of the Hynix and Toshiba licenses reflecting a
0.25% royalty rate is not reliable and therefore affirm the
district court’s exclusion of his opinion.
II
We next turn to the district court’s order striking por-
tions of Mr. Milani’s expert report under Rule 37(c)(1) of
the Federal Rules of Civil Procedure. Under Rule 37(c)(1),
when “a party fails to provide information or identify a
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MICRON TECHNOLOGY, INC.
witness as required by Rule 26(a) or (e), the party is not
allowed to use that information or witness to supply evi-
dence on a motion, at a hearing, or at a trial, unless the
failure was substantially justified or is harmless.” Here,
the district court explained that MLC failed to disclose in-
formation required by Rule 26(e), including what it be-
lieved was an appropriate royalty rate, that it believed the
Hynix and Toshiba licenses reflect a 0.25% royalty rate,
and the extrinsic evidence on which Mr. Milani relied in
support of his belief. MLC I,
2019 WL 2863585, at *14.
The court held that Mr. Milani could not opine that the li-
censes reflected a 0.25% royalty rate where MLC had failed
to disclose in discovery all of the evidence that Mr. Milani
relied on in support of that opinion.
On appeal, MLC primarily argues that it was not re-
quired to disclose these specific facts and documents sup-
porting its damages theory during fact discovery because it
ultimately disclosed them during expert discovery. Specif-
ically, MLC reasons that it provided adequate responses to
Micron’s Interrogatory Nos. 6 and 22, and that anything
more would have required it to disclose material desig-
nated for expert discovery.
Interrogatory No. 6 asked MLC to describe “the factual
and legal basis and supporting evidence for the relief”
sought by MLC, “including but not limited to [MLC’s] con-
tention that [it is] entitled to damages (e.g., a reasonable
royalty).” J.A. 2618. Besides boilerplate objections, MLC
responded that its “calculation of damages will also be in-
formed by, at least, the following documents,” and then pro-
vided a list of ninety-three Bates-numbered documents.
J.A. 2620. In a second supplemental response, MLC added
that the “royalty rate will be based on at least the Georgia-
Pacific factors, and will include but not [be] limited to con-
sideration of relevant license agreements for the patented
technology, including those identified in MLC’s prior re-
sponse, as well as any prior negotiations between the par-
ties regarding the patented technology.” J.A. 2621–22.
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18 MLC INTELLECTIAL PROPERTY LLC V.
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Interrogatory No. 22 asked MLC to “[i]dentify all facts,
evidence, and testimony regarding any applicable royalty
rates that [MLC] intend[s] to rely upon at trial and describe
in complete detail why those royalty rates are applicable.”
J.A. 1186. MLC responded that the “royalty rate will be
based on at least the Georgia-Pacific factors, and will in-
clude but not [be] limited to consideration of license agree-
ments for the patented technology, including but not
limited to” seven bates-numbered documents. J.A. 1187.
In its order granting Micron’s motion, the district court
noted that MLC’s response to Interrogatory No. 6 failed to
identify the Hynix license, the Toshiba license, its reason-
able-royalty theory, and any of the extrinsic evidence relied
on by Mr. Milani to support his opinion that both the Hynix
and Toshiba licenses reflect a 0.25% royalty rate. MLC I,
2019 WL 2863585, at *8. Likewise, the district court noted
that MLC’s response to Interrogatory No. 22 failed to iden-
tify the Toshiba license, a specific royalty rate, that it be-
lieved the Hynix or Toshiba licenses supported a 0.25% (or
0.75%) royalty rate, and any of the extrinsic evidence relied
on by Mr. Milani to support his opinion that the Hynix and
Toshiba licenses reflect a 0.25% royalty.
Id. at *9. The
district court also noted that, when asked about the royalty
rate used in the Toshiba and Hynix agreements, MLC’s
30(b)(6) corporate designee testified that MLC had no un-
derstanding of what royalty rate was in the agreements.
Id. at *9–11.
On appeal, MLC asserts that it did identify both the
Hynix and Toshiba licenses, as well as several of the ex-
trinsic documents Mr. Milani relied on. MLC explains that
it just used different Bates numbers than the ones refer-
enced by Mr. Milani in his report. Micron does not chal-
lenge that MLC identified both the Hynix and Toshiba
licenses. Instead, it asserts that MLC failed to identify a
number of other documents, including the extrinsic evi-
dence relied on by Mr. Milani to show that the Hynix agree-
ment reflects a 0.25% royalty rate—notably, the documents
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MLC INTELLECTUAL PROPERTY LLC v. 19
MICRON TECHNOLOGY, INC.
related to BTG’s negotiations with Samsung, STMicroelec-
tronics, and Acacia. MLC concedes that these documents
were not disclosed in its responses to Interrogatory Nos. 6
and 22, but asserts that at least some of the documents
were disclosed in response to other interrogatories.
