How to Prove Damages in Patent, Trademark and Copyright Cases: 2015
Many business owners believe that a patent provides complete protection against infringement. This is far from the truth. Patent infringement occurs when another party makes, uses, or sells a patented item without the permission of the patent holder. The patent holder may choose to sue the infringing party and to ask for compensation for the unauthorized use. Since intellectual property is governed by federal law, the patent holder must sue the unauthorized party in federal court within 6 years of the infringement.
Challenges often relate to alleged invalidity of the patent; including inadequate or fraudulent registration, lack of novelty and lack of obviousness, or a patent derived from anti-competitive activities.
In a two hour CLE course, The Knowledge Group has assembled a panel of key thought leaders and professionals to provide the audience with an in-depth discussion of the fundamentals, current litigation updates, and best practices to Prove Damages in Patent, Trademark, and Copyright Cases.
Key topics include:
- Patent Litigation: Over-view
- Patent, Trademark and Copyright Cases – An Update
- Infringement Remedies
- Recent Trends in Litigation
- Mitigating Risks in IP Infringement
- Determining Damages in IP
John M. Augustyn, Shareholder
Leydig, Voit & Mayer, Ltd
- Patent (Trademark and Copyright) litigation overview?
- Recent cases on lost profits.
- Recent cases on "established royalties".
- Recent cases on royalties for standard essential patents.
- Bifurcation of damages and liability.
Brian W. Nolan, Partner
- Discuss generally the tightening of proofs for reasonably royalty patent damages
- Investigate the increased scrutiny of royalty base, specifically the application of the smallest salable patent-practicing unit, the entire market value rule (EMVR), and apportionment
- Outline apportionment requirements and explore associated expert issues
- Consider the use of comparable licenses in royalty calculations and implicated Daubert concerns
- Examine the use of per unit royalties to avoid EMVR issues and related per unit royalty apportionment requirements
Justin McLean, Managing Principal
Analysis Group, Inc.
- Proving Damages In Patent Cases—Importance of the Feature at Issue
- Challenges with the Current Approaches
- Possible Solutions involving Hedonic Analysis and Surveys
- Use of these tools in Trademark Cases
Dr. Christine Meyer, Senior Vice President
NERA Economic Consulting
Proving damages in pharmaceutical patent cases
- Similarities and differences in damages analysis between pharma and other industries
- Innovator-generic versus innovator-innovator cases
- Lost profits from lost sales
- Price erosion
- Reasonable royalties
Carmen E. Bremer, Member
Christensen O'Connor Johnson Kindness PLLC
- Review 2015 district court cases addressing challenges to expert damages opinions in patent, copyright, and trademark cases
- Identify recent trends concerning admissibility of expert damages opinions in IP cases
- Discuss strategies for how best to safeguard your own damages expert’s opinions and to most effectively challenge the opinions of your opponent’s damages expert
Kristopher A. Boushie, Vice President
NERA Economic Consulting
Topic Area: Avoiding Common Problems and Mistakes Made with IP Damages Experts
- Discovery – existing document discovery is not sufficient to adequately support the damage theory.
- Coordinating experts – non-existing or poor coordination between the damage expert and technical, survey, and/or fact witnesses.
- Intellectual Property Comparability
- Lack of Reasonableness Checks
- Partners Delegating Damages and Related Issues to the Back Burner
Who Should Attend:
- IP Attorneys & Consultants
- Trademark Attorneys
- Copyright Attorneys
- Patent Licensing Attorneys
- Patent Litigators
- Other Related/Interested Professionals
Brian W. Nolan is a Partner in the Intellectual Property group at Mayer Brown. Brian focuses his practice on intellectual property litigation and counseling in the areas of patent, trade secret, unfair competition, antitrust, trademark, counterfeit goods and copyright law.
Brian has acted as lead and trial counsel on numerous matters covering all aspects of intellectual property protection. Brian has participated in several district court trials, ITC investigations, USPTO Inter Partes Reviews and appellate proceedings relating to a wide range of technologies, including monoclonal antibodies, pharmaceuticals, receptor pharmacology, medical devices, biotechnology, medical imaging technology, crystal growth, semiconductors, laser diodes, building products, data capture systems and computer storage systems. Additionally, Brian counsels clients concerning intellectual property issues in business transactions and investment opportunities. Brian is an adjunct professor of law at Fordham University School of Law, where he teaches a course on patent litigation.
