IP Marketplace
Finnegan’s monthly update on developments affecting licensing and other IP transactions

February 2017

Court Permits Evidence from Damages Expert that Relies on Forward Citation Analysis, Comparable Settlement Agreements, and Preference for Lump Sum Agreements
by John C. Paul, D. Brian Kacedon, and Rhianna L. Lindop Ph.D.
Determining the right amount of damages in patent infringement cases often involves complex analyses provided by damages experts. When requested, courts will exclude an expert’s report or testimony where it is unreliable. A District Court in Pennsylvania recently denied the litigants’ requests to exclude each other’s expert reports for determining reasonable royalty damages. According to the court, the license agreements and the experts’ methods for calculating damages were reliable for the purposes they cited.

Induced Infringement Requires Active Encouragement that Results in Direct Infringement
by John C. Paul, D. Brian Kacedon, and Robert C. MacKichan III
The Supreme Court found that damages for infringing a design patent on features of a smartphone can be based on profits from the components with the infringed designs and does not need to be based on total profits for the entire smartphone. The relevant “article of manufacture” with the infringed design must be identified, which may be a component of a multicomponent product, then the infringer’s total profit on that article of manufacture is calculated. The Court declined to further provide a test for identifying the relevant article of manufacture.

Willful Infringer Is Not Entitled to a Reasonable Profit from Future Infringing Sales—Ongoing Royalty Rate May Substantially Exceed Past Infringement Royalty Rate
by John C. Paul, D. Brian Kacedon, and David C. Seastrunk
A Florida court awarded an ongoing royalty rate for future infringement that was twice the royalty rate awarded by the jury for past infringement and noted that an ongoing infringer should not expect an ongoing royalty rate to be set low simply to allow the infringer to make a reasonable profit.

PTO Invalidity Decisions Cannot Be Appealed as a Matter of Right: Unsubstantiated Allegations of Injury to Licensing Opportunities Are Insufficient to Confer Standing for Federal Circuit Appeal
by John C. Paul, D. Brian Kacedon, and Laith Abu-Taleb
Constitutional standing requirements to bring an action in a federal court do not necessarily apply when bringing an action before an administrative agency like the Patent and Trademark Office’s Patent Trial and Appeal Board ("PTAB"). As a result, while a validity challenge may be brought at the PTAB, an adverse decision by the PTAB may not necessarily be appealed to a federal court unless those constitutional standing requirements are met. In Phigenix, Inc. v. ImmunoGen, Inc., the appellant’s allegations of injury, based on hypothetical licensing revenues expected if it had won its invalidity challenge at the PTAB, were found to be too hypothetical to adequately show actual injury necessary to establish standing.

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Patent App[eals]® includes PDFs of all patent-related Federal Circuit decisions dating back to 2001. A user can search on keywords, judges, dates of decisions, lower court from which the case was appealed, case name, case number, and whether or not a case was heard en banc. In addition, if the decision was summarized for Federal Circuit IP blog, the Finnegan case summary is included.
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DISCLAIMER: The information contained herein is intended to convey general information only and should not be construed as a legal opinion or as legal advice. The firm disclaims liability for any errors or omissions and readers should not take any action that relies upon the information contained in this newsletter. You should consult your own lawyer concerning your own situation and any specific legal questions. This promotional newsletter does not establish any form of attorney-client relationship with our firm or with any of our attorneys.

If you have any questions or need additional information, please contact:
John C. Paul, Editor
D. Brian Kacedon, Editor
Robert D. Wells, Editor
Robert C. MacKichan III, Editor



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