Patent Infringement Damages: Lost Profits and RoyaltiesFeaturing:
Rick Bero, CPA/ABV, CVA, CLP, CFF, Managing Director at The BERO Group
Yimeng Dou, Ph.D., Partner at Kirkland & Ellis
Date: Wednesday, June 14, 2023,
Time: 12:00 Noon- 1:40 pm (CT) 10:00am-11:40am (PT) • 1:00pm-2:40pm (ET)
CPE Credits: 2.0
Category: Economic Damages & Lost Profits, Intellectual Property
Since 1790, companies and individuals have protected many of their most valuable ideas by obtaining U.S. utility patents. If a direct competitor or other company infringes a company’s or individual’s U.S. patent, the patent owner can sue the accused party or parties for patent infringement in U.S. Federal Court. Patent infringement lawsuits are often complex, contentious and expensive to litigate, and can result in significant damage awards to the patent owner.
If a patent owner can prove another company or party has made, used or sold a product covered by a patent without its permission, the patent owner is entitled, under 35 U.S.C. Section 284, to receive “damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer, together with interest and costs as fixed by the court.”
This program focuses on how expert analysis can help determine damages in patent infringement lawsuits.
1. Understand when lost profits may be applicable, when only reasonable royalty damages may be applicable, or when a combination of lost profits and a reasonable royalty (also known as “market share” damages) may be applicable
2. Understand the four Panduit Factors and how to address them in a lost profits analysis
3. Understand the fifteen Georgia-Pacific Factors and how to address them in a reasonable royalty analysis
4. Understand relevant patent damages case law
• The importance of understanding / defining the Patented Technology at issue
• Lost profits
• The Entire Market Value Rule
• Reasonable royalties
• The hypothetical negotiation
Commercial Success – Using Economic Analysis to Show Patentability
Rick Bero, Managing Director at The BERO Group and
Shane A. Brunner, Partner at Michael Best & Friedrich LLP
Date: Tuesday, December 20, at 12:00 noon - 1:40 pm (CT)
10:00am-11:40am (PT) • 1:00pm-2:40pm (ET)
CLE Credits: 2.0
Category: Case Law, Economic Damages & Lost Profits, Intellectual Property
Understand when a damages expert might formerly address commercial success;
Understand key commercial success considerations and how to address them; and
Understand commercial success case law
Reasons commercial success is relevant
• Nexus between commercial success and the claimed invention
• Sales and profits for products covered by the claimed invention
• Importance of market share, market power and other considerations
To obtain a United States patent, the claimed invention may not be obvious in view of prior art. Whether a claimed invention is obvious often arises during the examination of a patent application by the United States Patent & Trademark Office. After a patent issues, obviousness may again arise as a defense to infringement by an accused infringer in litigation or as a basis for invalidity by a petitioner in post-grant proceedings, such as Inter-Partes Review or Ex Parte Re-examination.
When determining if a patent claim is obvious, four factors are considered: (1) the scope and content of the prior art; (2) differences between the prior art and the claims at issue; (3) the level of ordinary skill in the pertinent art; and (4) secondary considerations, including commercial success, whether the invention addresses long felt but unresolved needs, and failure of others, if any. This program focuses on the commercial success aspect of the fourth factor, and how expert analysis can help demonstrate commercial success or defeat a claim of commercial success.
Proving Lost Profits
Jim McGovern, Senior Director at The BERO Group
Date: April 13, 2022 at 12 noon – 1:00 p.m. CT
1.0 CLE Credit
Lost profits are one of the most difficult types of damages to properly address in disputes. Jim McGovern provided attendees with an overall framework and overview of lost profit damages. He also provided further detail on properly calculating lost profit damages, offering evidence and documentation considerations, as well as, specific issues regarding the cost of capital and discount rates.
The Litigator’s Damages Blueprint: The Pragmatic Solution
— A 5 Step Guide to Pragmatic Damages for Commercial Litigators
Rick Bero, Managing Director at The BERO Group
Date: Wednesday, March 2, 2022
Time: 12:00 noon – 1:00 p.m. (CT)
1.0 CLE Credit
“The Litigator’s Damages Blueprint: The Pragmatic Solution” is a presentation by Rick Bero, managing director of The BERO Group. Rick is a CPA and CVA and has testified as a damages, financial and valuation expert on more than 160 occasions. Rick will work through the concepts and process in his book, The Litigator’s Damages Blueprint: The Pragmatic Solution.
Whether you are representing a plaintiff or defendant, The Litigators Damages Blueprint provides guidance to build a successful damages case. Rick provides an overview of the five damages phases and walks you through the process outlined in the book. He identifies concepts and tools within those phases to help you stay on track to develop and present a strong damages case.