The Ninth Circuit affords district courts “particularly
wide latitude” in applying Rule 37(c)(1) to exclude infor-
mation that a party failed to provide under Rule 26. In-
genco Holdings, LLC v. Ace Am. Ins. Co.,
921 F.3d 803, 821
(9th Cir. 2019). While we acknowledge the district court’s
factual error in finding that MLC did not identify the
Toshiba and Hynix licenses, we nonetheless determine that
the district court did not abuse its discretion in finding that
MLC did not properly disclose its claim that the Hynix and
Toshiba licenses reflect a 0.25% rate, as well as the extrin-
sic documents relied on by Mr. Milani to show that the
Hynix agreement reflects a 0.25% royalty rate. The district
court acted well within its discretion when it excluded
Mr. Milani’s opinion that the Hynix and Toshiba licenses
reflect a 0.25% rate and the extrinsic documents under
Rule 37(c)(1) as a result of MLC’s failure to supplement its
discovery responses to provide this information. As the dis-
trict court emphasized, because the Hynix and Toshiba li-
censes are lump-sum agreements that do not contain
specific royalty rates, absent a disclosure by MLC, Micron
would have no way of knowing that Mr. Milani would opine
that the agreements reflect a 0.25% royalty rate, particu-
larly given the Rule 30(b)(6) testimony indicating that
MLC did not know the royalty rate in the Hynix and
Toshiba agreements.
Id. Further, we agree with the dis-
trict court that, had MLC disclosed this information, Mi-
cron could have sought fact discovery regarding this
contention. Finally, it is worth noting that the Hynix and
Toshiba agreements and the extrinsic evidence were pro-
duced by MLC and in its possession from the outset of the
case, largely mitigating any timing and fairness concerns
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20 MLC INTELLECTIAL PROPERTY LLC V.
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preventing MLC from knowing its contentions about a rea-
sonable royalty until after close of fact discovery.
We find unpersuasive MLC’s argument that, under
Rule 26(a)(2) of the Federal Rules of Civil Procedure—
which governs the disclosure of expert testimony—it was
outside of the district court’s discretion to require MLC to
identify which documents Mr. Milani would be using, how
Mr. Milani would interpret those documents, and how
Mr. Milani would use them to derive his reasonable royalty
opinion. According to MLC, all that the discovery rules re-
quire is that those theories be developed in the expert’s re-
port. We reject this narrow reading of Rule 26, as well as
the implied narrow reading of the district court’s discretion
to interpret discovery rules. Rule 26 explains that the dis-
closures required under section (a)(2) are in “addition to
the disclosures required by Rule 26(a)(1).” Fed. R. Civ. P.
26(a)(2) (emphasis added). And Rule 26(a)(1)(A)(iii) re-
quires parties seeking damages to provide in their initial
disclosures “a computation of each category of damages” as
well as “the documents or other evidentiary material, un-
less privileged or protected from disclosure, on which each
computation is based.” 2
2 The Northern District of California has previously
explained that, with regard to reasonable royalty, though
Rule 26(a) “does not require a full exposition of the type
required at trial or in an expert report,” it “does expressly
require an initial computation and disclosure of the evi-
dence that will be relied on to the full extent the patent
plaintiff could or should know of it.” Brandywine
Commc’ns Techs., LLC v. Cisco Sys., Inc., No. C 12-01669,
2012 WL 5504036, at *2 (N.D. Cal. Nov. 13, 2012). Thus,
to the extent possible, this initial disclosure should include
a claimed royalty rate and the evidence that supports such
a rate, “even though subsequent discovery may eventually
warrant a modification of the calculation.”
Id.
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MICRON TECHNOLOGY, INC.
Thus, in our view, the district court was within its dis-
cretion in determining that, though MLC was not required
to disclose its expert opinions during fact discovery, it was
still required to disclose (1) its view that the Hynix and
Toshiba license agreements reflect a 0.25% royalty rate
and (2) the extrinsic evidence Mr. Milani relied on to sup-
port that view in response to Micron’s reasonable requests
for all facts, evidence, and testimony regarding any appli-
cable royalty rates that MLC intended to rely on at trial.
