The Rise of the “Footprint” Approach in Reasonable Royalty Damages: What’s New in 2016
In the Federal Circuit’s Uniloc USA v. Microsoft ruling in 2011, the Court rejected the use of the “25 percent rule” as a basis to determine reasonable royalty damages and reiterated that expert testimony “must carefully tie proof of damages to the claimed invention’s footprint in the market place.” It has been made clear under the Uniloc decision, along with other decisions dealing with patent damages (Lucent Technologies and ResQNet.com), that damages estimates must be established through a comprehensive economic reasoning.
A number of questions, including the magnitude of the invention’s footprint, should be addressed first. This further highlights the need for each party in a patent dispute, to evaluate every potential area where a patented invention may increase value over the next-best non-infringing alternatives. This analysis should be performed as early as possible and in as much information as it can provide.
In this two-hour LIVE CLE Webcast, a panel of distinguished professionals and thought leaders will help companies and intellectual property lawyers understand the important aspects of this significant topic. They will provide an in-depth discussion of the Reasonable Royalty Footprint approach. Speakers will also offer best practices in implementing this approach while maintaining compliance with applicable laws.
Key topics include:
- Implications of a Line of Cases to the Reasonable Royalty Damages Law
- Methodologies for Reasonable Royalty Damages
- Uncertainty with the Base-Times-Rate Approach
- Determination of an Invention’s Footprint
- The 'Footprint' Paradigm Approach
- Regulatory Updates and Forecasts
- Best Implementation and Compliance Practices
Kevin A. Goldman, Counsel
- Historical view – long history of why allocation is important
Thomas M. Dunlap, Managing Partner
Dunlap Bennett & Ludwig PLLC
- Short History - Federal District analysis
Michael P. Padden, Partner
Pearne & Gordon LLP
- Recent History: Federal circuit law and practical implications of how it affects analysis and claims
- Daubert motions and exclusions
Lisa Cameron, Principal
The Brattle Group
- Application Approach: success as it varies court to court, tools that resonate in Texas as opposed to California.
- Other possible talking points.
John Jarosz, Managing Principal
Analysis Group, Inc.
- Short History - Federal District analysis
Who Should Attend:
- Intellectual Property Lawyers
- Patent Licensing Attorneys
- Patent Attorneys
- IP Counsel
- Patent Litigators
- Legal and Compliance Executive
- In-house Counsel
- Damages Experts
- Commercial Litigators
- Other Related/Interested Professionals
Dr. Lisa Cameron is an economist with two decades of experience consulting to attorneys and companies involved in commercial litigation, regulatory proceedings, and other complex matters. Her industry expertise includes pharmaceuticals, e-commerce, telecommunications, software, consumer products, energy, electrical equipment, and transportation.
Dr. Cameron has broad experience in intellectual property, antitrust, regulatory policy, and transfer pricing matters, and has analyzed damages, liability, and requests for injunctive relief. In addition, she has testified in matters involving competition and investment incentives before the Federal Energy Regulatory Commission and state public utility commissions.
Dr. Cameron holds a Ph.D. in economics from Stanford University and a B.Sc. in business/economics from Cornell University.
Dr. Lisa Cameron is an economist with two decades of experience consulting to attorneys and companies involved in commercial litigation, …
Kevin Goldman’s practice focuses on intellectual property matters. He has represented companies in patent disputes involving a diverse array of technologies, including wireless communications, radio frequency identification (RFID), microprocessors, web commerce and database systems, user interfaces, medical devices, textiles, network visualization and power management. He has also represented clients in copyright, trademark, contract, class action, inverse condemnation and products liability matters. Mr. Goldman has litigated cases in various jurisdictions across the United States and before the U.S. International Trade Commission. His practice has encompassed all facets of litigation, including discovery, settlement, alternative dispute resolution, summary judgment, trials and appeals. From 2006 to 2007, Mr. Goldman clerked with the Honorable William C. Bryson of the United States Court of Appeals for the Federal Circuit.
Kevin Goldman’s practice focuses on intellectual property matters. He has represented companies in patent disputes involving a diverse array of …
Mike Padden is a partner at Pearne & Gordon LLP where he leads the litigation group. He concentrates his practice on IP-related litigation matters and other business disputes in state and federal courts as well as contested administrative proceedings held before the Patent Trial and Appeal Board and Trademark Trial Appeal Board. Mike has served for many years as co-chair of the Patent Litigation Subcommittee of the ABA Section of Litigation where he recently worked on model jury instructions on patent damages. He also served on the committee that drafted the Local Patent Rules for the United States District Court for the Northern District of Illinois. Mike is a graduate of Stanford Law School and the University of Notre Dame.
Mike Padden is a partner at Pearne & Gordon LLP where he leads the litigation group. He concentrates his practice …
John C. Jarosz, Managing Principal; M.A. and Ph.D. Candidate, Economics, Washington University in St. Louis; J.D., University of Wisconsin; B.A., Economics and Organizational Communication, Creighton University
Mr. Jarosz, a Managing Principal with Analysis Group and director of the firm’s Washington, D.C. office, is an economist who specializes in applied microeconomics and industrial organization. He has provided strategy consultation across a wide range of industries and delivered expert testimony in hundreds of depositions, trials, and hearings. His focus is on matters involving intellectual property, licensing, commercial damages, and antitrust.
