Apportionment and the Entire Fair Market Value Rule (EMVR) in Patent Damages: Trends, Methods and Best Practices in 2019
Under patent infringement, apportionment and the Entire Market Value Rule (“EMVR”) are important considerations when quantifying damages, both in reasonable royalty and lost profits damages contexts. The Federal Circuit’s decision in Power Integrations v. Fairchild Semiconductor International explained that “[i]f the product has other valuable features that also contribute to driving consumer demand—patented or unpatented—then the damages for patent infringement must be apportioned to reflect only the value of the patented feature. This is so whenever the claimed feature does not define the entirety of the commercial product.”
Given the exceedingly sophisticated technological nature of certain products addressed in patent infringement cases, companies and their counsel need to remain informed of the manner in which the courts are addressing the issues of apportionment and the EMVR.
Join a panel of key thought leaders and professionals assembled by The Knowledge Group as they provide the audience with an overview of the objective of apportionment, a historical perspective on various apportionment methods that have been applied, and observations from selected court cases addressing apportionment and the EMVR.
Some of the key topics that will be covered in this course include:
- The objective of apportionment and why it is performed
- Circumstances under which apportionment is required and under which the EMVR is permitted
- Various methods that have employed to apportion value
- Considerations regarding comparable patent licenses in apportioning value
- Observations taken from selected patent cases addressing apportionment and/or the EMVR
Armando Chavez, Director
- Overview on the objective of apportionment, and why it is performed, in patent damages
- Summary regarding when apportionment is performed, and the various approaches that have been used to apportion value
- Highlights from example patent infringement cases addressing apportionment issues:
- Bayer Healthcare LLC v. Baxalta Inc., et al.
- Red Rock Analytics, LLC v. Samsung Electronics Co., Ltd., et. al.
- Zimmer Surgical, Inc. and Dornoch Medical Systems, Inc. v. Stryker Corporation
Dr. Sean Sheridan, Principal
Charles River Associates
Discussion of contexts where royalty base apportionment may not be necessary:
- When the entire market value rule is satisfied- discussion of Power Integrations, Inc. v. Fairchild Semiconductor (Fed. Circ. 2018)
- When the damages model uses the same royalty base as comparable licenses- discussion of CSIRO v. Cisco Sys., Inc. (Fed. Cir. 2015)
- When the scope of the asserted claims cover the entire end product- discussion of AstraZeneca AB v. Apotex Corp. (Fed. Cir. 2015) and Exmark Mfg. Co. v. Briggs & Stratton Power Prods. Grp, (Fed. Cir. 2018)
Deepa Sundararaman, Associate Director
Berkeley Research Group
- Addressing the use of comparable licenses in apportionment - technological and economic comparability
- Overview of Daubert exclusions to damages experts on comparability of licenses
- Explanation through caselaw (Daubert exclusion) of use of broad comparisons from third party sources
- Discussion of a recent Daubert exclusion of the use of jury verdict as a comparable transaction and the effect of the exclusion on other Daubert challenges
Dr. Claire Chunying Xie, Senior Consultant
NERA Economic Consulting
Using a natural experiment to measure the incremental value of a patented feature
- If a new product is an existing product plus the patented feature, then we may be able to use the introduction of that new product as a natural experiment to quantify the incremental value of the patented feature
- Walk through an example to demonstrate the concept/method (e.g., line extension in pharmaceuticals)
- Issues that may come up in practice
Who Should Attend:
- Patent Attorneys
- Patent Litigators
- Intellectual Property Attorneys
- In-House Counsel
- IP Consultants and Experts
- Patent Owners
- Patent Licensing Attorneys
- Other Related/Interested Professionals
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 …
Dr. Sheridan is a principal in the Intellectual Property Practice at Charles River Associates. He has over a decade of experience working with various aspects of the intellectual property (IP) value chain including the development, valuation, commercialization, and strategic management of IP. He has provided financial consulting services for a variety of purposes including intellectual property related litigation, transaction due diligence, license negotiations and strategic decision-making. He has also negotiated numerous licenses and other agreements with companies ranging from Fortune 500 firms to start-ups. Dr. Sheridan’s litigation experience includes analysis of damages related to patent infringement and breach of contract, analysis of commercial success and analysis of domestic industry in the context of Section 337 investigations.
Dr. Sheridan is a principal in the Intellectual Property Practice at Charles River Associates. He has over a decade of …
Deepa Sundararaman has extensive experience in the area of intellectual property, performing complex financial and accounting analyses in quantification of damages and business valuations. Her experience includes disputes brought to the federal courts as well as matters brought before the United States International Trade Commission.
