Posts Tagged: "Georgia-Pacific factors"

Mega Awards Likely to Highlight Unpredictability of U.S. Patent Damages Law

Calculating damages in patent infringement suits is a high-stakes, complex matter of law and economics that often starts with the Georgia Pacific factors at the district court and ends with recalculation by the Federal Circuit or an order for a new damages trial. The fight over damages at the conclusion of a patent infringement trial is always contested, and one issue lost, or one inappropriate calculation, can easily skew the math dramatically. Factor in compounding pre-judgment and post-judgment interest, as well as a potential enhancement multiplier for willful infringement under 35 U.S.C. 285, and it is easy to understand why parties fight over everything relating to damages calculations.

Gene Quinn

June 27, 2021

Understanding Damages Calculation in SEP Litigation

Courts around the world have determined appropriate methodologies for calculating damages on standard essential patents (SEPs) for which patent holders have made an assurance to license on fair, reasonable and non-discriminatory (FRAND) terms. Determinations of patent holdup, licensee holdout, use of worldwide portfolio licensing, incremental value rule, etc. are included in these decisions. The court determines damages based on the below-referenced judgments and FRAND terms when reviewing SEP infringements. Under most patent laws, infringement damages are set based on factors including actual loss due to infringement, if the actual loss is difficult to determine, gains of the infringer, and if both actual loss and gains are not available—determination of appropriate multiples of a reasonable royalty fee.

Rahul Vijh

January 30, 2021

Enabling Technologies and the Underinvestment Problem

Certain innovations—known as enabling technologies—provide the foundation for progress across a range of industries. Enabling technologies include mobile wireless, the laser, CT scanners, the microprocessor, artificial intelligence, and freight containerization. Such technologies drive wealth creation throughout the economy. However, the difficulties associated with monetizing this type of IP, which I explore in this article, mean that private enterprise tends to underinvest in new enabling technologies. Public policy needs to be more supportive, and firms need to be willing to support more blue-sky projects. As a nation, we are harvesting the fruits of old enabling technologies without investing sufficiently in new ones. We are eating our seed corn.

David Teece

July 10, 2018

Supreme Court Refuses Microsoft Appeal in Alcatel-Lucent Case

Earlier today the United States Supreme Court denied Microsoft Corporation’s petition for writ of certiorari in Lucent Technologies, Inc. v. Gateway, Inc. et al, with Microsoft being among the “et al.” While the Federal Circuit affirmed the validity and infringement aspects of the underlying decision of the United States Federal District Court for the District of Southern California, the Court vacated and remanded the damages portion to the district court for further proceedings because the damages calculation lacked sufficient evidentiary support. Despite the Federal Circuit vacating and remanding of the damages award of $357.69 million Microsoft appealed to the Supreme Court, an appeal that will never happen with the denial of the petition for writ of certiorari.

Gene Quinn

May 24, 2010

CAFC: Reliance on Unrelated Licenses Doom Damage Award

the patented technology involved screen recognition and terminal emulation processes to download a screen of information from a remote mainframe computer onto a local personal computer (PC). Basically, the patented technology facilitated the ability of the PC to operate like earlier “dumb terminals” in recognizing information sent by a mainframe connected to the PC. The alleged infringing terminal emulator program called “NewLook” was developed in Australia (by Looksoftware Proprietary Limited) but was sold by Lansa, Inc. (Lansa) in the U.S.

Eric Guttag

February 8, 2010