How to Prove Damages in Patent, Trademark and Copyright Cases
Intellectual property (IP) litigation presents a whole host of challenges for companies and attorneys especially in terms of estimating, calculating and proving patent damages.
This Live Webcast will teach attorneys, among other things, how to prove damages in patent, trademark and copyright cases, how to obtain more evidence, how to calculate and estimate IP damages and how to recognize and avoid common IP pitfalls. This is a must attend for all attorneys who need to be in the know with respect to intellectual property. The panel of thought leaders will be available to answer questions and illuminate the latest regulatory updates for participants.
S. Christian Platt, Partner ,
Paul Hastings LLP
- Successfully applying recent Federal Circuit decisions on patent damages:
- Proper application of the entire market rule. Laserdynamics v. Quanta
- Proving and calculating damages when considering a multi-component product accused of infringement. Id.
- Proving and calculating damages based on indirect infringement theories in light of the Federal Circuit’s per curiam decision in Akamai Technologies v. Limelight Networks.
- Meeting and exceeding the level of evidence needed to support a damages award in a patent case. Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc. and Whiteserve, LLC v. Computer Packages, Inc.
- The importance of Daubert challenges: Recent case law developments shape the appropriate scope of expert testimony to be offered.
- Oracle v. Google (N.D. Cal.). With a $6 billion damages claim, this case illustrates the complexity and potential consequences of various damages theories. After the court upheld a Daubert challenge to the plaintiff’s damages expert, it appointed an independent expert. However, the court ultimately excluded that independent expert as well on other grounds.
- Apple v. Motorola (N.D. Ill.). Sitting by designation at the district court level, Judge Richard Posner dismissed the case with prejudice after excluding the damages experts for both parties. His decision focused on the need for objective comprehensive damages evidence and found that “the parties have failed to present enough evidence to create a triable issue [on damages].”
- GenProbe v. Becton Dickinson (S.D. Cal.) – The court denied a Daubert challenge to a damages expert using the Nash bargaining solution, a mathematical proof that has been used recently in calculating reasonable royalties in patent cases. Although the court recognized that other courts (such as the Oracle court) had rejected the Nash bargaining solution, the court found that the expert’s calculations were sufficiently tied to the facts of the case.
Shawn Fox, Partner,
- Important Considerations in Analyzing Licensee and Licensor Licensing Agreements,
- Key Points to Consider in Non-Practicing Entity (“NPE”) License Agreements and Rate Cards
- Using the Analytical Method to calculate Reasonable Royalty
- Analyzing incremental economic benefit of the patented technology over the non-infringing alternative(s)
- Licensee’s Benefits Received
- Licensor’s Opportunity Costs
Aaron R. Fahrenkrog, Attorney,
Robins, Kaplan, Miller & Ciresi LLP
- What Difference Does It Make? Articulating and Developing the Benefits of the Patented Invention to Establish Damages.
- The Art of Quantification: Making Sure Your Experts Are Qualified to Quantify the Technical and Economic Benefits of the Patented Invention.
- Identifying Non-infringing Alternatives in the Prior Art and in the Present Market, and Accounting for These in the Patent Damages Analysis.
David Blackburn, Vice President,
NERA Economic Consulting
- How Do Copyright and Trademark Damages Differ from Patent Damages?
- Understanding and calculating actual harm
- Unjust enrichment, double-counting, and punting the burden of proof
- The importance of nexus
- Comparables: The Use and Misuse of Benchmark Royalty Rates
- What makes a benchmark a good or bad fit?
- How does one effectively argue for or against these benchmark rates? What is persuasive and what fails the smell test?
Daniel W. McDonald, Partner,
Merchant & Gould P.C.
- Case study on how to use recent patent damages case law to exclude a patent owner’s entire damages case, resulting in an award of $0 in damages even when infringement was found.
- Tips on presenting and fighting patent damages claims, including how to apply recent damages case law to attack inflated damages claims by NPEs (sometimes called “trolls”).
Who Should Attend:
- IP & Related Attorneys
- General Counsel
- Marketing Directors
- Brand Managers
- Marketing executives
- Advertising Professionals
- Marketing Professionals
- In-House Counsel
- Copyright Lawyers
- IP Attorneys & Consultants
- IP and Copyright Consultants
- Corporate Senior Management
S. Christian Platt is a partner in the Litigation department of Paul Hastings, where he leads the San Diego office’s intellectual property practice. Mr. Platt handles all aspects of complex intellectual property litigation, including patent infringement, trade secret and technology disputes. As a trial lawyer, Mr. Platt has successfully represented some of the world’s largest technology companies in their most complex patent disputes involving, in many instances, more than a billion dollars in potential damages. Mr. Platt routinely speaks and writes on damages issues, and received the 2011 Burton Award for Distinguished Legal Writing. Mr. Platt currently co-chairs the American Intellectual Property Law Association Subcommittee on Patent Damages.
S. Christian Platt is a partner in the Litigation department of Paul Hastings, where he leads the San Diego office’s …
Shawn Fox, CPA/ABV, ASA, CFA has more than 16 years of experience in managing and directing the analysis and forensic investigative efforts related to complex commercial litigation, bankruptcy litigation, valuation disputes, intellectual property infringement litigation, lost profits, commercial damages, insurance coverage disputes, and business disputes. Shawn has significant experience preparing Rule 26 expert reports, assisting counsel and clients in all phase of litigation (including case assessments, discovery, document review, damages analysis, demonstrative exhibits), and testifying as an expert witness.
He has testified on numerous matters at deposition, trial, and arbitration as an expert and has served as a court-appointed receiver. Shawn has worked on significant high stakes litigation matters for organizations in a variety of industries.