The Ninth Circuit has previously enforced sanctions for
failing to timely disclose damages theories. In Ingenco
Holdings, LLC v. Ace American Insurance Co., the district
court did not permit Ingenco “to rely upon any computation
or evidence of their [damages claims] beyond that provided
in their initial disclosures” for failing to produce these dam-
ages theories until the day before discovery cutoff at a
Rule 30(b)(6) deposition. No. C13-543,
2016 WL 4703758,
at *2, *5 (W.D. Wash. Sept. 7, 2016). The Ninth Circuit
affirmed this exclusion, explaining that because Ingenco
failed to respond to Ace’s interrogatory requesting this
damages information, and because Rule 26(a)(1)(A)(iii) re-
quires timely disclosure of damages information, the dis-
trict court properly excluded the damages information
under Rule 37. Ingenco, 921 F.3d at 821–22; see also Elliott
v. Google, Inc.,
860 F.3d 1151, 1161 (9th Cir. 2017) (affirm-
ing the district court’s exclusion of evidence where the evi-
dence was not properly disclosed during fact discovery);
Am. Cas. Co. of Reading, Pa. v. Baker,
22 F.3d 880, 886 n.3
(9th Cir. 1994) (explaining that “the district court was
within its discretion by precluding expert testimony as a
sanction for the [] failure to seasonably supplement its in-
terrogatory responses”); Silvia v. MCI Commc’ns Servs.,
Inc., 787 F. App’x 399, 400 (9th Cir. 2019) (affirming the
district court’s exclusion of Silvia’s damages theory for fail-
ing to timely supplement or correct her disclosures and dis-
covery responses under Rule 26(e)(1)(A)).
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22 MLC INTELLECTIAL PROPERTY LLC V.
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MLC’s argument that it need not disclose factual un-
derpinnings and evidence underlying its damages theory
prior to expert discovery undermines a district court’s dis-
cretion to encourage early discovery. District courts have
the discretion to encourage parties to provide discovery of
damages theories prior to expert discovery. Doing so pro-
motes judicial efficiency, informs settlement discussions,
and helps parties determine the resources that will be de-
voted to a case based on its potential value. Consistent
with these goals, several district courts have adopted local
rules requiring parties to provide this information early in
the litigation. For example, the Northern District of Cali-
fornia amended its local rules in 2017 to require each party
asserting infringement to disclose its damages “theories of
recovery, factual support for those theories, and computa-
tions of damages within each category,” within fifty days
after service of the invalidity contentions. U.S. Dist. Ct.
N.D. Cal. Patent L.R. 3-8. 3
MLC’s argument also undermines Rule 33 of the Fed-
eral Rules of Civil Procedure. Rule 33 states that “[a]n in-
terrogatory is not objectionable merely because it asks for
an opinion or contention that relates to fact or the applica-
tion or law to fact.” Fed. R. Civ. P. 33. As we recognized in
Woods v. DeAngelo Marine Exhaust, Inc., contention inter-
rogatories—like Interrogatory Nos. 6 and 22 here—“serve
an important purpose in helping to discover facts support-
ing the theories of the parties. Answers to contention in-
terrogatories also serve to narrow and sharpen the issues
thereby confining discovery and simplifying trial prepara-
tion.”
692 F.3d 1272, 1280 (Fed. Cir. 2012) (citing Fed. R.
Civ. P. 33 advisory committee’s note (1970 Amendment,
Subdivision (b)). We have recognized that answers to con-
tention interrogatories evolve over time as theories of
3 We note that the district court did not rely on the
local rules in its Rule 37(c)(1) ruling in this case.
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MLC INTELLECTUAL PROPERTY LLC v. 23
MICRON TECHNOLOGY, INC.
liability, defense, and relief begin to take shape and that
answers to those interrogatories may not come into focus
until the end of discovery. See Woods, 692 F.3d at 1280
(citing O2 Micro Int’l Ltd. v. Monolithic Power Sys., Inc.,
467 F.3d 1355, 1365 (Fed. Cir. 2006)). But Rule 26(e) ex-
pressly requires that as theories mature and as the rele-
vance of various items of evidence changes, responses to
interrogatories, and particularly contention interrogato-
ries, must be corrected or supplemented to reflect those
changes.
