The case is Bobst SA v. Heidelberg Postpress Deutschland
GmbH, TGI Paris, Sept. 27, 2013, PIBD No. 995, III, at 1585. The
patent in suit is the French portion of European Patent 1170228 A2, for (from
the English translation, here)
a device for controlling the means for feeding sheets into a machine. The
German Bundespatentgericht annulled the German portion of the patent in 2011,
but the patent remains valid in France.
A little
background first on calculating patent damages under French law. As I
explain in my book (pp. 264-65, citations omitted):
French courts often begin their damages analysis by calculating the infringing turnover (la masse contrefaisante), which is equal to the number of infringing products for which the defendant is responsible, multiplied by the price at which the defendant sold them. To calculate lost profits, however, the court estimates the number of sales the plaintiff would have made but for the infringement, taking into account such factors as the plaintiff’s capacity, customer preferences, possible noninfringing substitutes, and so on. It then multiplies this number by (a) the price at which the plaintiff would have sold the products and (b) the plaintiff’s profit margin.
In the present case, there were three sales of infringing
machines: one in May 2006 to Cartolux;
one in July 2007 to TPG; and one to Fellmann that was installed in August 2006,
but then returned to the defendant in July 2009. Among the contested issues were which of these sales should be included within the masse contrefaisante.
First, the court noted first that
the parties accepted the expert’s conclusion that the sale to TPG had cost
Bobst a sale. The court also accepted
the expert’s conclusion that the average sales price of a Bobst machine in 2007
was €1,231,000, and that Bobst’s margin over variable costs was 43%. Bobst therefore suffered a lost profit of €529,300
on the sale lost to TPG.
Second, the
expert had noted that Bobst had not made an offer to Catolux, and concluded that
it wasn’t clear that Bobst would have made this sale absent the infringement;
he therefore wound up excluding this sale from the masse contrefaisante. The
court concluded, however, that Heidelberg’s aggressive pricing policy had
caused Bobst to lose its chance of making an offer that might have interested
Cartolux, and that absent Heidelberg’s infringing conduct Cartolux naturally
would have turned toward Bobst. As a
result, the court estimated that Bobst had a 50% chance of making the sale to
Cartolux absent the infringement, and awarded it one-half of the profits it
would have earned on sale to Cartolux. Using the average 2006 price as the base,
the damages came to €240,000. (Note that this is clearly different from U.S. law,
where a 50% chance of making the sale would not, it seems to me, demonstrate by
a preponderance of the evidence that the sale would have been made. Therefore, Bobst would have received zero
lost profits on this sale under U.S. law, though it would have been entitled to a
royalty. On the other hand, with a 51% chance
of making the sale, Bobst would prevail by a preponderance of the evidence and
get its entire lost profit on that sale.)
Third, as to Fellmann, the court concluded that the masse
contrefaisante is determined from the date the infringement began up until
the date of judgment, here May 27, 2009.
Nevertheless, the defendant argued that the machine sold to Fellmann—which
the court characterized as having been provided on a trial basis (à titre d’essai), and which was, after
all, returned to the defendant, albeit a couple of months after May 27, 2009—should
not be included. The court disagreed, noting
that according to the court-appointed expert the plaintiff had made two offers to
Fellmann in 2006, which were rejected, but that it had succeeded in selling
Fellmann a machine in 2009. The court therefore concluded that Heidelberg’s infringing competition had cost Bobst the ability to make the
sale at an earlier period. (Elsewhere in the opinion, the court refers to the defendant’s
aggressive pricing policy as a factor in its ability to take away business from
the plaintiff.) Bobst
concluded a sale with Fellmann in 2009 for €860,897, a discount of €587,043 (40.54%)
off the €1,447,940 sticker price. Bobst
claimed that it was entitled to recover the discount, on the theory that it
wouldn’t have had to offer it if it had the sale three years earlier. The expert concluded, however, that Bobst
habitually gave clients discounts, and that only 10% off of the €1,447,940 sticker
price, or €144,794, could be allocated to the infringement.
Finally, the court awarded damages for lost sales of
complementary goods that would have been sold to TPG and Cartolux, amounting altogether
to €205,000 and €93,000, respectively.
The court was not convinced that Bobst was entitled to additional damages
it claimed to have suffered as a result of granting higher discounts to other
customers during the period of Heidelberg’s activity.
Re the 50% award for a 50% chance of making the same, in Canadian law the general rule is that “Hypothetical events (such as how the plaintiff's life would have proceeded without the tortious injury) or future events need not be proven on a balance of probabilities. Instead, they are simply given weight according to their relative likelihood:. . . . By contrast, past events must be proven [on the balance of probabilities], and once proven they are treated as certainties.” Athey v. Leonati [1996] 3 SCR 458. Lost profits are also awarded probabilistically in contract cases; eg if profits in a contract for sale of land depend on re-zoning approval, lost profits for breach will be adjusted for the probability that such approval would have been obtained; the plaintiff need not proved on the balance of probabilities that it would have obtained approval. Since determination of lost sales in a patent cases is part of the construction of the hypothetical “but for” would, this implies that the partial award for a loss of a chance is appropriate. The chance that the infringer would have made the sale in any event corresponds with the chance that a tort victim’s pre-existing back condition would have deteriorated in any event. This strikes me as sound as a matter of policy. Otherwise, if there were 100 contested sales, and the patentee would have had a 40% chance of making each sale but for the infringement, its damages would be zero, notwithstanding that it must have suffered a substantial loss. With that said, I am not aware of Canadian patent cases applying a loss of chance approach to individual sales, though the market share approach that is commonly used for large sales volumes seems to me to amount to the same thing.
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