Transcript Michael Jacobs

June 8, 2013
Presented By
Michael A. Jacobs
©2013 Morrison & Foerster LLP | All Rights Reserved | mofo.com
Three Difficult Patent
Infringement Damages
Questions
How Does One Prove a Patent’s “Footprint”?
• “To be admissible, expert testimony opining on a reasonable royalty
rate must carefully tie proof of damages to the claimed invention’s
footprint in the market place.”
• Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011) (quoting
ResQNet.com, Inc. v. Lansa, Inc., 594 F.3d 860, 869 (Fed. Cir. 2010))
• “If it can be shown that the patented feature drives the demand for an
entire multi-component product, a patentee may be awarded
damages as a percentage of revenues or profits attributable to the
entire product.”
• LaserDynamics, Inc. v. Quanta Computer, Inc., 694 F.3d 51, 67-70 (Fed. Cir. 2012)
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Is the footprint….like this?
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Or Like…This?
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When Must an Invention “Drive” Customer Demand?
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When Must an Invention “Drive” Customer Demand?
• “You must allocate the lost profits based upon the customer demand
for the patented feature of the infringing [product] [method]. That is,
you must determine which profits derive from the patented invention
that [alleged infringer] sells, and not from other features of the
infringing [product] [method].” Northern District of California Model
Jury Instruction 5.2.
• “The Federal Circuit very recently opined that the Panduit factors
‘place no qualitative requirement on the level of demand necessary to
show lost profits,’ see Versata Software, Inc. v. SAP America, Inc.,
[No. 2012-1029, 2013 U.S. App. LEXIS 8838, at *25 (Fed. Cir. May 1,
2013)], thus suggesting that apportionment – at least as consumer
demand stands as a way of showing apportionment – is unnecessary
under Panduit.”
• Brocade Communs. Sys. v. A10 Networks, Inc., No. C10-3428, 2013 U.S. Dist.
LEXIS 69335, at *15-16 n.12 (N.D. Cal. May 15, 2013)
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Are Some Valid and Infringed Patents In-Valuable?
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Are Some Valid and Infringed Patents In-Valuable?
• AVM Technologies v. Intel Corp., 1:10-cv-00610-RGA (D. Del. Jan. 4,
2013) (rejecting microprocessor as royalty base even though smallest
saleable unit; rejecting comparison to portfolio licenses; indicating
intent to strike expert report)
• Q: Just to follow up on the types of market evidence that you would prefer to survey
evidence, can you give us an example?
A: Yes, I’ve always had the sense that if I could, for example, put a company’s chief financial
officer or other company witness on the stand, he or she could give me an idea of the value
of every feature on their product. I mean somebody has got to be able to do that, right?
That’s their business.
And they’ve got to decide which features they put on their products and which they don’t to
compete in the marketplace. But I don’t seem to get that CFO or company person testifying
with that degree of specificity — that is, the dollar value of every feature which must be in
somebody’s file.
Interview with Chief Judge Rader, IP360, Oct. 18, 2012
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