Finally, we are unpersuaded by MLC’s argument that
the district court’s order required MLC’s corporate de-
signee in the Rule 30(b)(6) deposition to divulge privileged
information when asked about MLC’s view of the royalty
rate in the Hynix agreement. Likewise, we do not agree
that the district court erred by requiring MLC to disclose
privileged information in its interrogatory responses. In
striking portions of Mr. Milani’s expert opinion on reason-
able royalty under Rule 37(c)(1), the district court ex-
plained that “Micron repeatedly asked MLC . . . for the
factual basis of its reasonable royalty claim and about its
reliance on the Hynix license in particular – and MLC con-
sistently failed to disclose its contention that the Hynix li-
cense ‘reflected’ a 0.25% royalty rate that should be applied
to this case.” MLC I,
2019 WL 2863585, at *14.
A request for information regarding the factual basis of
MLC’s reasonable royalty claim does not seek privileged in-
formation. Attorney-client privilege “only protects disclo-
sure of communications; it does not protect disclosure of the
underlying facts” of those communications. Upjohn Co.
v. United States,
449 U.S. 383, 395 (1981); see also Mur-
doch v. Castro,
609 F.3d 983, 995 (9th Cir. 2010) (explain-
ing that a witness may be questioned “about the underlying
facts” because “attorney-client privilege protects only a
communication between an attorney and a client, not the
facts that are communicated”); Castaneda v. Burger King
Corp.,
259 F.R.D. 194, 197 (N.D. Cal. 2009) (explaining
Case: 20-1413 Document: 98 Page: 24 Filed: 08/26/2021
24 MLC INTELLECTIAL PROPERTY LLC V.
MICRON TECHNOLOGY, INC.
that though documents may be privileged, “the facts con-
tained within them may not be” and that attorney-client
privilege does not protect the disclosure of underlying
facts); accord In re Pioneer Hi-Bred Int’l, Inc.,
238 F.3d
1370, 1374 (Fed. Cir. 2001). That the Hynix and Toshiba
licenses reflect a 0.25% rate, along with the statements in
the extrinsic documents supporting this rate, are nothing
more than facts underlying MLC’s damages theory. We
therefore affirm the district court’s order striking portions
of Mr. Milani’s expert opinion.
III
Finally, we affirm the district court’s grant of Micron’s
Daubert motion to exclude Mr. Milani’s expert opinion on
reasonable royalty for failure to apportion. We agree that
Mr. Milani did not properly apportion either the royalty
base or the royalty rate to account for the patented tech-
nology. 4 We have repeatedly held that when the accused
technology does not make up the whole of the accused prod-
uct, apportionment is required. See, e.g., Exmark Mfg. Co.
Inc. v. Briggs & Stratton Power Prods. Grp., LLC,
879 F.3d
1332, 1348 (Fed. Cir. 2018). “[T]he ultimate combination
of royalty base and royalty rate must reflect the value at-
tributable to the infringing features of the product, and no
more.” Finjan, Inc. v. Blue Coat Sys., Inc.,
879 F.3d 1299,
1309 (Fed. Cir. 2018) (alteration in original) (quoting Er-
icsson, Inc. v. D–Link Sys., Inc.,
773 F.3d 1201, 1226
(Fed. Cir. 2014)). This is so even where the proposed roy-
alty base is the smallest saleable patent practicing unit or
SSPPU. VirnetX, Inc. v. Cisco Sys., Inc.,
767 F.3d 1308,
1329 (Fed. Cir. 2014).
4 While we disagree with the district court to the ex-
tent it suggested that the only way to apportion is through
the royalty base, Mr. Milani also did not apportion using
the royalty rate.
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MICRON TECHNOLOGY, INC.
Here, the sole asserted claim is claim 30, which is di-
rected to an “[a]pparatus for programming an electrically
alterable non-volatile memory cell,” and the accused tech-
nology does not make up the whole of the accused die or
wafer. Neither of Mr. Milani’s damages theories—compa-
rable license or SSPPU—apportioned for the non-patented
aspects of the accused dies or wafers. Accordingly, the dis-
trict court did not abuse its discretion in granting Micron’s
Daubert motion.
We turn first to Mr. Milani’s and MLC’s contention
that because the licenses are “comparable,” there is de facto
no need to apportion. See J.A. 893 n.195 (“In other words,
the royalty rate associated with the comparable license
agreements already apportions for other components and
technologies included in the infringing product.”). We have
previously approved the use of comparable licenses to ac-
count for apportionment. See Bio-Rad Labs., Inc. v. 10X
Genomics Inc.,
967 F.3d 1353 (Fed. Cir. 2020); Elbit Sys.
Land & C4I Ltd. v. Hughes Network Sys., LLC,
927 F.3d
1292 (Fed. Cir. 2019); Commonwealth Sci. & Indus. Rsch.
Org. v. Cisco Sys., Inc. (CSIRO),
809 F.3d 1295 (Fed. Cir.
2015). As we have explained, “[w]here the licenses em-
ployed are sufficiently comparable, this method is typically
reliable because the parties are constrained by the mar-
ket’s actual valuation of the patent.” CSIRO, 809 F.3d at
1303 (footnote omitted) (citing Georgia-Pacific,
318 F. Supp. at 1120). We reject the view that the Hynix
and Toshiba agreements are comparable licenses. As the
district court properly explained, “there is no evidence re-
garding the Hynix agreement that supports [Mr.] Milani’s
opinion that a specific royalty rate derived from the Hynix
agreement already accounts for apportionment of non-pa-
tented features” in this case. MLC III,
2019 WL 3070567,
at *3.
