Buch, Englisch, 186 Seiten, Format (B × H): 156 mm x 236 mm, Gewicht: 298 g
A Litigator's Guide to Economic Models and Other Damage Strategies
Buch, Englisch, 186 Seiten, Format (B × H): 156 mm x 236 mm, Gewicht: 298 g
ISBN: 978-0-19-976756-4
Verlag: Oxford University Press
Written by an expert practitioner with over twenty years of trial experience in complex patent
infringement, trademark, and copyright litigation
Provides patent litigators and in-house counsel with multiple perspectives and a wealth of strategic
information regarding patent infringement claims and awarded damages
Organizes vital aspects of a patent damages case, including the key factors in determining reasonable
royalty rate evaluations of the various prosecution and defense strategies, and helpful tips on how to
build the best possible case
This second edition discusses the Federal Circuit's decision in Lucent v. Gateway on the entire market
rule and damages allocation, as well as subsequent decisions which have employed ist reasoning
New developments include whether plaintiffs can use licenses obtained in litigation to prove an
"established royalty" under Georgia-Pacific factor No.1; and courts awarding ongoing royalties instead of
imposing injunctions
Winning the Patent Damages Case, by Richard F. Cauley, is a guide for patent litigators and in-house counsel who are either considering an action for patent infringement or who are facing the spectre of a lengthy, expensive litigation. It offers readers an analytical framework for determining the likely damages award in a patent case, which is critical to the decision of whether to settle the case and for how much. It provides valuable information on how to structure the patent case from the outset and assists accused infringers in how to prepare a "shadow" damages case that may result in a much more reasonable damages award in the event of a loss. The book also provides practical suggestions on how to select and work with a damages expert.
The second edition discusses the Federal Circuit's decision in Lucent v. Gateway on the entire market rule and damages allocation, as well as subsequent decisions which have employed ist reasoning. This decision marks a sea change in awarding damages where the patented technology is a small component or feature in an infringing product. The discussion centers on the implications of this decision on future damages awards for such patents, how this decision is likely to be used by the courts in the future, and how litigants need to change the way they manage their damages cases to account for this change in the law.
Other new developments include whether plaintiffs can use licenses obtained in litigation to prove an "established royalty" under the Georgia-Pacific factor No.1; and courts awarding ongoing royalties instead of imposing injunctions.
Zielgruppe
Patent litigators, in-house counsel, or any attorneys considering an action for patent infringement or are facing a patent infringement action
Autoren/Hrsg.
Fachgebiete
Weitere Infos & Material
SECTION I: Background and Initial Considerations of the Patent Damages Case
Chapter 1. Winning the Reasonable Royalty Case
1.01 The Brief Early History of the Reasonable Royalty Remedy
[A] The Pre-codified Reasonable Royalty Remedy
1.02 The Modern Era of Reasonable Royalty Begins - Georgia Pacific
[A] List of Factors
[B] Consideration of Rigorous Economic Analysis
Chapter 2: Introducing the Combatants
2.01 The Plaintiff (Types of Plaintiffs-Six Categories)
[A] The Dominant Competitor
[B] The Minor Competitor
[C] Non-Producing Entities (NPEs)
[D] Universities
[E] Patent Trolls
[F] Individuals
2.02 The Defendant
Chapter 3. Stranger than Fiction - Imagining the Hypothetical Negotiation
3.01 Applying Game Theory to Hypothetical Negotiation
[A] A Zero Sum Game
[B] Perfect Exchange of Information
[C] You Can't Walk Away
[D] Date of Infringement
[E] Assumption of Validity
3.02 Determining the Reasonable Royalty Value
[A] Game Theory & The Lemney/Shapiro Analysis
[B] Injunctions
[C] Two More Variables
SECTION II: A Strategic Look at the Georgia-Pacific Factors
Chapter 4. Finding the Price of the Patent -- Is there an Established Royalty?
(Factor 1: The royalties received by the patentee for the licensing of the patent in suit, proving or tending to prove an established royalty)
4.01 Relevance and Application
4.02 Economic Criteria
[A] Market Price
[B] Time Constraints
[C] Example
4.03 The Defendant's Established Royalty Strategy
[A] Uniform Royalty/ Licensing Rates
[B] Success or Failure of Market Rates?
4.04 The Plaintiff's Established Royalty Strategy -Considerations
[A] Number of Licenses
[B] Patent-in-Suit
[C] Time Period of License
[D] Example Case: Monsanto Co v. McFarling
[E] Lump Sum & Paid Up Royalties (Example Cases)
[F] Effects on Royalty of Widespread Infringement
4.05 Analysis
4.06 Discovery
[A] Obtaining Licensing Materials
[B] Knowing the Patent's Utility
[C] Economic/Market Models
[D] Using Your Expert and Attacking Your Opponent's
[E] Particular Issues Where Plaintiff Is an NPE
Chapter 5: Gauging the Infringer's Price Range -- Licensing-in Practices
Factor 2: The rates paid by the licensee for the use of other patents comparable to the patent in suit.
5.01 Relevance and Application
5.02 Analysis
[A] Determining the Type of Patented Technology
[1] Core Technology
[2] Peripheral Technology
[B] Is the Patented Technology Essential to the Product?
[C] Defendant's Strategy
5.03 Discovery and Using Your Expert (and Attacking Your Opponent's)
Chapter 6: Keeping it Exclusive - How Valuable is that License?
Factor 3: The nature and scope of the license, as exclusive or non-exclusive; or as restricted or non-restricted in terms of territory or with respect to whom the manufactured product may be sold.
6.01 Relevance and Application
6.02 Analysis
[A] Who Makes (and How to Make) the Exclusive License Argument
[B] Defendant's Strategy
6.03 Discovery
[A] Use Your Economic Experts
[B] If the Plaintiff is an NPE
Chapter 7: Keeping it to Yourself - the Hypothetical Negotiation Where the Seller Doesn't Want to Sell
Factor 4: The licensor's established policy and marketing program to maintain his patent monopoly by not licensing others to use the invention or by granting licenses under special conditions designed to preserve that monopoly.
7.01 Relevance and Application
[A] Sample Scenario: Tiny Motors Corp.
[B] Establishing Historical Practices
7.02 Analysis
7.03 Discovery and Using Your Experts
Chapter 8: Selling Your Enemy the Stick to Beat You With - The Hypothetical Negotiation Where the Plaintiff and Defendant Compete
Factor 5: The commercial relationship between the licensor and licensee, such as, whether they are competitors in the same territory in the same line of business; or whether they are inventor and promoter.
8.01 Relevance and Application
8.02 Analysis
8.03 Discovery
