Patent Infringement Reasonable Royalty Damages Strategies In Light of Recent Federal Circuit Decisions
The Federal Circuit in recent years has been increasingly vigilant in requiring patentees to provide solid proof of reasonable royalty damages, especially with regard to the application of the Entire Market Value Rule (i.e., claiming royalties on the entire value of the infringing product) and the use of other patent licenses as “comparable licenses” when determining the royalty rate. Given this apparent increased level of scrutiny, attorneys and experts need to be proactive, diligent and comprehensive in developing their damages strategies and damages discovery strategies and resulting reasonable royalty damages analyses must be thorough and comprehensive. In this two-hour live webcast, panel members will summarize key Federal Circuit cases that impact reasonable royalty damages and discuss implications of the cases and strategies to consider when conducting discovery of damages related information (i.e., document requests, interrogatories, requests for admissions, depositions, and independent research) and in either developing damages analyses or analyzing and critiquing damages analyses of adverse parties.
Drew Voth, Senior Director ,
Alvarez & Marsal
- -Discuss a slide which will highlight the names of the past year’s CAFC cases dealing with royalties and the areas those cases address.
- -Discuss the key findings in the hot areas addressed in the past year’s cases and the resulting strategy implications for reasonably royalty damages calculations with particular focus on:
- Comparable licenses
- Proper royalty bases
- Entire market value rule
- Sufficient evidence
Mark W. Pedigo, CPA/ABV/CFF/CVA, Senior Principal,
GHP Horwath, P.C.
- strategies (both from an analysis and discovery standpoint) pertaining to the entire market value rule, including apportionment.
Matthew Holohan, Attorney,
Kilpatrick Townsend & Stockton LLP
- When applicable, the entire market value rule allows a patentee to recover damages on an entire product where only a portion of the product infringes.
- The entire market value rule has become increasingly significant in cases where a narrowly-focused claim is asserted against a multi-faceted product.
- Recent Federal Circuit decisions have made clear that, for the entire market value rule to apply, the patented feature must form the basis for consumer demand for the entire product.
- Where the patented feature is only a very small component of a much larger product, the entire market value rule does not apply.
Lisa Cameron, Principal,
The Brattle Group
- Explain how stricter standards for the evidence in an apportionment analysis have created a role for conjoint surveys
- Outlines the steps involved in performing a conjoint survey, using as a case study the conjoint surveys carried out in Apple v Samsung
- Review defendants responses to conjoint surveys performed in Apple v Samsung and other recent IP cases
Louis W. Tompros, Partner,
- Recent Federal Circuit cases have provided some guidance on the comparability requirement for license agreements in the reasonable royalty context.
- At the district court level, there are now competing views on comparability, in particular how a standard-setting licensing commitment on RAND (reasonable and non-discriminatory) terms affects comparability.
- Comparability and standard-setting commitments require building a record in discovery and at trial sufficient to support (or challenge) an expert’s opinion on royalty rate and base, and that record will involve evidence that was previously not often seen as important in a reasonable royalty case.
Who Should Attend:
Patent attorneys, commercial litigators, in-house counsel, and damages experts
Drew Voth CPA/CFF/CVA/CFE/CIRA/CDBV, is a Senior Director with Alvarez & Marsal. Mr. Voth is a damages expert, valuation expert, and fraud examiner, whose 20+ year practice also includes intellectual property transaction and licensing consulting. Notable intellectual property engagements include: successful testimony in the oft-cited copyright infringement indirect damages matter Mackie v. Reiser, 296 F.3d 909 (9th Cir. 2002); testimony for L’Oreal supporting its $11.6 million patent infringement, trade dress infringement and false advertising jury verdict against an infringer; a no-damage ruling in a patent infringement legal malpractice claim in excess of a billion dollars; and testimony in multimillion dollar jury verdicts in various trade secret theft matters.
Drew Voth CPA/CFF/CVA/CFE/CIRA/CDBV, is a Senior Director with Alvarez & Marsal. Mr. Voth is a damages expert, valuation expert, and …
Mark W. Pedigo, CPA/ABV/CFF/CVA is a Senior Principal in the Forensic and Litigation Consulting and Valuation and Corporate Finance practices of GHP Horwath, P.C. He has over 30 years of experience in economic damages analysis, valuation, strategic consulting, and financial analysis. Mr. Pedigo provides consulting, valuation and expert testimony services to counsel on behalf of plaintiffs and defendants involved in commercial disputes. He has analyzed economic damages and performed forensic accounting analyses, prepared expert reports, and provided expert testimony in the many types of disputes, including intellectual property disputes, breach of contract matters, business interruption matters, and other commercial litigation. Mr. Pedigo has assessed a broad range of patent infringement damages issues, including, but not limited to: lost profits, convoyed sales, price erosion, and reasonable royalties (including issues such as non-infringing alternatives, comparable licenses, and demand for the patented component).
Mark W. Pedigo, CPA/ABV/CFF/CVA is a Senior Principal in the Forensic and Litigation Consulting and Valuation and Corporate Finance practices …
Matthew Holohan is an attorney at the Denver office of Kilpatrick Townsend & Stockton LLP. Matthew has extensive experience representing clients through all stages of litigation, including trials and appeals, appearing in federal and state courts as well as the United States International Trade Commission. His work focuses on patent litigation matters, representing clients in areas such as telecommunications, software, and semiconductor manufacturing. Matthew is a former law clerk to the Honorable Marilyn Hall Patel of the United States District Court for the Northern District of California. He received a Bachelor of Arts in Physics and his law degree from the University of California, Berkeley.