We agree with the district court that the cases in which
we have held that damages can be based on the terms of a
comparable license that already values the patented
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26 MLC INTELLECTIAL PROPERTY LLC V.
MICRON TECHNOLOGY, INC.
technology involve very different facts than those pre-
sented here. For example, in CSIRO, we held that the dis-
trict court properly accounted for apportionment when it
relied on proposed royalty rates from prior negotiations be-
tween the parties to the litigation involving the same pa-
tent and accused technology.
809 F.3d 1302–04. We
explained that “the district court did not violate apportion-
ment principles in employing a damages model that took
account of the parties’ informal negotiations with respect
to the end product.”
Id. at 1304. We expanded on this anal-
ysis in Elbit. There, we rejected Hughes’s argument that
Elbit’s damages evidence, and hence the jury award, was
counter to our precedent on apportionment. Elbit, 927 F.3d
at 1301. Elbit’s damages expert relied on a prior settle-
ment agreement for slightly different technology to support
his reasonable-royalty determination. Id. at 1300. Like
MLC’s expert, Elbit’s expert opined that apportionment “is
essentially embedded in [the] comparable value” from the
prior agreement. Id. at 1301 (alteration in original). Un-
like MLC’s expert, however, Elbit’s expert appropriately
accounted for the differences between the technology at is-
sue in the settlement agreement and the accused technol-
ogy. Id. (explaining that Elbit’s expert’s testimony
“allowed the jury to find that the components at issue . . .
were comparable to the components at issue” in the prior
agreement). Likewise, in Bio-Rad, though Bio-Rad’s ex-
pert did not adjust the royalty rate of the comparable li-
censes, he did account for the differences between the
accused technology and the licensed technology. 967 F.3d
at 1377 (explaining that Bio-Rad’s expert “assess[ed]
whether the importance of [the] technology to the particu-
lar license was similar to the hypothetical negotiation,” re-
lying in part “on the reports, testimony, and conclusions of
other witnesses”).
In this case, Mr. Milani provided no evidence or expla-
nation for how the 0.25% royalty rate he derived from the
Hynix agreement accounts for apportionment of Micron’s
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MICRON TECHNOLOGY, INC.
accused products. Specifically, unlike the expert in Elbit,
Mr. Milani conducted no assessment of the licensed tech-
nology versus the accused technology to account for any dif-
ferences. See 927 F.3d at 1300 (“[P]rior licenses or
settlements need to be ‘sufficiently comparable’ for eviden-
tiary purposes and any differences in circumstances must
be soundly accounted for.” (quoting VirnetX, 767 F.3d
at 1330)). Mr. Milani’s general characterization of the
flash memory market as a whole as a commodity market
does not satisfy this requirement of establishing that a li-
cense is, in fact, comparable. Moreover, unlike the agree-
ment in CSIRO, the Hynix agreement is not a license for
the same single patent. See 809 F.3d at 1298. To the con-
trary, the Hynix agreement granted a license to a portfolio
of forty-one U.S. and international patents and patent ap-
plications, and only one of those forty-one patents is at is-
sue in the hypothetical negotiation. For these reasons, we
see no abuse of discretion in the district court’s determina-
tion that Mr. Milani’s comparable license theory does not
properly apportion for the value of the patented technology.
We are also not persuaded by MLC’s argument that it
need not further apportion beyond the single-component
SSPPU because the asserted claims are directed to a
memory device as a whole. Contrary to MLC’s suggestion
in its briefing, claim 30 is the sole claim at issue in this
appeal. Because claim 30 is an “[a]pparatus for program-
ming an electrically alterable non-volatile memory cell
having more than two predetermined memory states,”
’571 patent col. 15 ll. 10–12, it is not commensurate in
scope with the SSPPU, which also contains “error correc-
tion hardware,” “data clocking hardware,” “addressing
hardware,” “cache registers,” and “digital to analog con-
verters.” J.A. 1242. Accordingly, we affirm the district
court’s Daubert order excluding MLC’s expert testimony re-
garding a reasonable royalty for failure to apportion.
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28 MLC INTELLECTIAL PROPERTY LLC V.
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CONCLUSION
We have considered MLC’s remaining arguments and
find them unpersuasive. For the foregoing reasons, we af-
firm the district court’s orders excluding the reasonable
royalty opinion of MLC’s damages expert.
AFFIRMED
