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Intellectual Property

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Patent Features Double Count Leads To Daubert Exclusion

September 2016 A recent successful Daubert motion highlights the importance of taking a step back from a damages calculation to assess the critical question of “Does this damages presentation really make sense?”  Finjan, Inc. (‘Finjan”) vs. Sophos, Inc. (“Sophos”) is a patent infringement action involving 14 different claims related to six different patents for computer [...]

Gap in Damages Timeline Leaves Money on the Table

January 2015 The difficulty when calculating damages caused by production cutoffs was aptly demonstrated in TransPerfect Global, Inc. (“TransPerfect”) v. MotionPoint (“MotionPoint Corporation”), a recent case involving language translation patents. The fact that the jury award did not clearly describe the damage measurement adopted or period covered likely left significant damages on the table. During [...]

New Path For Accelerated Damages Discovery Requires Immediate Expert Assistance

March 2014 The Eastern District of Texas is well known for its intense patent activity and already provides early disclosure of infringement and invalidity contentions to facilitate faster resolution of these cases.  The Court has now taken similar action by providing an option for accelerated damage discovery, including requiring a two week turnaround between defendant’s [...]

Nash Bargaining Solutions In Patent Damages Is Not Always A 50%/50% Split

December 2013 The Federal Circuit ruled in Uniloc USA, Inc. v. Microsoft Corp. that the widely used (but fatally flawed) 25 percent rule can no longer be part of reasonable royalty damages calculations.  This article provides the details of this reasonable royalty damages decision.  Since that time, plaintiffs have advanced the Nash Bargaining Solution, a [...]

Expert Thrown Out After Claiming Major Report “Typos” on Cross Examination

September 2013 A recently affirmed decision to grant judgment for the defendant as a matter of law highlights the importance of expert testimony that is consistent with previously-disclosed opinions presented in a Rule 26 report.  In Rembrandt Vision Technologies, Inc. v. Johnson & Johnson Vision Care, Inc., the expert's testimony was struck because of critical [...]

Federal Circuit Decision Demonstrates The Risks When Defendants Decline To Calculate Possible Damages

June 2013 The Federal Circuit affirmed a $391 million damage award in Versata Software, Inc. v. SAPAmerica, Inc., No. 2012-1029, -1049 (Fed. Cir. May 1, 2013). In reviewing the damage portion of the ruling, one cannot help but question the strategy that the defendant employed, which offered only criticisms to the plaintiff’s damages calculation without [...]

Neither Expert Nor Inventor Allowed To Opine On Reasonable Royalty Damages

May 2013 A Delaware federal court recently closed the door on each of two possible paths to damages for Plaintiff in the matter of AVM Technologies, LLC v. Intel, Inc. (Civil Action No. 10-610-RGA). U.S. District Judge Richard G. Andrews granted Defendant’s motion to exclude Plaintiff’s expert, while also granting Defendant’s motion in limine to [...]

Posner Opinion Provides Worthwhile Damage Guidance

October 2012 In re: Apple vs. Motorola, the parties sued each other for patent infringement involving smartphones.   Seventh Circuit Judge Richard Posner, sitting by designation, threw out all damage witnesses for both parties on Daubert motions.  Then, since both parties lacked damages testimony, he dismissed both cases with prejudice.  Interestingly, Judge Posner did not allow [...]

Federal Circuit Corrects Recurring Errors With The Entire Market Value Rule

September 2012 In LaserDynamics v. Quanta Computer, Case No. 11-1440 (Aug. 30, 2012) the U.S. Court of Appeals for the Federal Circuit overturned an $8.5 million lump sum jury award and remanded the case for a new damages trial. The Federal Circuit addressed three issues of interest to the calculation of reasonable royalties. The Appellate [...]

SEC Report Is Relevant To Litigators Presenting Financial Information

September 2012 This week, the Securities and Exchange Commission (SEC) released a report required by Section 917 of the Dodd-Frank Wall Street Reform and Consumer Protection Act. The study’s legislative mandate includes addressing: “the existing level of financial literacy among retail investors, including subgroups of investors identified by the Commission; methods to improve the timing, [...]

Federal Circuit Approves Evidence Of Both Settlements And Related Negotiations In Reasonable Royalty Damages

June 2012 Patent law (35 U.S.C. § 284) allows for lost profits in patent infringement cases, but requires damages of at least a reasonable royalty even if lost profits cannot be substantiated. The determination of a reasonable royalty is most often done through a hypothetical negotiation which attempts to ascertain the royalty upon which the [...]

Court-Appointed Expert Will Likely Have The Final Word On Damages In Oracle vs. Google

November 2011 The District Court appointed an independent expert on the issue of damages pursuant to Rule 706 of the Federal Rules of Evidence. The public may learn about the Court-appointed damage expert’s conclusion as early as this week, since the independent expert’s report is due on November 14, 2011. No doubt, the District Court [...]

Patent Damage Changes Are Coming

October 2007 In September, the House of Representatives approved the most sweeping changes to the United States patent law in over 50 years. If ultimately passed into law, patents will be harder to obtain, and easier to challenge. Supporters claim that litigation will be curtailed by (i) limiting the jurisdiction in which lawsuits can be [...]

Punitive Damages Now More Difficult In Patent Cases

September 2007 In a landmark decision that overturns long-standing precedent, the Court of Appeals for the Federal Circuit (CAFC) unanimously heightened the test to determine whether an infringer is subject to enhanced damages because of willful infringement of a patent. Such enhanced or punitive damages can be up to three times the compensatory damages. The [...]

Federal Circuit Criticizes Ninth Circuit Damages Ruling. Double Recovery Must Be Avoided

November 2006 In Aero Products vs. Intex Recreation (no. 05-1283, Fed Cir. October 2, 2006), the Court held that damages arising from the same sales is an impermissible double recovery, even if multiple causes of action are involved. The instant case involved both patent and trademark infringement. The Federal Circuit concluded that, in determining whether [...]

Post-Judgment Reasonable Royalty Rates Get Important Additional Guidance

May 2009 The Supreme Court in eBay v. MercExchange, 547 U.S. 388 (2006) overturned the Federal Circuit's "general rule" of automatically issuing a permanent injunction after a finding of patent infringement. District courts must now use a four-factor test to exercise equitable discretion in deciding whether to issue a permanent injunction. The four factors are: [...]

Federal Circuit Court Of Appeals Provides Guidance On Reasonable Royalty Damage Calculations

April 2010 In ResQNet.com, Inc. v. Lansa, Inc., Nos. 08-1365, -1366, 09-1030 (Fed. Cir. Feb. 5, 2010), the United States Court of Appeals for the Federal Circuit (CAFC) provides useful instruction regarding common (but poor) practices that are seen in reasonable royalty damages analyses in patent infringement cases. The CAFC referenced its recent decision in [...]

Reasonable Royalty 25% Rule Is Dead

January 2011 The Federal Circuit ruled in Uniloc USA, Inc. v. Microsoft Corp. (January 4, 2011) that the widely used but fatally flawed 25 percent rule can no longer be part of reasonable royalty damages calculations. Generally speaking, the rule pushed patent infringement damages higher. Because a reasonable royalty is the most frequently used measure [...]