Determining Damages in Patent Infringement Cases: A 2017 Perspective
Over the past years, the Federal Circuit has demonstrated an increased level of scrutiny in determining reasonable royalty damages in patent infringement cases. Implementers and inventors must anticipate changes in case law at every stage of patent litigation, from structuring licensing negotiations, to developing comprehensive damage discovery strategies, to building reasonable royalty damages analyses that are consistent with sound economics and current case law.
In this two-hour LIVE Webcast, a panel of distinguished professionals and thought leaders organized by The Knowledge Group will provide the audience with an in-depth discussion of the fundamentals, current litigation updates, and best practices in Determining Damages in Patent Infringement Cases. Speakers will also offer best practices in ensuring compliance with patent laws.
Key topics include:
- Patent Infringement Damages: An Overview
- Statutory Limitations on Damages
- Current Cases and Court Decisions
- Stryker Corp. v. Zimmer, Inc.
- Halo Electronics, Inc. v. Pulse Electronics, Inc.
- Determining Reasonable Royalty Damages in Patent Infringement Cases
- Developing an Apportionment Analysis that is Consistent with Case Law and Sound Economics
- Recent Litigation Trends
- New Regulatory Developments
- Best Compliance Strategies
Thomas M. Dunlap, Partner
Dunlap Bennett & Ludwig PLLC
- Patent Damages 101 – overview of reasonable royalty and lost profits.
- Georgia-Pacific v. U.S. Plywood Corp.—still good law and still appears in every damages brief
- Patent cases involve complex and multi-phased damages reports and rebuttals, often by more than one expert.
- Preliminary Damages Hearings – required by some federal courts, such as the Eastern District of Texas, very early in the case timeline, even before discovery, so the parties can lay their proverbial cards on the table.
Mario A. Lopez, Partner
- Economic Framework for Determining Damages
- can be established at early stages of the case but must be flexible enough to arrive at the “correct” damages number as the facts develop.
- can help the court and the parties determine what information is relevant to discovery and what data they need to collect.
- can help the parties better assess their exposure.
- Damages Approaches for Reasonable Royalties
- benefits and potential limitations of the GP Factors;
- economic approach to the hypothetical negotiation (what information is needed to establish the incremental value of the patented technology to the licensee, determining the bargaining range and the division of the gains to trade) and
- apportionment (economic issues with the EMVR, alternative forms of apportionment).
Gregory Smith, Managing Director
Berkeley Research Group, LLC
- General discussion of apportionment and Federal Circuit cases bearing on this issue.
- What are the implications for the royalty base and the royalty rate? Does it matter where the apportionment is actually done?
- What are the specific apportionment issues relating to Standard Essential Patents? Several decisions bearing on reasonable and non-discriminatory royalties have broad implications for SEP holders.
Nicole N. Zakowicz, CPA/CFF, Director
- The importance of hiring an expert in IP Litigation
- Law provides framework, but need expert opinion.
- Addresses damages, industry, and/or causation issues
- Litigation strategy for settlement/trial
- Testifying vs. consulting expert.
- Effective use of financial experts
- Hire early
- Assist with discovery requests
- Assists with fact witness depositions
- Preparation of trial demonstratives/exhibits
- Pitfalls to avoid
- Waiting too long to hire an expert
- Continually working with the same expert
- Not hiring an expert
- Managing the team
Who Should Attend:
- IP Attorneys & Consultants
- Patent Attorneys
- Patent Litigators
- In-House Counsel
- IP Consultants and Experts
- Patent Owners
- Patent Licensing Attorneys
- Other Related/Interested Professionals
Dr. Mario A. Lopez is an expert in the application of rigorous economic methods in intellectual property issues, analyzing reasonable royalty, lost profits, and reasonable and non‐discriminatory (RAND) issues in patent infringement disputes.
Dr. Lopez has been involved in some of the key RAND royalty cases in the U.S., including Ericsson v. D‐Link and Innovatio, as well as numerous cases for handset manufacturers analyzing worldwide RAND royalty rates for LTE and other standards. He regularly consults in licensing negotiations over RAND royalties for both manufacturers and standard-essential patent (SEP) holders. Dr. Lopez co‐authored a paper published in Antitrust outlining methodologies for determining RAND royalty rates.