A frequent author and lecturer on the economics of intellectual property protection, Mr. Jarosz is the editor of Eckstrom’s Licensing in Foreign and Domestic Operations: The Forms and Substance of Licensing, and his articles and papers have been published in the Stanford Technology Law Review, the Federal Circuit Bar Journal, les Nouvelles: Journal of The Licensing Executives Society, The Journal of Business Valuation and the Journal of the Patent and Trademark Office Society. Among other things, Mr. Jarosz has given presentations at various meetings of the Licensing Executives Society and the Association of University Technology Managers, is one of IPLaw 360’s Voices of the Bar, and has taught classes at Georgetown University Law Center, George Washington University Law School, Columbia Business School, and the U.S. Patent and Trademark Office.
John C. Jarosz, Managing Principal; M.A. and Ph.D. Candidate, Economics, Washington University in St. Louis; J.D., University of Wisconsin; B.A., …
Tom Dunlap is a partner at Dunlap Bennett & Ludwig where he focuses on intellectual property litigation and patent infringement. He has litigated numerous patent infringement cases in Federal Court, before the Federal Circuit and in front of the PTAB. In addition to numerous CLEs, Tom is the author of a Virginia Lawyer’s Deskbook, Chapter 8 - Intellectual Property. Tom received his BA from Lafayette College and holds a JD (Washington & Lee University), MBA and MS (University of Maryland) in biotechnology, and is a former Army officer (Armor/ Cavalry), a former special prosecutor, has served as co-chair of the ABA’s Copyright CLE subcommittee and is formerly president of the Loudoun County bar association. Most recently Tom was again named a SuperLawyer (2016) for intellectual property. Outside of his legal practice Tom is a rescue diver, instrument pilot, a member of MENSA, and participates in marathons and triathlons. Tom is a founder of and current chair of the board of directors for the biotechnology company Ceres Nanosciences, Inc.
Tom Dunlap is a partner at Dunlap Bennett & Ludwig where he focuses on intellectual property litigation and patent infringement. …
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About The Brattle Group
The Brattle Group provides consulting and expert testimony in economics, finance, and regulation to corporations, law firms, and governments around the world. We are distinguished by our credibility and the clarity of our insights, which arise from the stature of our experts, affiliations with leading international academics and industry specialists, and thoughtful, timely, and transparent work. Our clients value our commitment to providing clear, independent results that withstand critical review.
We assist our clients with complex intellectual property matters by providing innovative and rigorous economic analysis, combined with in-depth industry experience. We have extensive experience quantifying economic damages in both lost profits and reasonable royalty cases. We are able to identify the value of patented technologies from existing data, documents, and licenses, and we are proficient in the use of survey techniques to collect and analyze primary data on the value of the technology at issue. We have testified on behalf of both plaintiffs and defendants on damages in a wide range of industries, including medical devices, pharmaceuticals, computer hardware and software, telecommunications, navigation and location technologies, and consumer products.
WilmerHale offers unparalleled legal representation across a comprehensive range of practice areas—from intellectual property, litigation, and corporate to labor and employment, tax, regulatory issues and beyond—that are critical to the success of our clients. We practice at the very top of the legal profession and offer a cutting-edge blend of capabilities that enables us to handle deals and cases of any size and complexity. We help clients at every stage of growth in all aspects of their business that involve the acquisition, exploitation or protection of intellectual property. Clients across a broad spectrum of technologies and product categories receive full-service IP coverage, from patent and trademark to copyright and trade secret law. The firm is 1,000 lawyers strong with 14 offices in the United States, Europe and Asia. For more information, please visit www.wilmerhale.com.
About Pearne & Gordon LLP
Pearne & Gordon LLP is one of the largest and oldest intellectual property law firms in Cleveland. The firm specializes in patent, trademark, copyright, trade secret, unfair competition, and related intellectual property law and litigation matters. With roots dating back to the 1910’s, Pearne & Gordon has a long tradition of efficiently satisfying the intellectual property needs of its clients. In patent matters, the firm has experience in all areas of technology, including electronics, chemistry, mechanical engineering, ceramics engineering, manufacturing engineering, computers, software, biotechnology, nuclear science, machine design, pharmaceuticals and business methods.
As part of its full spectrum of intellectual property legal services, Pearne & Gordon provides patentability opinions, freedom-to-operate and infringement opinions, validity studies, trademark selection advice, license negotiations, intellectual property valuations, expert testimony, assistance in all aspects of patent, trademark and litigation matters, and other advice and consultation directed to intellectual property issues
About Analysis Group, Inc.
Since 1981, Analysis Group has provided expertise in economics, finance, health care analytics, and strategy to top law firms, Fortune 500 companies, global health care corporations, and government agencies. Our work is grounded in a collaborative approach that allows us to effectively integrate the best ideas from leading academic and industry experts with our more than 600 professionals. As a result, our clients receive thoughtful, pragmatic solutions to their most challenging business and litigation problems. Through our work in thousands of cases across multiple industries, we have become one of the largest economics consulting firms in North America, with 11 offices in the United States, Canada, and China.
About Dunlap Bennett & Ludwig PLLC
Founded by two former Army officers in 2001 Dunlap Bennett & Ludwig is a veteran owned law firm handling a wide range of business matters including trademark and patent litigation, business disputes, government contracts, U.S. and international patents, trademarks, and copyrights for clients that include small and medium-sized established businesses and start-ups, Fortune 500 companies, and sovereign governments. Our attorneys come from diverse backgrounds and combine decades of experience to serve you and defend your interests with flexible solutions and fees. With extensive state, Federal and appellate level trial experience, including both state and US Supreme Court appeals, Post Grant Review and Trademark Trial and Appeal Board and Federal Circuit experience, DBL is a firm you can trust to successfully go the distance in the largest and most complex cases at the best rates in the industry.