Patent Infringement: Proving Royalty Damages Under Increased Federal and District Court Scrutiny: A 2015 Update
The U.S. Court of Appeals for the Federal Circuit traditionally affords litigants substantial leeway in applying damages for patent infringement, provided that it is based upon reliable evidence and direct cause of loss.
Recently, the Federal Circuit has re-examined the methods and evidence used to prove reasonable royalty damages. District courts have begun to look more carefully and favorably at Daubert challenges. The Federal Circuit has issued a number of decisions addressing apportioning of value between patented and un-patented aspects of a product. In the recent case of VirnetX, Inc. v. Cisco Systems, Inc., the court stated that a royalty base may need to be apportioned beyond the ‘smallest salable unit’ in certain circumstances. In December 2014 in Ericsson, Inc. v. D-Link Sys., Inc., the Federal Circuit clarified the role of the entire market value rule in defining an appropriate royalty base when an accused product has both patented and non-patented features.
These cases will cause many litigants to re-evaluate their approach to proving damages. But, the cases have created potential pitfalls that counsel should be aware of when developing damages cases. Such issues include, the entire market value rule, problems when multiple patents are asserted, FRAND royalty rates, survey evidence, specific evidence for proving damages, and the use of comparable licenses and benchmarks. It is important to understand the changes that affect establishment of reasonable royalty damages and the effective methods for avoiding challenges, not only in the district court, but in reversal by the Federal Circuit.
In a two hour, LIVE Webcast, a panel of thought leaders and practitioners assembled by The Knowledge Group will discuss the latest, significant developments regarding Federal Circuit Decision’s on Patent Infringement: Proving Royalty Damages under Increased Federal and District Court Scrutiny. The speakers will also offer best practices and strategies that a patent holder should know when pursuing Patent Infringement Litigation.
Key topics include:
- Establishing Royalty Damages in Patent Infringement
- Proving Demand, Use, & Apportionment
- Proving Royalty Damages (Single & Multiple Patents)
- Proving or Disproving EMVR & Estimating Value
- Limitation of Damages
- Recent Patent Infringement Cases
- Ericsson, Inc. v. D-Link
- VirnetX, Inc. v. Cisco
- Apple Inc. v. Motorola Inc.
- SSL Services, LLC v. Citrix Sys., Inc.
- Aqua Shield v. Inter Pool Cover Team
- Patent Infringement Litigation Strategies
- Best Practices
- Litigation and Compliance Risk
Joel Wacek, Principal
Hoffman Alvary & Company
- Brief Background on Entire Market Value Rule
- Ericsson v. D-Link
- Application of the “Legal Rule” and “Evidentiary Principle” of the EMVR
Danielle Anne Phillip, Shareholder
Brinks Gilson & Lione
- Demand use and apportionment
- Best practices
Mark W. Pedigo, CPA/ABV/CFF, Advisory Senior Principal
Crowe GHP Horwath
- Aqua Shield case and Implications - projection versus actual in royalty terms
- Book of Wisdom and Projections
Philip Segrest, Partner
Husch Blackwell LLP
- Apple v. Motorola, concerning smart phone touchscreens
- AstraZenaca v. Apotex, concerning Prilosec.
Who Should Attend:
- Intellectual Property Lawyers
- Patent Licensing Attorneys
- Patent Attorneys
- IP Counsel
- Patent Litigators
- Legal and Compliance Executives
- Corporate Counsel
- Damages Experts
- Commercial Litigators
- Other Related/Interested Professionals
Philip is an experienced litigator in patent and intellectual property matters in a wide variety of technologies. Philip clerked at the United States Court of Appeals for the Federal Circuit and United States Court of Federal Claims before entering private practice. He has particular depth of experience managing pharmaceutical patent litigation under Abbreviated New Drug Act (ANDA), helping generic manufacturers bring their products to market at affordable, competitive prices. Philip also has extensive litigation and patent prosecution experience in information and computer related technologies, including data compression, e-commerce systems, business methods and other technologies in electrical, mechanical and chemical technical arts. His litigation and counseling experience also includes general commercial litigation, government contracts, and general practice matters. Philip has also been a speaker and author on numerous occasions for various organizations and groups, and this fall will serve as an Adjunct Professor at DePaul Law School in Chicago, Illinois, teaching Patent Law.
