On Monday, May 12th, Fish Senior Principal John Skenyon (Boston) will speak on “Patent Infringement: Proving Royalty Damages Amid Increased Court Scrutiny” during a Strafford CLE webinar. Details are included below and also available on the event website.
Patent Infringement: Proving Royalty Damages Amid Increased Court Scrutiny
Use of Licenses, the EMVR, Daubert, Survey Evidence
Recording of a 90-minute CLE webinar with Q&A
Conducted on Monday, May 12, 2014
This CLE webinar will provide guidance to patent counsel in establishing infringement damages, review recent significant decisions, and offer best practices for proving reasonable royalty damages.
In the last few years, the Federal Circuit has been closely examining the methodology and evidence being used to prove reasonable royalty damages. In response, the district courts have begun looking more carefully and more favorably at Daubert challenges to damages experts. On April 25, 2014, the Federal Circuit in Apple Inc. v. Motorola Inc. overturned the district courtâ€™s exclusion of the damages experts from both sides and finding that neither side was entitled to damages.
In addition to the Apple case, the Federal Circuitâ€™s recent rulings provide considerable guidance on establishing reasonable royalty damages. But, they have also created some potential pitfalls that counsel should be aware of when putting together a damages case.
Such issues involve the use of licenses and benchmarks, the entire market value rule, use of survey evidence, problems with multiple patents, FRAND licenses, and specific evidence for proving damages.
It is important to understand the many changes that impact establishing reasonable royalty damages and what effective methods are available for avoiding successful challenges in the district court and reversal by the Federal Circuit.
Listen as our authoritative panel reviews recent significant cases, examines the elements of proving royalty damages, and offers approaches for proving damages. The panel will outline addressing multiple patents and provide practical tips for proving royalty damages.
I. Recent significant decisions including:
A. Apple Inc. v. Motorola Inc.
B. i4i v. Microsoft
C. Power Integrations v. Fairchild
D. ResQNet v. Lansa
E. Laser Dynamics v. Quanta
II. Proving royalty damages
C. Surveys (proving demand, usage and/or apportionment)
D. Best practices
The panel will review these and other key questions:
What guidance do recent court decisions provide for proving patent damages?
When can the EMVR be applied to establish royalty damages?
What constitutes the smallest salable unit?
What methods can be used to provide reasonable royalty patent damages?
How can counsel overcome the challenges involved in proving royalty damages when multiple patents are involved?
How can surveys be used to prove or disprove the EMVR, and to estimate the demand for and value of a patent?
Following the speaker presentations, you’ll have an opportunity to get answers to your specific questions during the interactive Q&A.
Krista F. Holt, President & CEO
GreatBridge Consulting, Washington, D.C.
Ms. Holt provides expert witness testimony at trial for patent, trademark, trade secret, copyright, false advertising, antitrust, and breach of contract cases for analysis of lost profits, determination of reasonable royalties, accounting of defendant’s profits, licensing and intellectual property valuation.
John M. Skenyon, Principal
Fish & Richardson, Boston
Mr. Skenyon has specialized in patent litigation. He has been lead counsel in more than 100 IP lawsuits around the country, including cases in so-called “rocket docket” jurisdictions and those known for large numbers of patent infringement trials, such as Delaware, Massachusetts, Texas, and California. He has obtained one of the largest patent jury verdicts awarded in Massachusetts and has successfully defended clients from damages claims totaling hundreds of millions of dollars.