Damages for Industrial Property Infringement in France

Grégoire Desrousseaux, Mayeul Ottaviani, and Louis Jabert have published an article titled L’évaluation du prejudice de la contrefaçon devant les juridictions françaises, Propriété Industrielle (“Quantifying infringement harm before the French courts”), Sept. 2025, pp. 15-26.  I highly recommend the article to anyone who wants to understand how the French courts calculate damages for the infringement of patents, trademarks, and designs.  The abstract reads as follows (my translation):

 

The transposition into French law of the damages calculation rules of Directive 2004/48/CE has caused a lot of ink to flow.  The authors have attempted an empirical, cross-sectional approach for the amount and calculation of damages, in compiling the accessible decisions rendered between 2016 and 2025 concerning patents, trademarks, and design and models.  An objective was to analyze, concretely, how the parties and the courts make use of the economic factors (often incomplete) to which they have access, to justify their demands and to guide their decisions.  Another objective was to try to identify—if they exist—the most common methods of calculation.

The article is enlightening.  The authors identified 52 decisions from the relevant time period, decided by courts of first or second instance (juridictions du fond), consisting of 26 patent decisions, 19 trademark decisions, and 7 involving designs and models.  They divide these into two basic categories, paragraph 1 and paragraph 2, reflecting the division set forth in the relevant statutory provisions for patents, trademarks, and designs, which for all three reads the same, to wit (again, my translation):

            For assessing damages and interest, the court takes into account distinctly:  (1) the negative economic consequences of the infringement, including lost profits and the loss sustained by the injured party; (2) the moral prejudice incurred by the latter; and (3) the profits realized by the infringer, including the intellectual, material, and promotional investments which the latter has derived from the infringement.

    

            However, the court may, alternatively and upon request by the injured party, award damages as a lump sum.  This amount is higher than the royalties or fees that would have been due if the infringer had requested authorization for the use of the right infringed.  This sum does not exclude compensation for moral prejudice inflicted upon the injured party.

According to the authors, 45 of the 52 cases (87%) made use of the first paragraph, and only 7 (13%) the second.  Of those falling into the first class, they found 4 that (wrongly, in their view) cumulated (that is, added together, if I understand correctly) lost profits with infringer’s profits.  15 were based on lost profits, 24 on infringers’ profits, and 2 used a mixed methodology (meaning that the amount awarded fell in between lost profits and infringers’ profits).  They describe the formula for lost profits as follows:  (1) the number of infringing products sold by the infringer, (2) multiplied by the price at which the plaintiff would have sold those products, (3) multiplied by the plaintiff’s profit margin, (4) multiplied by the taux de report—a term I find difficult to translate into idiomatic English, but which they define as the percent of the infringing products the plaintiff would have sold but for the infringement—(5) multiplied by the taux de pondération (the percent by which the infringed right contributed to the infringer’s sales).  The formula for calculating the infringer’s profits is:  (1) the number of infringing products sold by the infringer, (2) multiplied by the price at which the infringer sold them, (3) multiplied by the infringer’s profit margin, (4) multiplied by the taux de pondération.   They also find that plaintiffs frequently request and frequently are granted some amount for moral prejudice.  Finally, they remark that courts have a fair amount of discretion in applying the rules; they do not have to follow a strictly mathematical rule, and sometimes the relevant evidence (e.g., of consumer  behavior) have to be estimated qualitatively rather than quantitatively.

2024 US-China Patent Valuation and Damages Workshop

A workshop report titled The 2024 Patent Valuation and Damages Workshop: A US-China Comparative Law Perspective is available on ssrn, and should be of interest to anyone following U.S. and Chinese patent and/or SEP litigation.  I remotely delivered a presentation on compensatory patent damages in the U.S. at the workshop, which was held in May 2024 and included presentations by several other U.S. and Chinese participants.  Here is a link to the report, and here is the abstract:

