A New Checklist for Patent Damages


  • Name
    DJ Healey
    Person title
    Senior Principal
    Headshot of DJ Healey

DJ Healey

DJ Healey
April 19, 2010

In September 2009, the Federal Circuit in Lucent v. Gateway, 580 F.3d 1301, 92 U.S.P.Q.2d 1555 (Fed. Cir. 2009), reinforced two big points on damages:

1)  Damages must be apportioned to the contribution of the patent to the product and the technology.

2)  The hypothetical negotiation must be based only on facts.

On Feb. 5, 2010, in v. Lansa, Nos. 2008-1365, -1366, 2009-1030 (Fed. Cir. Feb. 5, 2010), the Federal Circuit emphasized that “the trial court must carefully tie proof of damages to the claimed invention’s footprint in the market place.”  The court in specifically admonished trial courts that “[a]ny evidence unrelated to the claimed invention does not support compensation for infringement but punishes beyond the reach of the statute.” (Id. at 14)