Patent Infringement: Practical Guide and Best Practices to Prove Royalty Damages
In the past years, the methodology and evidences in proving reasonable royalty damages have been closely examined and monitored by the District Courts and Court of Appeals for the Federal Circuit. The Courts have allowed a variety of methods depending on the case circumstances. Two different approaches approved by the Courts include the hypothetical negotiation and analytical approach. Generally, the Courts reasoned that a "hypothetical negotiation" between the patent owner and the infringer may be used to determine reasonable royalty damages, and provided fifteen factors to consider. The analytical approach involves calculating reasonable royalty damages based on the benefit or excess profit of the patented feature of a product relative to a “normal” profit. More recently, the task of determining reasonable royalty damages in patent litigation has become more complicated as the Courts have provided decisions addressing the issue of how to apportion damages on sales of accused products to reflect the value of discrete patented features, especially patented components or features in larger multi-function infringing products.
The Knowledge Group has assembled a panel of thought leaders and professionals who will help the audience understand the most important aspects of reasonable royalty damages. The panel will present their findings and best practices in proving royalty damages.
Key topics include:
- Hypothetical Negotiation
- Analytical Approach
- Apportionment/Smallest Saleable Patent Practicing Unit
- Challenges in Proving Royalty Damages
- Guidance in Establishing Reasonable Royalty Damages
- Recent Court Decisions
Thomas J. Wimbiscus, Shareholder
McAndrews, Held & Malloy, Ltd.
- Hypothetical negotiation/Georgia-Pacific factors
- Explanation of the Entire Market Value Rule
- Explanation of apportionment/the Smallest Saleable Patent Practicing Unit
- Apportionment methods - successes and failures
Scott Cragun, Director
- Explanation of the analytical approach (normal profit and next best alternative/design around)
- Court decisions (historical) establishing the analytical approach as an appropriate reasonable royalty method
- Case examples of the analytical approach
Mark Pedigo, Director
- Court decisions (recent) pertaining to the analytical approach and apportionment
- Usefulness and limitations of the analytical approach and important factors to consider in its use
- Anticipated profits vs. actual profits when using the analytical approach
- Areas to focus in discovery when considering the use of the analytical approach
Jeffrey Snell, Principal
Global Economics Group LLC
- Case example of a damages analysis based on the Nash Bargaining Solution that was excluded
- Case example of damages analysis based on the Nash Bargaining Solution that was allowed
- Guidance on apportioning defendants’ profits in establishing reasonable royalty damages
Who Should Attend:
- Intellectual Property Lawyers
- Patent Licensing Attorneys
- Patent Attorneys
- IP Counsel
- Patent Litigators
- In-house Counsel
- Damages Experts
Thomas J. Wimbiscus is a highly experienced intellectual property (IP) attorney specializing in patent and other IP litigation. With over 30 years of experience, he has appeared in over 90 litigations and 80 patent office inter partes review (IPR) proceedings. He has been recognized as a top-20 IPR practitioner. (Docket Navigator 2014 (patent holder).)
Mr. Wimbiscus was responsible for numerous multi-million dollar awards and settlements, including lead counsel in multiple patent litigations on behalf of Broadcom Corp. against Qualcomm, Inc. (global campaign settled for $890 million); a patent infringement award of over $80 million; and multiple trial victories in the U.S. International Trade Commission.
Mr. Wimbiscus has been named a fellow of the Litigation Counsel of America, a trial lawyer honorary society composed of less than one-half of one percent of American attorneys; an InterContinental Finance & Law Top 500 Leading Lawyers Across the Globe; a “recommended” intellectual property counsel by Practical Law Company for 2002 – 2016; and a “Leading Lawyer” (2004 – 2016). He can be reached at email@example.com.
Thomas J. Wimbiscus is a highly experienced intellectual property (IP) attorney specializing in patent and other IP litigation. With over …
Scott Cragun is a Director at Echelon Analytics. Mr. Cragun has over seventeen years of experience in financial and litigation consulting. His area of expertise is intellectual property damages analysis and calculations including lost profit calculations, reasonable royalty determinations, and other intellectual property quantitative analysis such as valuations. Mr. Cragun has provided financial analysis and valuation assessments on patent, trademark, trade secret, and copyright issues and provided expert witness testimony. He has assisted in license negotiations and conducted royalty compliance reviews.
During his career, Mr. Cragun has had significant involvement with company and law firm personnel in the identification of relevant market, financial, and economic information, and the development of damages scenarios. His industry experience includes the automotive, chemical, computer, consumer products, electronics, healthcare, oil and gas, retail, software, semiconductor, and telecommunications sectors. Prior to joining Echelon Analytics, Mr. Cragun was a Director at FTI Consulting and a Manager at Technology and Financial Consulting. Mr. Cragun holds a Masters in Business Administration and is a Certified Licensing Professional.