This report summarizes the proceedings of the 2024 Patent Valuation and Damages Workshop: A U.S.–China Comparative Law Perspective, jointly organized by the Berkeley Asia IP & Competition Law Center (BAIC), Berkeley Center for Law and Technology (BCLT), KoGuan School of Law at Shanghai Jiao Tong University, and the Institute of Intellectual Property and Competition Law. Held in Shanghai on May 28, 2024, the workshop convened leading judges, scholars, practitioners, in-house counsel, and economists from both countries to examine the evolving frameworks for patent damages and valuation. As the inaugural workshop on patent law and practice from a U.S.–China comparative perspective, pioneered by BAIC and BCLT, it explored compensatory damages (lost profits, reasonable royalties, price erosion, apportionment), punitive damages and their deterrence effects, the challenges of valuing and licensing standard-essential patents (SEPs), and the “important but limited” role of judicial rate setting in shaping technology markets. With attention to both theoretical underpinnings and practical case studies, the report highlights key similarities and divergences in practice, as well as the implications for global patent litigation and licensing. By capturing this pioneering comparative dialogue, the report provides valuable insight into the jurisprudential evolution of patent remedies and their broader policy context in the world’s two largest innovation economies.

From Around the Blogs

1. On SpicyIP, Ambika Aggarwal has published two posts (here and here) concerning the Supreme Court of India’s recent decision dismissing an appeal from a 2023 Delhi High Court judgment in Ericsson v. Competition Commission of India (CCI), previously reported on this blog here, holding that the “CCI cannot exercise jurisdiction over actions of an enterprise that are in exercise of their rights as a patentee.”  Although the Supreme Court's decision is apparently not publicly available yet, it is reported that the Court dismissed the action on the ground that the parties had, in the meantime, settled their dispute.  Dr. Aggarwal argues, persuasively in my view, that the current state of affairs in India leaves a gap in antitrust oversight of SEP-related issues, and is at odds with the positions taken in other major markets including the E.U., the U.K., China, Japan, and Korea.  For discussion on ip fray as well, see here and here.

2. Enrico Bonadio has published two posts on SEP matters on the Kluwer Patent Blog.  The first, titled Judgment Without Trial:  The Erosion of Appellate Restraint in UK Patent Law, takes issue with the Court of Appeal’s decision in Optis Cellular Tech. LLC v. Apple Retail UK Ltd., [2025] EWCA Civ 552 (previously discussed on this blog here), increasing the award of global FRAND royalties from $56 million to $502 million.  Professor Bonadio contrasts this result, which he views as the appellate court improperly serving as finder of fact, with the Federal Circuit’s en banc decision in EcoFactor v. Google (previously discussed on this blog here), which after reversing the trial court for admitting expert testimony in violation of the rules of evidence remanded for a new trial on damages.   He also recently published a post titled Restoring Balance in SEPs Governance—Next Steps for the EU After the Regulation’s Withdrawal.  He argues, inter alia, that a step forward “would be a strategic referral to the CJEU that addresses the gaps and inconsistencies left by Huawei v. ZTE.”

3.  Also on Kluwer, Jiří Slavík published Substantiating Infringement (or Risk Thereof) at the UPC:  Divide & Conquer or One to Rule Them All?, discussing, inter alia, UPC decisions on whether courts may grant preliminary or permanent injunctions throughout all of the contracting member states (CMSs) and, after BHS Hausgeräte (discussed on this blog here) non-CMSs as well.

Federal Circuit Directs District Court to Reconsider Expert Testimony in Light of EcoFactor

This morning the Federal Circuit released a precedential decision in Jiaxing Super Lighting Electric Appliance Co. v. CH Lighting Technology Co., opinion by Judge Dyk joined by Judges Chen and Hughes. Plaintiff Super Lighting sued defendant CH Lighting for the infringement of U.S. Patent Nos. 10,295,125, 10,352,540, and 9,939,140, all relating to LED tube lamps.  CH Lighting conceded infringement but not validity of the ’125 and ’540 patents; the district court, however, excluded “evidence relating to the validity of the asserted claims of the ’125 and ’540 patents and subsequently granted Super Lighting’s motion for judgment as a matter of law (“JMOL”) that the ’125 and ’540 patents were not invalid on the ground of an on-sale bar. A jury found the ’140 patent infringed and not invalid and awarded damages for infringement of claims of the three patents” (p.2).  For evidentiary reasons which I will not go into here, the Federal Circuit holds that the district court erred in excluding evidence pertaining the invalidity of the ’125 and ’540 patents and should conduct a new trial on that issue (but “substantial evidence supports the jury’s verdicts of infringement and no invalidity” as to ’140).  Relevant to this blog, the court also holds that “the district court should assess the reliability of [Super Lighting expert] Ms. Kindler’s testimony consistent with this court’s recent en banc decision in EcoFactor and under Rule 702 of the Federal Rules of Evidence,” and thus orders a new trial on damages as well, for the following reasons.