Shawn Fox, CPA/ABV, ASA, CFA has more than 16 years of experience in managing and directing the analysis and forensic …
Aaron Fahrenkrog is a trial lawyer who litigates patent cases because he enjoys learning about technology and its impact on the business of his clients and their competitors. Mr. Fahrenkrog studied chemical engineering and has a proficiency in learning complex technology in a range of areas including circuit architecture and semiconductor fabrication. He has participated in preparing damage models exceeding a billion dollars on behalf of plaintiffs and has recovered, with a team, hundreds of millions of dollars in patent litigation at a ten-to-one return on investment. He also represents patent infringement defendants and applies the same principles to minimize potential damage awards.
Aaron Fahrenkrog is a trial lawyer who litigates patent cases because he enjoys learning about technology and its impact on …
Dr. Blackburn’s areas of expertise include intellectual property, antitrust and competition policy, and econometric analysis. In his IP practice, he has conducted research and prepared expert reports for patent, trademark, and copyright infringement disputes and false and misleading advertising cases, as well as conducted analyses related to the issues of commercial success and preliminary and permanent injunctions. In his antitrust and commercial damages practices, he has assessed liability and damages in disputes related to, for example, tying, price discrimination, monopolization, and breaches of contract. He has also assessed the competitive effects of mergers and acquisitions, as well as issues relating to impact and damages in class action litigation. Dr. Blackburn has written and spoken publically on a number of these issues.
his antitrust and IP practices, Dr. Blackburn has experience critiquing damage models, and designing and providing economic analysis. His experience covers a variety of industries, including computer software, medical devices, pharmaceuticals, natural resources, industrial goods and chemicals, media, consumer products, and financial services, among others.
Dr. Blackburn’s areas of expertise include intellectual property, antitrust and competition policy, and econometric analysis. In his IP practice, he …
In addition to being a former litigation group chair and a member of Merchant & Gould’s Executive Committee, Dan McDonald is a seasoned litigator and trial lawyer, representing clients in patent litigation, copyright litigation, trademark/trade dress litigation, and trade secret litigation with an emphasis on electronics, software, and Internet issues. He has represented clients ranging from individual inventors to the British Post Office, in cases involving a broad spectrum of technologies from software, digital imaging, telecommunications, and electronics to apparel, aerospace, printing, and materials handling.
Dan has successfully blocked a patent owner’s claim for over $35 million in patent infringement damages, resulting in an award of $0 affirmed on appeal despite a finding of infringement. The patent owner had previously received over $50 million in damage awards and settlements from other accused infringers. He has obtained an “exceptional” case finding after trying a patent case to verdict, obtaining attorneys’ fees and punitive damages affirmed on appeal. He has also successfully protected a multi-million dollar unfair competition damage award to against post-trial attacks where the award exceeded the amount requested from the jury and the amount stated in expert reports. And, he secured a multi-million dollar payment from a patent owner to a client accused of infringement to settle claims of tortious interference, unfair competition, and inequitable conduct. His book, Protecting Your Company Against the New Era of Patent Infringement Suits, is available for download at amazon.com
In addition to being a former litigation group chair and a member of Merchant & Gould’s Executive Committee, Dan McDonald …
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About Paul Hastings LLP
Paul Hastings is a leading global law firm with offices throughout Asia, Europe, and the United States. The firm is ranked second on The American Lawyer’s A-List of the most successful law firms in America. Their lawyers provide innovative legal solutions to many of the world’s top financial institutions and Fortune 500 companies. The firm offers a complete portfolio of services to support clients’ complex, often mission-critical needs – from structuring first-of-their-kind transactions to resolving complicated disputes to providing the savvy legal counsel that keeps business moving forward. Drawing on the firm’s dynamic, collaborative, and entrepreneurial culture, their lawyers work across practices, offices, and borders to provide innovative, seamless legal counsel. Please visit www.paulhastings.com for more information.
About McGladrey LLP
McGladrey LLP is the largest U.S. provider of assurance, tax and consulting services focused on the middle market, with more than 6,500 professionals and associates in 75 offices nationwide. McGladrey is a licensed CPA firm, and is a member of RSM International, the sixth largest global network of independent accounting, tax and consulting firms. For more information join our Facebook fan page at McGladrey News, follow us on Twitter @McGladrey, connect with us on LinkedIn, and/or on YouTube.
About Robins, Kaplan, Miller & Ciresi LLP
Robins, Kaplan, Miller & Ciresi L.L.P. is a national litigation firm whose clients include Fortune 500 corporations, emerging markets companies, entrepreneurs, and individuals as both plaintiffs and defendants. The firm engages in high-stakes, complex litigation with significant bottom-line implications for its clients.
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 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.
About Merchant & Gould P.C.
Merchant & Gould has engaged exclusively in the practice of intellectual property law, including patent, trademark, copyright, unfair competition, trade secret, advertising and computer law, and related litigation including both trials and appeals, for 110 years.
With offices in Atlanta, Denver, Knoxville, Madison, Minneapolis, New York City, Seattle and Washington DC, and more than 100 practicing attorneys, the firm is one of the largest intellectual property law firms in the United States. Typically, our attorneys are admitted to practice in the state where they reside and nearly all are admitted to practice before the United States Patent and Trademark Office (USPTO). We are consistently ranked as a top patent, trademark and copyright firm both in the U.S. and globally. We value our client relationships, and actively partner with clients to understand, build, and implement technology and intellectual property driven strategies that add bottom-line business value. The depth and breadth of our legal and technical knowledge, coupled with years of experience in helping clients create and strategically manage global intellectual property assets, uniquely positions us to be a valued member of the client team.