How to Prove Reasonable Royalty in Patent Damages
This webcast is designed for attorneys, in-house counsel and other professionals involved with patent transactions and patent litigation and will provide fundamental information on how to successfully prove reasonable royalty in patent damages.
Our panel of key thought leaders and practitioners will present their findings and best practices in calculating reasonable royalty and will also discuss the following:
• Decisions on recent patent damages cases and their impact to the industry
• Analysis and usage of Georgia-Pacific and Entire Market Value Rule
• Examining 3-key elements impacted by the recent Federal Circuit rulings, namely:
– the use of technology agreements;
– profit splitting; and
– the application of the entire market value rule
• Up to the minute regulatory changes
Join us in this two-hour LIVE webcast and go beyond the basic mechanics. Hear it directly from our speakers and raise your questions during the Q&A session.
John B. Scherling, Partner,
Sughrue Mion PLLC
- earlier disclosure of damages opinions
- the continued vitality of Georgia-Pacific
- “disabling” infirmities in reports v. “weaknesses” (Judge Posner)
- “do-overs” if motion in limine granted
- court-retained damages experts
- discoverability/admissibility of negotiations re comparable licenses
- post-judgment royalties
- proving entire market value rule
- the importance of and proving non-infringing alternatives
- core documents to request/collect for proving damages
Krista F. Holt, President and CEO,
- Motorola v. Apple
- Criteria for experts
- Need for substantiation of damages
- Use of Surveys in Patent Cases
- Usage Surveys
- Demand Surveys
- Conjoint Surveys
- Case law
Steven Yovits, Partner,
- Noninfringing alternatives as a cap on damages (or not)
- Issues of proof relating to noninfringing alternatives
- Accrual of damages prior to issuance of patent
Thomas W. Jenkins, Partner,
- Issues related to use of comparable licenses in a reasonable royalty analysis
- Marking requirements for damages
- Notice requirements for damages
DeForest McDuff, Ph.D., Vice President,
Quant Econnomics, Inc.
- Profit splitting
- Nash bargaining as the “50% rule”
- Oracle v. Google
- Recent expert exclusions
- Entire market value rule
- Economic aspects versus legal aspects
- Drivers of demand versus contributors of demand
- Scientific analysis
- Traditional approach via Georgia-Pacific factors
- Having a defensible, replicable methodology
- Tying the analysis to case-specific facts
Who Should Attend:
- IP & Related Attorneys
– General Counsel
– In-House Counsel
– Copyright Lawyers
– IP Attorneys & Consultants
– IP and Copyright Consultants
– Corporate Senior Management
– Marketing Directors
– Brand Managers
– Marketing executives
– Advertising Professionals
– Marketing Professionals
John B. Scherling is a Partner in the San Diego office of Sughrue Mion, PLLC, focusing on litigation and resolution of intellectual property disputes for Sughrue’s domestic and international clients. He previously served as an Assistant United States Attorney in the Southern District of California, where he handled all aspects of litigation including jury trials, bench trials and appeals in the United States Court of Appeals and received numerous awards from the United States Department of Justice and the Department of State for his successful litigation on behalf of the United States. Mr. Scherling received his J.D. from Vanderbilt University, where he was Order of the Coif and Associate Articles Editor of the Vanderbilt Law Review. He has written and spoken extensively on a variety of litigation and patent topics, including patent damages
John B. Scherling is a Partner in the San Diego office of Sughrue Mion, PLLC, focusing on litigation and resolution …
Krista F. Holt is the President and CEO of GreatBridge Consulting. Ms. Holt has testified on lost profits, determination of reasonable royalties, accounting of defendant’s profits, and intellectual property valuations in patent, trademark, trade secret, copyright, false advertising, antitrust, and breach of contract cases. She has testified at trial in both Federal and State courts.
Ms. Holt previously served as Vice President at The Kenrich Group, a national business and litigation consulting firm, where she founded and managed the Intellectual Property practice. Prior to that, Ms. Holt founded and led the Washington, D.C. Expert Testimony Practice and National Survey Practice as a Managing Director for Ocean Tomo, a firm providing financial products and services related to intellectual property.
Prior to its acquisition by Ocean Tomo, Ms. Holt was a Senior Consultant for Tait Advisory Services’ Intellectual Property Practice. She also served as Senior Financial Officer of a manufacturing wholesaler and an engineering firm, and as the Director of Marketing at a prominent marketing firm. Ms. Holt holds an MBA from the University of Louisville and a BA from Wake Forest University.
Krista F. Holt is the President and CEO of GreatBridge Consulting. Ms. Holt has testified on lost profits, determination of …
Steven Yovits is a partner in Mayer Brown’s Intellectual Property group. His practice focuses on patent litigation and counseling. Mr. Yovits holds a master’s degree in electrical engineering and has litigated patent cases involving computer software, Internet applications, business methods, computer hardware, electronics, telephony and wireless technology. He has also counseled clients regarding strategic usage of patent portfolios, threats of litigation, licensing, trade secrets and other intellectual property issues. In addition, Mr. Yovits has extensive experience in the area of patent damages.
