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In reality, then, the statute provides only one category of patent damages – those “adequate to compensate for the infringement.” The statute does, however, set a floor for what constitutes adequate damages – they may be “no … less than a reasonable royalty.” The statute also requires courts, as a part of the damages award, to fix interest and costs against the infringer. In addition, the statute provides that the court can increase damages up to three times the amount found by the jury or assessed by the court. Finally, the statute expressly allows the use of expert witnesses to determine what type of damages to award and to help the jury or court arrive at a reasonable royalty.
The courts have created another form of damages, in addition to the minimum of a reasonable royalty, that may adequately compensate – namely, profits lost by the patent holder due to infringement. Because lost profits damages frequently exceed the amount of a reasonable royalty, patent holders seek lost profits whenever they are recoverable. A hybrid damage award – a split between lost profits and generally reasonable royalty – is also permissible in certain circumstances. The profits the infringer made from the infringement, however, are not permissible damages under the patent statute. Such an award was abolished by the Patent Act of 1946. (The only exception is design patent cases, in which the infringer’s profits are recoverable.)
The law of patent damages has recently come to the forefront, as juries have increasingly awarded large sums for patent infringement. From 1991 to 1996, there were at least eight cases in which patent damages exceeded $100 million. Since then, the number of damages awards that have reached eight – and even nine – figures has steadily risen. Indeed, patent cases now make up a significant number of the largest jury awards in the United States.
Click on any of the following links to see more information on a variety of patent damages topics. These pages also include links to relevant court opinions.
Patent Damages Blog – Chris Marchese has a patent damages blog with frequent updates on the fast-moving world of patent damages. Be sure to visit and follow the blog. You can also follow his damages updates on Twitter, www.twitter.com/patentdamages.
Patent Damages Primer – This page offers an overview on the basic damages-related issues, including lost profits, reasonable royalty, prejudgment and post-judgment interest, limitations on damages, and enhancement of damages.
Reasonable Royalty Methodologies – Courts have applied a variety of methodologies to determine what constitutes a reasonable royalty. This page discusses some of the methodologies.
Patent Reexamination – The number of patent reexaminations sought by defendants in patent litigation is on the rise. Courts frequently stay the litigation when the Patent and Trademark Office grants reexamination, delaying the determination of infringement and validity and hence damages, which can extend the damages period significantly. In addition, if reexamination results in amendment or cancellation of the claims in litigation, an award of damages may be reduced or negated. This link takes you to another section of our website that addresses reexamination issues as they relate to damages.
Prejudgment and Post-Judgment Interest – This page discusses the general principles of prejudgment and post-judgment interest and several cases that underscore the potential importance of prejudgment interest to the overall damages award.
Supplemental Damages—Waiver – This page discusses cases that have found waiver of ongoing damages that arise after the last date of infringing activity presented to the jury, that is, damages that arise between the last act of infringement presented at trial through the trial and thereafter. These cases have found waiver of such damages due to defects in the plaintiff’s key damages pleadings.
Single Damages Verdict, Multi-Patent Case – In some district court actions, the jury is asked to issue a single damages verdict for multiple patents. This page addresses what may happen to the damages verdict if, on appeal, the Federal Circuit reverses liability on less than all patents for which damages were awarded.
Patent Damages Legislative Reform – Before adopting the AIA, Congress considered significantly modifying the patent damages statute, 35 U.S.C. § 284. The efforts of legislative damages reform, however, were not adopted in the AIA. The preceding link takes you to the damages-specific web page that summarizes the unsuccessful efforts to amend the damages statute. To view Fish & Richardson’s general web page on Patent Law Reform, click here.
Patent Damages Myths – This page addresses a number of “myths” related to patent damages. Several myths are identified from the patent owner’s perspective and several from the infringer’s.
Damages for Unpatented Items/Entire Market Value Rule – Patent damages for unpatented items are potentially recoverable in the following situations: (1) the patent holder seeks damages based on an entire machine where the patent covers only a single component of the machine; (2) the patent holder seeks damages for lost sales of unpatented goods sold along with the infringing device (known as “convoyed sales”); and (3) the patent holder seeks damages for sales of spare parts for the infringing machine. The entire market value rule, which is frequently associated only with the first situation, has become increasingly important in recent years. One aspect of patent damages reform considered by Congress involved the entire market value rule. As noted above, however, Congress did not adopt the proposed damages legislation (see link above).
Post-Judgment Royalties (Coming Soon!) – After winning a patent infringement case, if a permanent injunction is not entered, the patent owner may attempt to force the infringer to pay an ongoing royalty for any sales of infringing product post-judgment. (This ongoing royalty obligation is incorrectly referred to as a compulsory license.) Courts have even asked the jury to decide an ongoing royalty rate for patent infringement. The state of the law in this area is evolving, and this page will address issues and cases related to this topic.
If you would like to subscribe to our Patent Damages Alert service so that you can be notified when new information is posted, please click here.
Patent Damages Services
October 25th, 2017 | 1:00 pm EDT
Webinar: Hot Topics in Patent Damages for In-House Counsel
May 3, 2017
Two Fish & Richardson Attorneys Named to "2017 Best Attorneys" List
Fish Litigation Blog
March 24, 2017
Federal Circuit Opinion Astrazeneca v. Apotex Cites Patent Damages Treatise
Author: Christopher Marchese
December 14, 2016
Daily Journal article "How to build Daubert-proof patent damages cases"
Fish Litigation Blog
December 7, 2016
Federal Circuit Opinion Asetek Danmark a/s v. CMI USA Inc. Cites Patent Damages Treatise
Author: Christopher Marchese
January 11, 2016
Fish & Richardson Names Kurt Glitzenstein Leader of 250-Lawyer Litigation Group
November 17, 2015
Q&A with Frank Scherkenbach: Non-Practicing Entities (NPEs)
Author: Frank E. Scherkenbach