Ms. Sundararaman’s experience covers a range disputes involving intellectual property, including allegations of patent, trademark infringement and misappropriation of trade secrets. She has evaluated and quantified damages involving lost profits, reasonable royalties and unjust enrichment. At the ITC, she has been involved in Section 337 investigations involving economic and financial issues related to public interest, domestic industry, commercial success, remedy, cease and desist, and calculation of the appropriate bond rate. Ms. Sundararaman’s experience spans a wide range of industries including semiconductors, pharmaceutical products, medical devices, toys, dental products and, snowmobile technology.
Ms. Sundararaman is a Certified Public Accountant (CPA), Certified Valuation Analyst (CVA), and holds an MBA from the University of Maryland, College Park. She has over 17 years of experience providing accounting and consulting services to corporations, law firms and government agencies. Over the years, in addition to matters involving intellectual property, her engagements have included other complex commercial litigation at numerous federal district courts, business valuations, royalty investigations, bankruptcy investigations, regulatory compliance and statutory audits.
Deepa Sundararaman has extensive experience in the area of intellectual property, performing complex financial and accounting analyses in quantification of …
Dr. Claire Chunying Xie is a Senior Consultant at NERA, where she conducts economic analysis in the areas of antitrust, intellectual property, and commercial damages. In antitrust matters, Dr. Xie has evaluated the competitive effects of mergers and acquisitions, and has analyzed antitrust claims and damages in cases involving alleged monopolization and price fixing behavior. Her project experience in antitrust matters spans a wide variety of industries including agriculture, data management, finance, fuel retailing, pharmaceuticals, and telecommunications. In the area of intellectual property, Dr. Xie has calculated lost profit and reasonable royalty damages in cases involving patent infringement and breach of contract allegations in industries such as apparel, credit cards, and pharmaceuticals.
Dr. Claire Chunying Xie is a Senior Consultant at NERA, where she conducts economic analysis in the areas of antitrust, …
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Method Of Presentation:
Experience in patent litigation
NY Category of CLE Credit:
Areas of Professional Practice
NASBA Field of Study:
Business Law - Technical
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About Echelon Analytics
Echelon Analytics is a nationally recognized leader in economic and financial analysis, expert witness services, financial and forensic investigations, and business consulting. From its offices in Dallas, Houston, Salt Lake City and Los Angeles, the firm works with law firms, corporations, government entities, and private individuals across the United States and internationally in matters involving commercial damages, intellectual property disputes and valuation, and banking and finance litigation.
Echelon assists clients involved in commercial disputes and litigation, as well as those needing help assessing value and risk in the context of pre-litigation, mergers and acquisitions, joint ventures, licensing, and sales. Echelon’s practitioners deliver complex information in an organized and easy-understand way for the users of the information to make important decisions, such as juries, investors, and government agencies. Learn more about Echelon at ea-us.com.
About Charles River Associates
Charles River Associates is a leading global consulting firm that offers economic, financial, and strategic expertise to major law firms, corporations, accounting firms, and governments around the world. With proven skills in complex cases and exceptional strength in analytics, CRA provides astute guidance to clients in thousands of successful engagements. CRA offers litigation and regulatory support, business strategy and planning, market and demand forecasting, policy analysis, and risk management consulting.
Headquartered in Boston, the firm has offices internationally.
About Berkeley Research Group
Berkeley Research Group, LLC (BRG) is a global consulting firm that helps leading organizations advance in three key areas: disputes and investigations, corporate finance, and strategy and operations. 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.
BRG professionals have experience across a range of industries and have deep knowledge of economic, financial, and technical analysis. Teams include former senior transaction, IP, and business development executives from major companies; economists; attorneys; CPAs; former partners at Big Four accounting firms; valuation experts; and experts in financial management and operations across many industries. BRG professionals have worked on some of the largest patent infringement, trade secret misappropriation, copyright infringement, trademark, transaction dispute, and restructuring cases in U.S. courts and abroad, in federal regulatory matters, and in arbitration proceedings. They have worked on matters including claims of irreparable harm, taxation disputes, regulatory compliance challenges, and international trade issues. BRG experts have led the licensing of patents and other technologies throughout the world, managed major patent and IP litigation, created IP–focused companies, and contributed to major financial transactions involving intellectual property. A number of BRG experts have been recognized as top experts in the world by organizations such as the Intellectual Property Owners Association, IAM and the Licensing Executives Society.
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.