Damage Apportionment in Patent Infringement Cases: Practical Tips and Strategies Explored
The past years have seen the Federal Circuit's continuous effort to provide proper guidance on analyzing and apportioning damage claims in patent infringement cases. This area of law is being constantly shaped by recent and notable case decisions such as the case verdicts on Exmark Manufacturing Co. Inc. v. Briggs & Stratton and Finjan Inc. v. Blue Coat Systems, Inc. Thus, practitioners must be well-versed with emerging trends, recent case laws, and proper damage apportionment strategies to accurately capture the value of their client’s infringed product.
In this LIVE Webcast, a panel of key thought leaders and practitioners assembled by The Knowledge Group will provide the audience with an in-depth discussion of the key considerations in apportioning damages in patent infringement cases. Speakers will also present practical tips and strategies to avoid pitfalls in this evolving regulatory climate.
Some of the major topics that will be covered in this course are:
- Patent Litigation: Trends and Statistics
- Notable Cases and Court Verdicts
- Damage Analysis
- Significant Damages Apportionment Strategies
- 2020 Outlook
- Identify notable patent infringement cases and their impact on damages apportionment
- Determine apportionment methodologies in reasonable royalty damages
- Recognize the potentials of the Entire Market Value Rule (EMVR) and its implications on patent infringement cases
Katherine McGuire, Partner
Woods Oviatt Gilman LLP
- Cornell v HP (2009): Smallest Salable Patent–practicing Unit
- Lucent Technologies v. Gateway (2009): Entire Market Value Rule And Comparability of Licenses
- LaserDynamics, Inc. v. Quanta Computer (2012): Exceptions for Entire Market Value Rule
- Ericsson, Inc. v. D-Link Sys., Inc (2014): Incremental Value of Patented Invention
- Mentor Graphics v. EVE-USA (2017): Panduit Factors for Lost Profits can be Sufficient Apportionment
- Finjan v Blue Coat (2018): Importance of Apportionment in Royalty Base
- Power Integrations v. Fairchild
- Rite-Hite v. Kelley
Dr. Daniel Werner, Senior Consultant
NERA Economic Consulting
- Overview of apportionment methodologies in reasonable royalty damages. For example, among others:
- Use-based approaches
- Before-and-after approaches
- Regression-based approaches
- Discussion of apportionment based on comparable licenses, including how to identify a comparable license
- Discussion of patent citation analysis as a trending apportionment methodology, including:
- Basic intuition and supporting economics literature
- Potential issues and recent Daubert decisions that have helps shaped this emerging methodology
Dr. Andrew Malec, Partner and Managing Director
- Overview of the Entire Market Value Rule
- Overview of the topic
- Economic theory behind the Entire Market Value Rule
- Relevant court cases addressing the Entire Market Value Rule
- (e.g., Power Integrations v. Fairchild; Lucent v. Gateway, Rite-Hite v. Kelley)
- Discussion of what the Entire Market Value Rule means for economic experts
Who Should Attend:
- Patent Lawyers and Consultants
- Patent Managers
- IP Consultants and Experts
- Patent Holders
- Corporate Counsel
Katherine H. McGuire is a Partner in the firm and Chair of the Intellectual Property practice group. She has more than 25 years of experience as a registered patent attorney and is a Partner in the firm's Business & Finance Department where she is Chair of the Intellectual Property Practice Group. She has extensive experience in all aspects of U.S. and foreign patent procurement, infringement and validity analysis, freedom-to-operate opinions, competitive surveillance and patent litigation. Her practice further includes negotiating and preparing Intellectual Property agreements including patent and know-how licensing, joint development, technical service, confidentiality and consulting agreement.
Katherine H. McGuire is a Partner in the firm and Chair of the Intellectual Property practice group. She has more …
Dr. Werner is an economist, CPA, and Senior Consultant in NERA’s Intellectual Property Practice, where he provides economic, financial, and statistical analysis to support complex litigation. Dr. Werner has applied his expertise to matters involving economic damages in a wide range of cases, including claims concerning patent infringement, false advertising, and anti-competitive conduct, among others. He has also provided expert witness testimony and published articles on the topic of damages. Prior to joining NERA, Dr. Werner served as an economist at a boutique consulting firm in the San Francisco Bay Area, and analyzed financial data while working at a Big 4 accounting firm. Dr. Werner has also presented his academic economics research at several conferences and served as a peer review referee for academic journal publications.
Dr. Werner is an economist, CPA, and Senior Consultant in NERA’s Intellectual Property Practice, where he provides economic, financial, and statistical …
Dr. Andrew M. Malec is Head of the firm’s Intellectual Property (“IP”) Practice Group and the firm’s Chief Economist. As a practicing economist, he specializes in utilizing his economics and statistical background to assist in providing economic advisory services to litigators on a complex, commercial litigation matters with a particular emphasis on automotive recalls and intellectual property litigation matters. He has significant litigation support experience in economic damage quantification, expert witness testimony, and valuation opinions. Dr. Malec has provided expert opinions and/or testified in state and federal courts and in alternative dispute resolution proceedings on a variety of litigious matters including, but not limited to, automotive recalls, breach of contract, intellectual property infringement/trade secret misappropriation, intellectual property valuation, product liability, and statistical analysis.
Dr. Andrew M. Malec is Head of the firm’s Intellectual Property (“IP”) Practice Group and the firm’s Chief Economist. As …
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Method of Presentation:
On-demand Webcast (CLE); Group-Internet Based
General knowledge of patent litigation
NY Category of CLE Credit:
Areas of Professional Practice
NASBA Field of Study:
1.5 CPE (Not eligible for QAS (On-demand) CPE credits)
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About Woods Oviatt Gilman LLP
Woods Oviatt Gilman is a full-service law firm with headquarters in Rochester, NY and offices in Buffalo, NY and Phoenix, AZ, and they are a member of the Meritas global alliance. They represent a broad spectrum of clients, from publicly traded corporations and financial institutions; from high-technology and industrial enterprises to construction firms, and more.
About NERA Economic Consulting
NERA Economic Consulting (www.nera.com) is a global firm of experts dedicated to applying economic, finance, and quantitative principles to complex business and legal challenges. For over half a century, NERA's economists have been creating strategies, studies, reports, expert testimony, and policy recommendations for government authorities and the world’s leading law firms and corporations. We bring academic rigor, objectivity, and real world industry experience to bear on issues arising from competition, regulation, public policy, strategy, finance, and litigation.
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Established in 2001, the company has locations in Detroit and Grand Rapids, Michigan. For more information visit https://www.okeefellc.com/ .