First, and more obviously, “having reversed the district court’s grant of JMOL as to invalidity of the tube patents and ordering a new trial on this issue, a new trial as to damages is appropriate because “the jury rendered a single verdict on damages, without breaking down the damage attributable to each patent.” Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1310 (Fed. Cir. 2007)” (pp. 17-18).

Second, and of greater interest insofar as it applies EcoFactor, Inc. v. Google LLC (for previous discussion of which on this blog, see here), the court discusses whether the district court paid sufficient attention to the reliability of the plaintiff’s damages expert’s methodology.  The court describes this methodology as follows:

At trial, Ms. Kindler relied on Super Lighting’s previous portfolio licenses with Technical Consumer Products (“TCP license”) and Lunera Lightning, Inc. (“Lunera license”)—along with evidence from Super Lighting—to propose a per-unit royalty based on a hypothetical negotiation. The TCP licensing agreement involved a 30-cent per-unit royalty, and the Lunera license involved a flat 5% fee (which she calculated would translate to a per-unit royalty fee between 35 and 45 cents). Although the Lunera and TCP licenses granted a license to Super Lighting’s entire patent portfolio, Ms. Kindler opined that three particular patents comparable to the asserted patents drove the negotiations. Specifically, Ms. Kindler observed that a “subset of patents” comparable to the three asserted patents “drove th[e] negotiation” with TCP . . . based solely on a document sent from Super Lighting to TCP alleging that TCP might be infringing 15 of Super Lighting’s patents . . . and similarly, that patents comparable to the asserted patents were “very important patents to Super Lighting’s portfolio” during the Lunera negotiation . . . based solely on discussions with Super Lighting personnel” (pp. 18-19).

The court then addresses the question of whether this methodology was sufficiently reliable in view of EcoFactor:

In its pretrial Daubert motion and motion for a new trial, CH Lighting argued that Ms. Kindler’s testimony was not reliable and that she failed to apportion the license fees to account for licensed patents that were not asserted. The district court denied CH Lighting’s Daubert motion without explanation. Our recent en banc decision in EcoFactor, Inc. v. Google LLC, 137 F.4th 1333 (Fed. Cir. 2025), noted that “[a]n absence of reviewable reasoning may be sufficient grounds for this court to conclude the district court abused its discretion.” Id. at 1338. Though the district court briefly elaborated in its decision denying a new trial, it should have conducted a more exacting analysis of Ms. Kindler’s testimony. . . .

 

On remand, the district court should consider the reliability of Ms. Kindler’s expert testimony in light of EcoFactor, with a particular focus on whether “she reasonably rel[ied] on [the] kinds of facts or data in forming an opinion” that would be reasonably relied upon by an expert in her field. Fed. R. Evid. 703. See, e.g., EcoFactor, 137 F.4^th at 1344 (finding the patentee’s CEO’s testimony insufficient to sustain Mr. Kennedy’s methodology because the CEO “reference[d] no evidentiary support” and because “[his] claim regarding calculation of the lump-sum amounts is not supported by any record evidence”).

 

In the context of patent damages, we have repeatedly explained that the damages expert must apportion among licenses. Apple Inc. v. Wi-LAN Inc., 25 F.4th 960, 971 (Fed. Cir. 2022). We have explained that expert testimony should be excluded when it fails to allocate license fees among the licensed patents covered by an agreement. MLC Intell. Prop., LLC v. Micron Tech., Inc., 10 F.4th 1358, 1374–75 (Fed. Cir. 2021) (affirming a Daubert exclusion of a damages expert who relied on an “agreement grant[ing] a license to a portfolio of forty-one U.S. and international patents and patent applications[] [when] only one of those forty-one patents [was] at issue in the hypothetical negotiation”); Omega Pats., LLC v. CalAmp Corp., 13 F.4th 1361, 1380 (Fed. Cir. 2021) (vacating a damages award when the patentee’s expert “failed to adequately account for substantial distinguishing facts between the proffered licenses and a hypothetical negotiation over a single-patent license to the [asserted] patent” (internal quotation marks and citation omitted)).