Matthew Holohan is an attorney at the Denver office of Kilpatrick Townsend & Stockton LLP. Matthew has extensive experience representing …
Dr. Lisa Cameron is a Principal at The Brattle Group with over fifteen years of experience in providing economic analyses of intellectual property issues. She has prepared testimony on reasonable royalties and lost profits for clients in industries ranging from software to consumer products to pharmaceuticals and medical devices. Dr. Cameron has also prepared expert reports on irreparable harm and commercial success on behalf of both plaintiffs and defendants. She has testified on competition and investment issues and has published in leading academic and professional journals in the areas of industrial organization and regulation. Her writings include one of the few studies addressing the economics of irreparable harm, “Preliminary Injunctions in Pharmaceutical Litigation: the Economics of Irreparable Harm.”
Prior to becoming a consultant, Dr. Cameron was a professor of economics in Carnegie Mellon University’s Graduate School of Business, where she taught courses in microeconomic theory, regulation, and antitrust policy.
Dr. Lisa Cameron is a Principal at The Brattle Group with over fifteen years of experience in providing economic analyses …
Louis Tompros is a partner in the firm’s Litigation/Controversy Department, and a member of the Intellectual Property Litigation and Appellate and Supreme Court Litigation Practice Groups. Mr. Tompros’s practice focuses on intellectual property matters at the trial and appellate levels. He has represented clients in patent disputes involving a variety of technologies, including smartphones, semiconductors, networking, alternative energy, pharmaceuticals, blood and bone marrow treatments, power converters, digital imaging, video compression, mobile multimedia, hard drive testing and plastic storage devices. He has also represented companies in design patent, trademark, trade dress, unfair competition, trade secret, contract, antitrust and products liability matters. His practice has encompassed all facets of litigation, including discovery, settlement, alternative dispute resolution, trials, injunction proceedings and appeals. His trial experience includes bench and jury trials in federal and state courts, and before administrative agencies including the International Trade Commission, and his appellate experience includes argument before the United States Court of Appeals for the Federal Circuit.
Louis Tompros is a partner in the firm’s Litigation/Controversy Department, and a member of the Intellectual Property Litigation and Appellate …
Print and review course materials
Method of Presentation:
On-demand Webcast (CLE)
NASBA Field of Study:
Specialized Knowledge and Applications
NY Category of CLE Credit:
Areas of Professional Practice
Unlock All The Knowledge and Credit You Need
Leading Provider of Online Continuing Education
It's As Easy as 1, 2, 3
Get Your 1-Year All Access Pass For Only $199
About Alvarez & Marsal
Alvarez & Marsal (A&M) is a global professional services firm specializing in turnaround and interim management, performance improvement and business advisory services. A&M delivers specialist operational, consulting and industry expertise to management and investors seeking to accelerate performance, overcome challenges and maximize value across the corporate and investment lifecycles. Founded in 1983, the firm is known for its distinctive restructuring heritage, hands-on approach and relentless focus on execution and results.
About GHP Horwath, P.C.
As a member firm of Crowe Horwath International, GHP Horwath P.C.’s experienced professionals provide a wide range of services to both private and public companies nationwide and globally, including audit and accounting; personal, corporate, and estate tax planning and compliance; litigation support; business valuation; and personal financial planning, such as investment advising, retirement and estate planning, asset allocation and insurance consulting. Crowe Horwath’s global network of more than 150 independent accounting and management consulting firms operate from 671 offices around the world. By aligning with Crowe Horwath International, the GHP Horwath staff maintains access to international resources and is able to provide pertinent information to clients who are seeking to expand into new markets or are coping with unfamiliar issues affected by local laws and customs.
About Kilpatrick Townsend & Stockton LLP
Kilpatrick Townsend has a diverse and sophisticated patent practice with an outstanding record of helping our clients grow and protect innovative businesses and products. Our patent attorneys bring to each engagement a combination of legal and technical expertise that enables us to quickly grasp the business and technology aspects of any dispute or transaction. Kilpatrick Townsend’s services expand beyond intellectual property to a broad range of corporate, finance and litigation engagements. Our lawyers are fully engaged in the success of the firm’s clients, delivering results-oriented counsel for businesses at all stages of the growth cycle. We serve clients around the world from our 17 offices in California, Colorado, District of Columbia, Georgia, New York, North Carolina, Washington, Sweden, Japan and Shanghai. We value our client relationships and are committed to learning and furthering the business, as well as legal goals, of each company we work with.
About The Brattle Group
The Brattle Group provides consulting and expert testimony in economics, finance, and regulation to corporations, law firms, and governments around the world. We combine in-depth industry experience and rigorous analyses to help clients answer complex economic and financial questions in litigation and regulation, develop strategies for changing markets, and make critical business decisions. Our intellectual property practice sources and provides support to Brattle testifying witnesses, as well as internationally recognized testifiers from the academic community and highly credentialed industry specialists.
WilmerHale is a leading international law firm with more than 200 attorneys focused on intellectual property matters in the United States, Europe and Asia. Experienced in helping clients with IP needs at every stage of growth and in every aspect of their business, we offer full-service coverage in all aspects of patent, trademark, copyright and trade secret law, including prosecution, litigation, due diligence and opinions, and licensing and technology transfer. We have litigated hundreds of patent cases in federal district courts across the U.S. and the International Trade Commission, and have extensive experience in appellate matters before the Federal Circuit and U.S. Supreme Court. For more information, visitwww.wilmerhale.com