Intellectual Property Expert’s Opinion on Settlement Licenses Excluded
Posted on May 7, 2025 by Expert Witness Profiler
Plaintiffs’ claim for breach of contract is based on a 2001 licensing agreement (“the 2001 License” or “the License”) between Plaintiffs and Defendant Extreme Networks, Inc. (“Extreme”).
Plaintiffs retained Mark Chandler to issue an opinion about “agreements and negotiations related to the licensing, development and commercial use of software, copyrights, and other intellectual property.”
According to Chandler, Plaintiffs’ previous settlement agreements with third parties are “relevant because they demonstrate [Plaintiffs’] licensing practices under conditions that are similar to their current dispute with [Defendant].”
Intellectual Property Expert Witness
Mark Chandler is the founder of Upstream Partners and a recognized expert in commercializing intellectual property (IP) and technology.
Chandler completed his undergraduate studies in electrical engineering (BSEE, Bucknell University), and continued his technical education in physics while working at the Johns Hopkins Applied Physics Lab. He practiced as a researcher building the world’s most accurate atomic clocks and implantable medical devices, and obtained his MBA from the Wharton School of the University of Pennsylvania.
He has testified as a financial damages expert and as a licensing expert, on behalf of both Plaintiffs and Defendants, for patent litigation and contract dispute matters in U.S. District Court, state courts and arbitration proceedings.
Discussions by the Court
The primary issue is whether Chandler’s opinions about Plaintiffs’
settlement history fit the facts of this case such that they will be helpful to the jury.
Plaintiffs have not sufficiently explained why Chandler’s analysis of previous settlement agreements are related to Defendant’s liability for breach of contract, copyright infringement, or fraud. Nor have they explained how Chandler’s opinions are relevant to their damages.
The Court held that Chandler generally discusses the circumstances of Plaintiffs’ previous settlements and his opinions on why Plaintiffs and the third parties arrived at the settlement amount. But he “does not even purport to analyze Plaintiffs’ previous settlements for the purposes of extracting licensing rates that might inform the value of its copyrighted software.” Nor did he connect his summary of Plaintiffs’ three previous settlements to any standard practices and customs.
Held
The Court granted Defendant’s motion to exclude the opinions of Mark J. Chandler.
Key Takeaway:
Under the circumstances, Plaintiffs did not sufficiently explain why Chandler’s analysis of their previous settlement agreements will assist the jury to understand the evidence or to determine a fact in issue.
Case Details:
| Case Caption: | SNMP Research, Inc. v. Extreme Networks, Inc. |
| Docket Number: | 3:20cv451 |
| Court Name: | United States District Court for the Eastern District of Tennessee |
| Order Date: | May 06, 2025 |