 

On remand, the trial court must consider whether Super Lighting properly apportioned damages. If there is a problem with Ms. Kindler’s damages testimony, her testimony cannot be justified simply because she made a series of blanket upward and downward adjustments based on such factors as the level of competition between the parties and changes in the price of LED tubes. . . . See Apple, 25 F.4^th at 972–74 (concluding that a damages expert’s flat 25% discount for five unasserted patents covered by a previous licensing agreement was unreliable).

 

In a new trial on damages, these concerns may form the basis for a Daubert motion (pp. 20-21). 

As you can see, the court cites with approval recent Federal Circuit decisions that envision a more searching inquiry into the reliability of a damages experts' testimony on the issue of apportionment, something the en banc decision in EcoFactor did not expressly engage.  (See here.)  What the result will be on remand, of course, remains to be seen.

Two Recent Discussions on Experts

1.  Hot-tubbing—a practice which typically takes the form of judges asking questions of  expert witnesses concurrently—is a topic I have touched upon a few times in the past, particularly as it may related to expert testimony concerning damages in IP cases (see here and here).  Samuel Kim has now published a paper on the topic, titled Post-Daubert:  Expert Hot-Tubbing as a Workable Tool for Trial Judges, 34 Fed. Cir. B.J. 121 (2025).  Here is a link, and here is the abstract:

 

Expert evidence plays an undisputedly important role in today’s courts. Judges must decide highly technical issues, and jurors must make difficult decisions based on complex, often partisan, expert testimony. Rule 702 of the Federal Rules of Evidence establishes trial judges’ gatekeeping role for expert testimony, and federal judges continue to face difficulties performing such role.

 

This Note argues that "hot-tubbing," the practice of both parties’ expert witnesses testifying concurrently in a courtroom, empowers trial judges by enhancing their comprehension of scientific evidence. This Note demonstrates that hot-tubbing is a workable tool to elevate judicial competence and suggests specific instances in which hot-tubbing proves particularly effective, such as in a Daubert hearing, Markman hearing, or a complex commercial litigation jury trial. This Note concludes with a proposed amendment to the Federal Rules of Evidence to bridge the gap of awareness and motivate judges to consider implementing hot-tubbing in their courtrooms.

2.  On Law360 today, Amy Rowe, Taylor Rubinato, and Andrew Tepperman published Prospects and Challenges for Expert Evidence at the UPC.  The authors predict that expert evidence on economic issues, including evidence on the effects of granting an injunction and on damages, will become “highly relevant in the near term,” especially after the CJEU’s decision earlier this year in BSH v. Electrolux (itself the subject of an interesting post this morning on IPKat, titled How has the UPC responded to BSH v. Electrolux over the last three months?)  The authors also note that, given the time it can take to prepare expert reports on damages, counsel may need to think about instructing experts at an early stage.

Google's Reply Brief in EcoFactor Is In

I was planning to blog about the HMD Global Oy v. VoiceAge EMS decision today, but I understand that the decision has been pushed back once again, this time to March 20 (four weeks from today).  So we will wait and see what the Munich Higher Regional Court’s response to the EC’s Amicus Brief looks like then.  Meanwhile, Google has filed its reply brief for the en banc rehearing in EcoFactor, Inc. v. Google LLC, which is scheduled for March 13 (three weeks from today).  The reply brief focuses heavily on the question of whether EcoFactor’s expert’s methodology was sufficiently reliable to satisfy Federal Rule of Evidence 702, arguing inter alia that EcoFactor conflates relevance with reliability, and that reliability is a question reserved for the judge in the exercise of the judge’s gatekeeping function.  Almost makes me feel like I’m back teaching evidence law, something I last did in 2001.  It also drives home how much time and effort we are compelled to devote to patent infringement litigation in the United States, compared to every other country on the planet, because of the constitutional right to trial by jury.