Calculating Intellectual Property Damages: Guidelines, Trends and Analysis
One of the important remedies for the infringement of intellectual property (IP) rights is the award of damages. In the U.S., IP damages may be awarded under various theories and analyses, providing a potential variety of economic consequences of the infringing activity. However, if an inappropriate methodology to determine the value of IP is used, it can present significant challenges in asserting damages. Recent case law demonstrates the heightened awareness of properly taking into consideration the facts and circumstances of the case.
Listen as a panel of subject matter experts identify the types of damages that may be associated with the different types of IP given the facts and circumstances of a case. They will also explore the various theories and analyses that have been used to calculate damages, as well as recent case law related to IP infringement damages. The audience will also learn the guidelines and potential factors to consider for calculating damages, and strategies in supporting damage calculations and defending potential criticisms.
In a LIVE Webcast, the speakers will discuss:
- Understanding IP Damages
- Patent Infringement Damages
- Copyright Infringement Damages
- Trademark Infringement Damages
- Damages for the Misappropriation of Trade Secrets
- Theories and Analyses Used by Damages Experts
- General Guidelines in Calculating IP Damages
- Defending and Supporting Damage Calculations
- Case Law Review and Updates
Gregory Smith, Managing Director
Berkeley Research Group, LLC
- Discussion of commercial damages - basis for compensatory damages
- Brief overview of categories of intellectual property
- Categories of damages with general description
- Lost profits
- Price erosion
- Reasonable royalty
- Defendant’s profits
- Statutory damages
- Application for each form of intellectual property and basis therefore
Robert L. Vigil, Principal
- Apportionment in IP damages
- Objective of apportionment
- Challenges in performing apportionment
- Apportionment in lost profits damages
- Overview of reasonable royalty apportionment methodologies
- Technical analysis
- Licensing comparables
- Natural experiments
- Design-around analysis
- Extent of use
- Survey methods
- Statistical methods
- Citation analysis
Eric Forister, Senior Economist
- What makes up a damages opinion, anticipating likely criticisms, and evaluating the strength of those criticisms.
- How to ensure:
- Data (numbers) interpreted correctly
- Comparisons are reasonably done
- Calculation steps fit together
- Methodology’s assumptions and predictions grounded in, not contradicted by, the facts and circumstances of the case
Armando C. Chavez, Director
- Cases Discussing Damages in Patent and Trademark Infringement Cases
- Lost profits and the Panduit factors (Mentor Graphics v. Eve-USA, Inc. 851 F.3d 1275 (Fed. Cir., March 14, 2017)
- Apportionment for reasonable royalties (Exmark Manufacturing Company Inc. v. Briggs & Stratton Power Products Group, LLC, Nos. 2016-2197 (Fed. Cir. January 12, 2018)
- Case law applicable to damages assessments in trademark and trade dress infringement matters (Various cases)
Who Should Attend:
- IP Attorneys & Consultants
- Trademark Attorneys
- Copyright Attorneys
- Patent Licensing Attorneys
- Patent Litigators
- Patent Agents
- Damages Experts
- Forensic Accountants
- Other Related/Interested Professional
Armando Chavez serves as an economic damages expert and financial analyst with over 17 years of experience in the assessment of financial issues and determination of damages in litigation. Mr. Chavez has testified in federal and state civil case proceedings and has experience on matters involving intellectual property damages, valuation, breach of contract, business interruption, and licensing and/or sale of assets. Mr. Chavez has also been involved in non‐litigation consulting regarding patent licensing.
Mr. Chavez has conducted numerous complex analyses involving reasonable royalty, lost profits, present value, lost sales, incremental profit rates, cost of development, unjust enrichment, lost earnings, profit measurement, manufacturing and marketing capacity, fixed and variable costs, interest on damages, and potential technology/brand licensing or acquisition.
As part of his experience, Mr. Chavez has identified, reviewed and evaluated numerous financial documents including financial statements, business plans, projections, market studies, cost of sales reports, product line profit reports, contracts, forecasts, promotional materials, and license agreements, among others. Mr. Chavez has assisted many companies and law firms in the identification of relevant financial information, in the development of damage claims, and in the review of appropriate financial/damages considerations and related case strategies. Mr. Chavez has prepared or assisted in the preparation of a significant number of expert reports and assessments of claims of damages submitted in litigation. The matters in which Mr. Chavez has consulted have involved Fortune 500, multinational, and mid and small‐sized companies across a wide variety of industries, including consumer products, telecommunications, medical/pharmaceutical, sporting equipment, Internet/software, oil & gas, automotive, computer storage, construction, financial services, chemical, entertainment and semiconductor.