Philip is an experienced litigator in patent and intellectual property matters in a wide variety of technologies. Philip clerked at …
Danielle Anne Phillip is a shareholder in Brinks Gilson & Lione’s Litigation Practice Group with hands-on training in the biological sciences and 14 years of legal experience. Her practice focuses on patent, trademark and copyright litigation in the federal district and appellate courts. Her litigation experience includes advising clients concerning the protection and enforcement of their intellectual property rights, managing litigations at all stages, assisting at trial, and providing analysis and counsel on litigation risk and strategy, damages and settlement. Danielle is an adjunct professor at the John Marshall Law School where she co-teaches IP Litigation. She is a graduate of Harvard University and received her J.D., cum laude, from the University of Michigan Law School.
Danielle Anne Phillip is a shareholder in Brinks Gilson & Lione’s Litigation Practice Group with hands-on training in the biological …
Mr. Pedigo is a Senior Principal in the Forensic and Litigation Consulting and Valuation and Corporate Finance practices of Crowe GHP Horwath. He has over 30 years of experience in economic damages analysis, valuation, strategic consulting, auditing, and financial analysis. Mr. Pedigo provides consulting, valuation and expert testimony services to counsel on behalf of plaintiffs and defendants involved in commercial disputes. Mr. Pedigo has assessed and provided expert testimony on a broad range of patent infringement damages issues, including, but not limited to: lost profits, convoyed sales, price erosion, and reasonable royalties (including non-infringing alternatives, comparable licenses, smallest salable unit, and demand for the patented component).In addition to analyzing economic damages, Mr. Pedigo also focuses a significant portion of his practice on the valuation of closely-held companies and intellectual property; royalty rate consulting; and, other intellectual property related consulting.
Mr. Pedigo is a Senior Principal in the Forensic and Litigation Consulting and Valuation and Corporate Finance practices of Crowe …
Joel Wacek is a Principal of Hoffman Alvary. His practice focuses on financial and economic analysis for intellectual property disputes, licensing and business valuation matters. Mr. Wacek has more than a decade of experience in computing damages in intellectual property infringement matters, as well as providing financial analysis related to breach of contract and business valuation disputes.
Mr. Wacek’s experience includes providing expert testimony, preparing expert reports and assisting counsel in preparing for depositions and trial examinations. Mr. Wacek continually monitors the developing changes in patent damages case law to inform his complex damages analyses involving lost profits, reasonable royalties and price erosion.
Mr. Wacek holds an M.B.A. and a Masters of Science in Finance from the Carroll School of Management at Boston College, and a B.A. in both Economics and History from Boston College.
Joel Wacek is a Principal of Hoffman Alvary. His practice focuses on financial and economic analysis for intellectual property disputes, …
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About Husch Blackwell LLP
Husch Blackwell is an industry-focused, full-service litigation and business law firm with locations in 15 U.S. cities and in London. We represent national and global leaders in major industries including energy and natural resources; financial services; food and agribusiness; healthcare, life sciences and education; real estate, development and construction; and technology, manufacturing and transportation.
About Brinks Gilson & Lione
The attorneys, scientific advisors and patent agents at Brinks Gilson & Lione focus their practice in the field of intellectual property. Brinks is one of the largest intellectual property law firms in the U.S. Clients around the world use Brinks to help them protect and enforce their intellectual property rights. Brinks lawyers provide counseling in all aspects of patent, trademark, unfair competition, trade secret and copyright law. More information is at www.brinksgilson.com.
About Crowe GHP Horwath
GHP Horwath, P.C. (“Crowe GHP Horwath”) is one of Colorado’s largest locally owned, independent public accounting and advisory firms. Its experienced professionals provide a wide range of services, including audit and accounting; personal, corporate, and estate tax planning and compliance preparation; personal financial planning, such as investment advising, retirement and estate planning, asset allocation and insurance consulting; litigation support; and business valuations. The firm works with local and international companies, providing an array of cross functional/multi-disciplinary service solutions and is a member of Crowe Horwath International, a global network of independent accounting and advisory firms spanning the world. The firm has the resources to assist its clients with their current needs, but also on a much wider scale as its clients continue to grow.
About Hoffman Alvary & Company
Hoffman Alvary & Company is a consulting firm providing independent advisory services to law firms, their clients and other institutions worldwide.
The firm’s Intellectual Property and Valuation Consulting practices assist companies and their counsel in a broad range of areas including expert witness testimony, licensing matters, valuations and general business consulting. The firm’s principals are experienced in determining and testifying to the amount of damages arising from the infringement of intellectual properties, and as well as in analyzing financial, accounting and economic issues in investigations before the International Trade Commission.
The firm’s Law Firm Consulting practice focuses on management consulting to major law firms throughout the United States, Canada, the UK and Europe, and works regularly with nearly half the AmLaw 100 and AmLaw Second Hundred firms in their strategic and tactical considerations.
For more information on Hoffman Alvary, visit www.hoffmanalvary.com.