For several years before attending law school, Mr. Yovits worked as an electrical engineer for Westinghouse and as a manufacturing engineer for Kraft Foods.
Mr. Yovits is registered to practice before the United States Patent and Trademark Office.
Steven Yovits is a partner in Mayer Brown’s Intellectual Property group. His practice focuses on patent litigation and counseling. Mr. …
Tom Jenkins is a partner in the Intellectual Property practice at Mayer Brown and is based in the firm’s Chicago office. He works primarily in the field of patent litigation and counseling.
Mr. Jenkins has litigated patents across a broad range of technologies, including chemical, biotech, medical device and pharmaceutical. Mr. Jenkins also has extensive experience in the area of patent damages.
Tom Jenkins is a partner in the Intellectual Property practice at Mayer Brown and is based in the firm’s Chicago …
DeForest McDuff, Ph.D. is an expert in economics, finance, and statistics and applies his skills to economic damages analysis and expert witness services. Dr. McDuff has expertise in the economics of intellectual property and technology, and his work focuses on analyses relating to lost profits, reasonable royalty, unjust enrichment, unfair competition, commercial success, long-felt need and irreparable harm. Dr. McDuff has provided economic consulting services in a variety of projects, relating to pharmaceuticals, biotechnology, diagnostics, medical devices, semiconductors, computers, software, and telecommunications.
Dr. McDuff earned his B.A. in economics and B.S. in mathematics from the University of Maryland at College Park, and his M.A. and Ph.D. in economics from Princeton University. While at Princeton, he was awarded a National Science Foundation Graduate Research Fellowship to fund his academic research. Prior to joining Quant Economics, Dr. McDuff was a trading analyst for JP Morgan Chase.
DeForest McDuff, Ph.D. is an expert in economics, finance, and statistics and applies his skills to economic damages analysis and …
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About Sughrue Mion PLLC
For 50 years, Sughrue Mion, PLLC has been dedicated to protecting the rights of inventors. Sughrue’s practice is focused solely on intellectual property law, and the firm has helped its clients secure more patents than any other U.S. patent firm. Many of Sughrue’s attorneys have worked as Examiners in the U.S. Patent and Trademark Office (USPTO), and more than 95% of the firm’s attorneys are licensed to practice before the USPTO. Sughrue brings unmatched experience in patent interference proceedings and Post Grant Review, including ex parte and inter partes reexamination proceedings. This expertise provides the firm’s clients with a clear advantage navigating the new America Invents Act (AIA) regulations. In addition to their legal expertise, Sughrue’s attorneys have technical and scientific backgrounds ranging from biosimilars to nanotechnology, which allow for a true understanding of its clients’ businesses and business challenges. For more information, please visitwww.sughrue.com
GreatBridge is a national consulting firm specializing in litigation, valuation and survey services for matters involving intellectual property, antitrust and commercial damages. GreatBridge’s experts testify on economic damages, valuation, licensing and surveys. We also conduct asset and enterprise valuations and provide business consulting.
Our professionals provide expert services for complex commercial litigation involving claims of intellectual property infringement, false advertising, breach of contract, unfair competition and failure to pay royalties. They also provide economic, financial, accounting, statistical, marketing and survey consulting on a wide range of intellectual property matters, including the valuation and licensing of patents, trade secrets, trademarks and copyrights. Additionally, GreatBridge designs surveys that provide answers to a variety of issues in litigation, including basis of demand, inducement to infringe, extent of allegedly infringing use, class certification, trademark confusion and secondary meaning.
GreatBridge Consulting is led by a close-knit and highly experienced management team of expert litigation and financial consultants. Under their direction, GreatBridge remains committed to our core values of excellence and efficiency.
About Mayer Brown
Mayer Brown is a global legal services organization advising clients across the Americas, Asia and Europe. With a presence in the world’s leading markets, the firm offers clients access to local market knowledge combined with global reach. Mayer Brown is noted for its commitment to client service and its ability to assist clients with their most complex and demanding legal and business challenges worldwide. The firm serves many of the world’s largest companies, including a significant proportion of the Fortune 100, FTSE 100, DAX and Hang Seng Index companies and more than half of the world’s largest banks. Mayer Brown provides legal services in such areas as banking and finance; corporate and securities; litigation and dispute resolution; antitrust and competition; US Supreme Court and appellate matters; employment and benefits; environmental; financial services regulatory & enforcement; government and global trade; intellectual property; real estate; tax; restructuring, bankruptcy and insolvency; and wealth management.
About Quant Economics, Inc.
Quant Economics is a professional services firm that leverages economics, finance, and statistics for strategic decision making, economic damages analysis, and expert witness services. The firm solves challenging problems with intense scrutiny, innovative research, and precise analysis—always maintaining core integrity and creativity. The Quant Economics team consists of talented individuals with a shared commitment to research and analysis that consistently produce reliable results. Quant professionals possess a rare combination of exceptional analytical skills and superior quantitative training. They apply these talents to each and every project the firm conducts. Quant Economics provides economic consulting services in intellectual property, competition, labor, and finance. For more information, please visit www.quanteconomics.com