Brian W. Nolan is a Partner in the Intellectual Property group at Mayer Brown. Brian focuses his practice on intellectual …
Carmen Bremer focuses her practice on intellectual property litigation across a wide range of technologies, including alternative energy, mobile devices, software, and telecommunications. She has been involved in all facets of patent infringement litigation in federal district courts, in mediations and arbitrations, before the Federal Trade Commission, and before the U.S. Courts of Appeals for the D.C. and Federal Circuits. Carmen is active in the pro bono legal community, working with human rights organizations on cases related to women's reproductive rights, domestic violence, and prison solitary confinement practices. Carmen earned her B.A. from the University of Texas at Austin, and her J.D. summa cum laude, from the University of Houston Law Center.
Carmen Bremer focuses her practice on intellectual property litigation across a wide range of technologies, including alternative energy, mobile devices, …
Mr. Augustyn is active in all facets of patent litigation, client counseling, and prosecution. His litigation experience has involved several industries, including medical devices, electrical devices, magnetic devices, printing processes, agricultural equipment, manufacturing equipment, automotive equipment, fuel storage containers, and consumer products. He also manages the patent prosecution for several international corporations. Furthermore, he has extensive experience in the drafting and negotiation of agreements relating to intellectual property, including patent licenses, technology licenses, joint venture agreements, and research and development agreements.
Mr. Augustyn received a B.S. in Engineering, with honors, from the Illinois Institute of Technology, and a J.D. degree in 1987 from Loyola University Chicago, where he graduated at the top 10% of his class. In law school, he received several awards for scholarship and writing, and was on the National Moot Court Team. He has authored articles and chapters for books, has appeared on television and radio, and has provided seminars for attorneys and clients.
Mr. Augustyn was an instructor at Loyola University Chicago School of Law for over five years. In addition, he was the advisor of the Intellectual Property Moot Court Team at Loyola University Chicago for over fifteen years. Prior to attending law school, he worked as an engineer at a large equipment manufacturer in the areas of Design Engineering, Manufacturing Engineering, and Quality Engineering.
Mr. Augustyn has received several legal awards, including Super Lawyer, Top Rated Lawyer, and Leading Lawyer.
Mr. Augustyn is active in all facets of patent litigation, client counseling, and prosecution. His litigation experience has involved several …
Justin N. McLean, Analysis Group Managing Principal, specializes in the application of finance and economics to problems in complex business litigation, including intellectual property, valuation, tax, and securities. His experience spans several industries, from banking, insurance, and high technology to telecommunications and health care. He has served as an expert witness and has provided assistance in many phases of litigation, including development, presentation, and review of pretrial discovery; preparation of testimony; and critique of analyses of opposing experts. Mr. McLean’s casework has included general damages analyses and lost profit and reasonable royalty calculations related to intellectual property misappropriation. He recently supported counsel for a large electronics manufacturer in litigation associated with features on smartphones and tablets. Mr. McLean received an M.S. in industrial administration from the Graduate School of Industrial Administration at Carnegie Mellon University, and a B.A. in economics from Swarthmore College.
Justin N. McLean, Analysis Group Managing Principal, specializes in the application of finance and economics to problems in complex business …
Dr. Meyer is a Senior Vice President in the Intellectual Property and Antitrust practices at NERA Economic Consulting. With over 15 years of experience in intellectual property matters, Dr. Meyer conducts economic research and analysis in the areas of intellectual property economics, antitrust, commercial damages, business valuation, and labor economics. She has analyzed damages arising from patent and copyright infringement, the misappropriation of trade secrets, antitrust allegations, and breaches of contract. She has worked on analysis of class certification issues and has analyzed commercial success and injunction issues in patent cases. She has also analyzed the value of several patents, licenses, and potential business acquisitions. She has written expert reports and testified in deposition and at trial about her economic analysis. Dr. Meyer has also written numerous articles on intellectual property, including articles in Antitrust on patent-related antitrust issues and in Law360.
Dr. Meyer received a bachelor’s degree with a concentration in Economics from United States Military Academy at West Point and a Ph.D. in economics from the Massachusetts Institute of Technology.
Dr. Meyer is a Senior Vice President in the Intellectual Property and Antitrust practices at NERA Economic Consulting. With over …
Kristopher Boushie is a Vice President in the Intellectual Property practice at NERA Economic Consulting. Mr. Boushie has over 30 years of experience in financial and litigation consulting, with an emphasis on forensic valuation issues, and over 20 years of experience focused on intellectual property matters. His expertise includes the analysis and preparation of damages estimates in the areas of intellectual property infringement, antitrust, distributorship terminations, contract disputes, and tort claims. He has been named as an expert in a number of cases and has testified in arbitration hearings, depositions, and district court.
