Federal Circuit Opinion Asetek Danmark a/s v. CMI USA Inc. Cites Patent Damages Treatise


In a December 2nd opinion by the Federal Circuit, the court cited Patent Damages Law and Practice as a "leading commentary." The comprehensive treatise was co-authored by Chris Marchese, one of the bloggers on this site, and has been cited in numerous district courts as well.

“Nor has CMI shown, as it suggests, that the use of Asetek's per-unit profit in the royalty analysis makes lostprofits damages no longer worth pursuing by patent owners. There are obvious reasons for some patent owners to pursue lost profits. In some circumstances, e.g., where the patent owner is a strong economic monopolist, proof of lost sales caused by the infringement and the profits on those lost sales (as well as loss of profits from sales made at prices lowered by the infringement) may be less uncertain than proof of a reasonable royalty under the standards applicable to the latter. And a lost-profit award can be higher. A hypothetical-negotiation analysis for a royalty considers not only the patent owner's interests, but also the other side of the negotiation table under the particular conditions of the hypothetical negotiation. See Aqua Shield, 774 F.3d at 770–72 & n.1. A lost-profits ASETEK DANMARK A/S v. CMI USA INC. 17 analysis is different, because as a general matter, the patent owner is entitled to be made whole, upon proper proof, for its loss of profits caused by the infringement, without discounting for the rational interests limiting willingness to pay on the infringer's side. Not surprisingly, a leading commentary observes that "[l]ost profits damages frequently bring the patent owner much more than royalty awards" and are sought "in nearly every case in which the patent owner manufactures or sells something that could reasonably be interpreted as competing with an infringer's product." John Skenyon, Christopher Marchese & John Land, Patent Damages Law and Practice § 2:1, at 64 (2015 ed.) (footnote omitted).”