MEMORANDUM DECISION AND ORDER DENYING DEFENDANT'S MOTION IN LIMINE No. 1 TO PROHIBIT PLAINTIFFS FROM SEEKING MONETARY DAMAGES, INCLUDING A REASONABLE ROYALTY, AT TRIAL

TED STEWART, District Judge.

This matter is before the Court on Defendant Xymogen's Motion In Limine No. 1 to Prohibit Plaintiffs from Seeking Monetary Damages, Including a Reasonable Royalty, at Trial. According to Xymogen, Plaintiffs Thorne and Softgel Formulators (collectively, "Thorne") initially sought only an injunction and Xymogen was unaware that Thorne intended to seek damages in the form of a reasonable royalty until Thorne filed its proposed jury instructions on January 17, 2018. For the following reasons, the Court denies the Motion.

I. DISCUSSION

In patent cases, there is a "presumption of damages when infringement is proven"1 since the statute clearly states that "[u]pon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer . . . ."2 "Further, section 284 is clear that expert testimony is not necessary to the award of damages, but rather may be received as an aid."3 Fact witnesses may also testify "as to various facts that may also be relevant for the Georgia-Pacific factors used to determine damages . . . provided a foundation is shown."4 In light of the relevant statute and supporting case law, the Court finds that Thorne may argue for damages as they relate to a reasonable royalty.

There is another issue, however, as to whether Thorne may introduce evidence in support of those arguments since the presumption of a reasonable royalty does not result in a right to put on evidence in support of those damages.5

"If a party fails to provide information in compliance with Federal Rule of Civil Procedure 26(e), "the party is not allowed to use that information or witness to supply evidence on a motion, at a hearing, or at a trial, unless the failure was substantially justified or is harmless."6 "A district court need not make explicit findings concerning the existence of a substantial justification or the harmlessness of a failure to disclose."7 However, in exercising its discretion, the court should consider: "(1) the prejudice or surprise to the party against whom the testimony is offered; (2) the ability of the party to cure the prejudice; (3) the extent to which introducing such testimony would disrupt the trial; and (4) the moving party's bad faith or willfulness."8

Inasmuch as evidence on damages has been disclosed in depositions, expert reports, or in other ways that gave reasonable notice to Xymogen, the Court finds no violation to which Rule 37(c) would apply. Any such violation was harmless and will not prejudice Xymogen. However, if there is evidence that has not been previously disclosed and does not comply with the above law, Xymogen may make a timely objection to the admission of that evidence and the Court will make a ruling at that time.

II. CONCLUSION

It is therefore

ORDERED that Defendant's Motion In Limine No. 1 to Prohibit Plaintiffs from Seeking Monetary Damages, Including a Reasonable Royalty, at Trial (Docket No. 276) is DENIED.