Mr. Boushie is editor and contributing author of Calculating and Proving Damages published by Law Journal Press. He is a regular contributor to the Financial Valuation and Litigation Expert journal and is on its Panel of Experts. Mr. Boushie has prepared and presented a number of Continuing Legal Education and Continuing Professional Education seminars on a variety of topics related to the estimation of damages and valuation issues. He has also served as an instructor to forensic accountants at the FBI Academy in Quantico, Virginia.
Mr. Boushie received a B.S. in Economics from Allegheny College and a Masters of Accountancy from The George Washington University. He is a Certified Public Accountant, licensed in Virginia. He is Accredited in Business Valuation and Certified in Financial Forensics. He is also a Certified Valuation Analyst and a Certified Fraud Examiner.
Kristopher Boushie is a Vice President in the Intellectual Property practice at NERA Economic Consulting. Mr. Boushie has over 30 …
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About Mayer Brown
Mayer Brown is noted for its commitment to client service and ability to assist clients with their most complex and demanding legal and business challenges worldwide. Lawyers in Mayer Brown’s Intellectual Property practice select the right options to fit each client’s business strategy, whether they are assessing an IP portfolio, performing due diligence for an acquisition, securing a patent, trademark, trade secret or copyright, or using litigation to resolve business disputes over infringement or misappropriation. Mayer Brown helps clients protect their investments, increase market share and strengthen their competitive advantage. Mayer Brown is uniquely positioned with a full-service IP practice that is fully integrated with other practices, providing antitrust guidance on transactions and competition disputes and unsurpassed appellate capabilities before the federal courts, the US Supreme Court and international tribunals.
About Christensen O'Connor Johnson Kindness PLLC
Christensen O'Connor Johnson KindnessPLLC (COJK) is a Seattle-based intellectual property law firm providing legal services in all areas of intellectual property, including patents, trademarks, litigation, licensing, trade secrets, and copyrights. COJK was founded in 1929, and has established itself as one of the Northwest's premier IP law firms.
The attorneys at COJK are committed to seeking and delivering strategic advantages for a wide range of clients, including industry leaders in biotechnology, consumer goods, entertainment, food services and processing, medical devices, pharmaceuticals, pulp and paper, semiconductors, software, and telecommunications. COJK's diverse, collaborative, and dedicated team of attorneys and paralegals provides comprehensive representation to enhance the long-term market value of clients' intellectual property assets.
About Leydig, Voit & Mayer, Ltd
At the forefront of intellectual property law for more than a century, Leydig, Voit & Mayer provides valued advice and trusted counsel on intellectual property issues to industry leaders around the world. Our IP litigation, licensing, and prosecution services encompass patent, trademark, copyright, trade secrets, Internet and other IP issues, including post-grant proceedings. Our clients’ industries include pharmaceutical, chemical and chemical engineering, software, electronics, manufacturing and machine design, biotechnology, medical devices, financial services, and consumer products. The wealth of litigation and technical experience of the firm’s attorneys and staff enables the firm to tailor its services to the unique needs of each client.
About Analysis Group, Inc.
Since 1981, Analysis Group has provided expertise in economics, finance, health care analytics, and strategy to top law firms, Fortune 500 companies, global health care corporations, and government agencies. Our work is grounded in a collaborative approach that allows us to effectively integrate the best ideas from leading academic and industry experts with our more than 600 professionals. As a result, our clients receive thoughtful, pragmatic solutions to their most challenging business and litigation problems. Through our work in thousands of cases across multiple industries we have become one of the largest economics consulting firms in North America, with 11 offices in the United States, Canada, and China.
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 over 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. NERA brings academic rigor, objectivity, and real world industry experience to bear on issues arising from competition, regulation, public policy, strategy, finance, and litigation.
NERA’s clients value its ability to apply and communicate state-of-the-art approaches clearly and convincingly, its commitment to deliver unbiased findings, and its reputation for quality and independence. NERA’s clients rely on the integrity and skills of its unparalleled team of economists and other experts backed by the resources and reliability of one of the world’s largest economic consultancies. With its main office in New York City, NERA serves clients from more than 25 offices across North America, Europe, and Asia Pacific.