Current Status
Not Enrolled
Price
$69
Get Started
Kathleen Akers
Director | Epsilon Economics
Joanne Johnson, CPA, CLP
Senior Director | Ocean Tomo LLC, a part of J.S. Held

Calculating Patent Damages: Key Developments and Notable Cases Explored | On-Demand Webinar

Broadcast Date: Thursday, April 13, 2023 | 12:00 PM – 01:00 PM ET

In February 2022, the United States Court of Appeals for the Federal Circuit (CAFC) revoked the decisions on Apple Inc. v. Wi-LAN Inc. and California Inst. of Tech. v. Broadcom Ltd. due to flawed expert’s opinion. This resulted in the vacation of previous verdicts of $85 million and $1.1 billion and the remand of new trials on damages. This notable development underscores the significance of an expert’s opinion to be tethered to the facts of the case to ensure its admissibility.

As these, and other notable court rulings, provide considerable implications for the calculation of patent damages moving forward, plaintiffs and practitioners alike must keep themselves apprised of emerging developments.

Listen as IP specialist Kathleen Akers (Epsilon Economics) and experienced testifying expert Joanne Johnson, CPA, CLP (Ocean Tomo LLC) provide an in-depth discussion of the latest trends and notable court rulings impacting patent damages calculation. Speakers, among other things, will also offer useful tools and the best calculation techniques to avoid pitfalls.

In this webinar, you’ll learn:

  • Patent Damages Calculation: Trends and Developments
  • Notable Case Rulings
  • Analyzing Significant Implications on Calculating Patent Damages
  • Best Calculations Tools and Techniques
  • What Lies Ahead

Agenda:

Segment 1:
Kathleen AkersDirector
Epsilon Economics

  • Introduction
  • What is the International Trade Commisssion?
    • Protection of IP rights: unfair import investigations under 19 U.S.C. § 1337 (“Section 337”)
    • Headed by six Commissioners who are nominated by the President and confirmed by the U.S. Senate
    • Three areas of U.S. international trade:
      • Adjudication;
      • Research and analysis; and
      • Maintaining the Harmonized Tariff Schedul
  • What are Section 337 Investigations?
    • To obtain Section 337 remedies, the complainant must establish, among other things, an “industry”1 in the U.S.:
      • Technical Prong: articles protected by the IP
      • Economic Prong: domestic industry
    • Economic Prong:
      • (A) significant investment in plant and equipment;
      • (B) significant employment of labor or capital; or
      • (C) substantial investment in the exploitation of the IP, including through
      • engineering, research and development, or licensing.
  • Economic Implications of ITC Remedies
    • Remedies of a Section 337 investigation include:
      • Limited or general exclusion order prohibiting importation of infringing products into the U.S.
      • Cease and desist order
      • Bond during 60-day Presidential Review Period
      • No damages awarded, but…
    • Popularity of ITC has significantly increased
    • Nearly all ITC complaints also had a concurrent district court case asserting the same underlying claims
  • Recent Case Law
    • Overhead Door and Chamberlain
    • Apple and Ericsson
  • Areas for caution in damages calculations
    • Bond
    • Public interest
  • Conclusion        

Segment 2:
Joanne Johnson, CPA, CLPSenior Director
Ocean Tomo LLC, a part of J.S. Held

  • Introduction
  • Brief overview of Panduit Factor analysis
    • Panduit Corp. v. Stahlin Bros. Fibre Works, Inc.
      • Overview of four factors, with focus on Factors 1 and 2
  • Discussion of notable cases relevant to Factors 1 and 2
    • DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc. (2009)
      •  Demand
        • Factor 1 asks whether there is demand for the patented product as a whole
        • Factor 1 does not require any allocation of demand among the various limitations recited in a patent claim
      •  Non-Infringing Alternatives
        • Factor 2 addresses the elimination or substitution of particular features corresponding to claim limitations
    • Presidio Components, Inc. v. Am. Tech. Ceramics Corp. (2012)
      • Demand
        • Demand is not limited to demand for the patented products.
        • Demand can also arise from a product that directly competes with the infringing device
      • Non-Infringing Alternatives
        • A patentee does not have to prove every instance of no non-infringing alternatives.
        • A patentee only has to show there was a reasonable probability that the sales would have been made but-for the infringement.
    •  Georgetown Rail Equip. Co. v. Holland L.P. (2017)
      • Demand
        • Sales do not have to be made during the damages period to show demand
        • Evidence of demand before the damages period may suffice for Factor 1
  • Discussion of commonly misused cases
    • Mentor Graphics Corp. v. Eve-USA, Inc.
      • Discuss recent denied Daubert motions that cite to Mentor Graphics to support apportionment of demand/apportionment of lost profits
    • Garretson v. Clark, 111 U.S. 120 (1884)
      • Disgorgement of defendant’s profits is an obsolete remedy and is a different remedy from a plaintiff’s lost profits
      • Disgorgement of profits have not been available as a remedy for patent infringement since 1946, when Congress amended the patent statute
  • Conclusion / Wrap-Up

Who Should Attend:

  • Patent Lawyers/Consultants
  • Intellectual Property Lawyers/Consultants
  • Commercial Litigation Attorneys
  • Chief Patent Counsel
  • Chief Intellectual Property Officers
  • Intellectual Property Managers
  • Patent Analysts
  • Patent Agents
  • Patent Managers
  • General Counsel

Register for this course by clicking the “Take this Course” at the top of the page.

CLE Credit:

Course Level: Intermediate | Advance Preparation: Print and review course materials

Method of Presentation: On-Demand Webinar | Prerequisite: General knowledge of patent laws

Course Code: 149915 | Total Credit: 1.0 CLE | 1.0 CPE (Not eligible for QAS (On-demand) CPE credit)

Instructions for Participating the Live Webinar

    • Please Register for the course by clicking the "take the course: button if you have not already registered.
    • Check Your Email – 24 hours before the webinar, you will receive an email with all necessary instructions, including access details and course materials. This information will also be posted here in this window when it is available.
    • Download Course Materials – Course materials will be available for download **24-48 hours before** the live webinar. Be sure to review them in advance. The Link to download is available by clicking the lesson tab.
    • Join the Webinar – Follow the instructions in the email to access the live broadcast at the scheduled time.
    • Note the Secret Words – During the webinar, secret words will be announced periodically. Please write them down.
    • Take the Quiz – After the webinar, click on the quiz link below and enter the secret words to complete the quiz.
    • Print Your Certificate – Upon completing the quiz, you will be able to print your Certificate of Attendance, which includes instructions on how to obtain CLE, CPE, or other applicable credits for the course.
    • On-Demand Access – The on-demand version of this course will be available 24-48 hours after the live webinar. If you miss the live presentation or need to review the content, you will have access to the on-demand version as an enrolled student. To access on-demand content, click the lesson and follow the instructions.
    • Support: If you have any questions, please refer to the email instructions or contact support: support@theknowledgegroup.zohodesk.com.