Scott Cragun is a Director at Echelon Analytics. Mr. Cragun has over seventeen years of experience in financial and litigation …
A curiosity for facts and an appreciation for solving difficult problems has led Mark Pedigo to success in a career that has spanned more than three decades. He focuses specifically on the quantification and analysis of economic damages and valuation of assets in matters related to: patent, trade secret, trademark and copyright infringement; breach of contract and other commercial disputes; construction disputes; and alter ego and other forensic accounting matters.
Mark has also performed intellectual property royalty audits and has provided intellectual property royalty rate consulting for clients who are negotiating licensing agreements.
A curiosity for facts and an appreciation for solving difficult problems has led Mark Pedigo to success in a career …
Jeff Snell is a Principal with Global Economics Group. Since 1997 Mr. Snell has focused primarily on assisting clients with financial and economic issues in intellectual property disputes and transactions. Mr. Snell has served as an expert witness in patent infringement and commercial litigation matters, advised clients in the negotiation of financial terms of intellectual property transactions, and valued intellectual property in a number of contexts. As a damages expert, Mr. Snell has provided deposition testimony and testified in federal court and arbitration proceedings. He has performed numerous economic damages analyses in the context of intellectual property infringement litigation, including lost profits, reasonable royalty, convoyed sales, price erosion, and disgorgement of defendants’ profits.
Jeff Snell is a Principal with Global Economics Group. Since 1997 Mr. Snell has focused primarily on assisting clients with …
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Method of Presentation:
Experience in patent litigation
NASBA Field of Study:
Business Law - Technical
NY Category of CLE Credit:
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About McAndrews, Held & Malloy, Ltd.
McAndrews boasts one of the most highly regarded teams of intellectual property attorneys in the United States. It offers a deep bench of experts in patents, trademarks, copyrights, trade secrets, and unfair competition. McAndrews was recognized as among the top 10% of U.S. IP litigation firms. The recognition is based on an on-going, comprehensive survey by an independent legal market consulting firm (BTI) that draws on over 4000+ decision-makers at top-spending companies.
While perhaps best known for its record of litigation success (including a recent $240M jury trial victory that was affirmed by the U.S. Supreme Court concerning the standard for “willful infringement”), McAndrews is also recognized as a leading firm in IP procurement, post-grant proceedings, IP opinions and investigations, and global portfolio management. The firm was ranked 2nd by AIM among the top law firms in the U.S. for highest quality patents over all industries.
Firm clients include multinational corporations, Fortune 500 companies, startups, and world-renowned universities. The firm offers an intense focus on IP and complex technology law, handling all types of work from bet-the-company litigation to day-to-day IP management.
About Echelon Analytics
Echelon Analytics is a recognized leader in economic and financial analysis, expert witness services, financial investigation, forensic accounting, and business consulting. From its offices in Dallas, Houston, and Salt Lake City, 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 high‐stakes 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. Clients trust Echelon with their most important matters because Echelon’s expertise allows it to move forward with confidence that the opinions provided are well‐supported by the most comprehensive research and analysis. Clients also appreciate Echelon’s ability to deliver very complex information in an organized and easy‐to‐understand way for the audiences who will use the information to make important decisions, such as juries, investors, and government agencies. Learn more about Echelon at echelonanalytics.com.
About RGL Forensics
RGL Forensics is a multidisciplinary forensic accounting and consulting firm delivering accurate and reliable financial analysis to the insurance, legal, corporate and public sectors.
We specialize in the quantification of economic damages and financial analysis in disputes of all kinds. RGL provides comprehensive forensic accounting, corporate finance, fraud investigation and expert testimony services, going beyond the numbers to deliver financial clarity in the most complex situations.
At every stage of dispute resolution and at mediation, arbitration or litigation, clients rely on RGL to deliver financial analysis that withstands the toughest scrutiny.
27 offices | 5 continents | 1 firm
About Global Economics Group LLC
Global Economics Group brings together world-class thought leaders, highly experienced experts who have presented before courts and regulatory bodies worldwide, ex industry executives with deep practical experience and a multi-disciplinary staff including econometricians and finance economists. Its mission is to provide independent and rigorous economic analysis in complex legal, regulatory, and policy matters throughout the world. Global Economic Group experts have worked on some of the most significant legal and regulatory matters of the last quarter century and have worked for many leading corporations and government agencies.