Dr. Mario A. Lopez is an expert in the application of rigorous economic methods in intellectual property issues, analyzing reasonable …
Tom Dunlap is a partner at Dunlap Bennett & Ludwig where he focuses on intellectual property issues including transactions and disputes. Tom has authored and taught numerous classes for attorneys and businesses, most recently Patent Damages: The Rise of the Footprint Approach (2016) and the revised edition (2016) of the Virginia Lawyer’s Deskbook, Chapter 8 – Intellectual Property. Tom holds a JD, MBA and MS in biotechnology and is a Certified Patent Valuation Expert. Tom has also been a commercial banker, an Army officer (Armor), a special prosecutor, and served as co-chair of an American Bar Association subcommittee. He is formerly president of the local (Loudoun County) bar association. Most recently Tom was again named a SuperLawyer (2016) for intellectual property. The firm has for the third year in a row been named a “Best Law Firm in Virginia” by Virginia Living and the PCT Global Law 2016 Intellectual Property Firm. Outside of his legal practice Tom is a rescue diver, instrument pilot, a member of MENSA, and participates in marathons and triathlons. Tom also founded the biotechnology company Ceres Nanosciences Inc.
Tom Dunlap is a partner at Dunlap Bennett & Ludwig where he focuses on intellectual property issues including transactions and …
Nicole Zakowicz is a Director in the Financial Advisory Services Practice Group. She has over 15 years of experience providing financial consulting and forensic accounting services to attorneys, public and private corporations, insurance companies, and governmental agencies.
Nicole has provided consulting and litigation services for cases involving complex commercial damages, lost profits analyses, intellectual property infringements, economic damage calculations, and business interruption calculations. She has provided consulting and litigation services for clients in many industries, including pharmaceutical, medical device, healthcare, technology, manufacturing, consumer goods, and insurance.
Prior to joining EisnerAmper, Nicole worked for an international audit, tax and advisory firm and a regional accounting and consulting firm. She has presented seminars on topics including lost profits damages and patent infringement damages.
Nicole Zakowicz is a Director in the Financial Advisory Services Practice Group. She has over 15 years of experience providing …
Greg Smith regularly assists clients by providing rigorous financial and economic analyses relating to licensing programs and the valuation of intellectual property. He conducts these analyses both within and outside the context of litigation. Mr. Smith has performed such studies of technologies from a wide range of industries, including computer equipment and software, telecommunications, healthcare, automotive, and retail and consumer products. He has consulted with several intellectual property owners in the pre-litigation stage to estimate potential recoveries from licensing/enforcement programs. In addition, Mr. Smith has testified regarding intellectual property damages, including appropriate royalty rates for the licensing of such assets in federal and state court proceedings.
Greg Smith regularly assists clients by providing rigorous financial and economic analyses relating to licensing programs and the valuation of …
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Method of Presentation:
Experience in patent law
NASBA Field of Study:
Business Law - Technical
NY Category of CLE Credit:
Areas of Professional Practice
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About Edgeworth Economics
Edgeworth Economics is an economic, financial, and quantitative consulting firm. They provide expert testimony and litigation consulting in addition to business consulting and data management services. Their clients include law firms, corporations, and government agencies. Their professionals include PhD economists, statisticians, and business and human resources professionals who enjoy solving the practical problems their clients face. Edgeworth uses sophisticated analyses and techniques to provide their clients with solutions delivered in a simple and straightforward manner. Their data-driven approach, responsive culture, and recognition of budgeting and cost containment are just a few of the reasons why leading attorneys rely on their expert witnesses.
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.
About EisnerAmper LLP
EisnerAmper LLP is a leading full-service advisory and accounting firm, and is among the largest in the United States. We provide audit, accounting, and tax services, as well as corporate finance, internal audit and risk management, litigation services, consulting, private business services, employee benefit plan audits, forensic accounting, and other professional advisory services to a broad range of clients across many industries. We work with high net worth individuals, family offices, closely held businesses, start-ups, middle market and Fortune 500 companies.
About Berkeley Research Group, LLC
Berkeley Research Group, LLC is a leading global strategic advisory and expert consulting firm that provides independent advice, investigations, data analytics, authoritative studies, expert testimony, and regulatory and dispute consulting to Fortune 500 corporations, government agencies, major law firms, and regulatory bodies around the world. BRG experts and consultants combine intellectual rigor with practical, real-world experience and an in-depth understanding of industries and markets. Their expertise spans economics and finance, data analytics and statistics, and public policy in many of the major sectors of our economy, including healthcare, banking, information technology, energy, construction, and real estate. BRG is headquartered in Emeryville, California, with offices across the United States and in Asia, Australia, Canada, Latin America, the Middle East, and the United Kingdom.