Mr. Chavez is a Certified Valuation Analyst (“CVA”), a Master Analyst in Financial Forensics (“MAFF”), and a member of the National Association of Certified Valuation Analysts (“NACVA”). Mr. Chavez is also a member of the Licensing Executives Society (“LES”), which is an organization of more than 5,000 members including corporate executives and professionals involved in the licensing and valuation of patents, trademarks and other intellectual property. Mr. Chavez has served as a lecturer on topics related to damages and valuation of intellectual property including at the Georgetown University Law Center and the Chicago Kent College of Law. Mr. Chavez holds a M.S. and a B.B.A., magna cum laude, in Finance from the Mays Business School at Texas A&M University.
Armando Chavez serves as an economic damages expert and financial analyst with over 17 years of experience in the assessment …
Eric Forister is an economist with expertise in industrial organization, applied microeconomics, and applied econometrics. He has extensive experience in applying economic insights to understand firm and market behavior, analyzing large datasets using advanced econometric and statistical techniques, and designing and evaluating surveys. He has co-authored medical research papers and legal publications on class certification and market definition.
Dr. Forister has worked on both the plaintiff and defense sides of antitrust, intellectual property, consumer fraud (marketing), and breach-of-contract cases. As a consultant, he has addressed issues such as market definition, market power, competition, market pricing, merger efficiencies, common impact, materiality, reliance, ascertainability, royalty rates (including FRAND), damages, sampling, survey design, and irreparable harm. Dr. Forister has analyzed dozens of industries including consumer packaged goods, luxury goods, food products, medical services, biotechnology, legal services, fitness, clothing, entertainment, real estate, air and ground transportation, telecommunications, television, electronics, heavy industry, advertising, restaurants, automobiles, gasoline, payment processing, and illicit markets.
Eric Forister is an economist with expertise in industrial organization, applied microeconomics, and applied econometrics. He has extensive experience in applying …
Greg Smith has more than 25 years of experience assisting clients by providing rigorous financial and economic analyses relating to licensing programs, damages, and the valuation of intellectual property, both within and outside the context of litigation. Mr. Smith has performed such studies in over 75 matters covering technologies from a wide range of industries, including computer equipment and software, telecommunications, healthcare, automotive, financial services, and retail and consumer products. In the litigation context, Mr. Smith has testified in federal and state courts on a wide range of financial issues. He has testified on lost profits, reasonable royalties, infringer’s profits, the valuation of businesses and/or business assets, and the forensic analysis of business records and operations. Outside of litigation, Mr. Smith has helped clients develop financial structures for major licensing programs and has assisted clients with valuing intellectual property assets. He has also consulted with several intellectual property owners in the pre-litigation stage to estimate potential recoveries from a licensing/enforcement program.
Mr. Smith holds a Master of Business Administration degree from the University of Maryland and a Bachelor of Arts degree in economics from the University of Virginia. He has published articles, been a frequent speaker in seminars before professional groups, and is the co-author of a forthcoming book on intellectual property damages. Mr. Smith is a Certified Public Accountant, a Master Analyst in Financial Forensics, and a Chartered Global Management Accountant.
Greg Smith has more than 25 years of experience assisting clients by providing rigorous financial and economic analyses relating to …
As a Principal at Analysis Group, Dr. Vigil specializes in intellectual property and breach of contract cases involving valuation, estimation of damages, and unjust enrichment. He has served as an expert witness in complex litigation matters across multiple industries, including pharmaceuticals, consumer products, computer hardware and software, and electronics. For example, Dr. Vigil was a member of the Analysis Group team that supported affiliated experts in the Apple v. Samsung patent litigation regarding the value of software features embodied in smartphones and tablets as drivers of purchasing decisions. Outside of litigation work, Dr. Vigil helps clients value intellectual property for sale or license, and evaluate potential partners for licensing, acquisition, or divestiture of assets.
As a Principal at Analysis Group, Dr. Vigil specializes in intellectual property and breach of contract cases involving valuation, estimation …
Print and review course materials
Method Of Presentation:
On-demand Webcast; Group-Internet Based
Experience on IP infringement litigation
NY Category of CLE Credit:
Areas of Professional Practice
NASBA Field of Study:
Specialized Knowledge - Technical
2.0 CLE; 2.0 NASBA-CPE
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