From Around the Blogs Part 1: Damages in Canada, Spain, Taiwan, and the U.S.

1.  On the Sufficient Description blog, Norman Siebrasse has posted a four-part series (here, here, here, and here) on a recent decision of Canada's Court of Appeal, Apotex Inc. v. Eli Lilly & Co.  The decision holds, among other things, that (1) in assessing patent damages a court must consider whether an alleged noninfringing alternative (the existence of which would reduce the amount of damages) was objectively economically viable (thus rendering irrelevant Apotex's assertion that, but-for the infringement, it would have turned to an alternative that was unprofitable); (2) where, as here, use of the asserted noninfringing alternative would have infringed another of the plaintiff's patents, it would not have been an available alternative; and (3) compound interest is available as a "head of damages," but that there is no presumption in favor of its use.  Professor Siebrasse has some insightful observations about the first two of these holdings in particular.

2.  On the Kluwer Patent Blog, Miguel Montañá published a post titled Damages may be considered proven when the facts speak for themselves.  The post discusses a July 2018 decision of the Barcelona Court of Appeal holding that in some instances the "facts speak for themselves," that is, "the existence of damages if intrinsic to the nature of the infringement and does not require special proof."  If I understand correctly, however, the patent owner would still bear the burden of coming forward with evidence as to the amount of its injury, even if the fact of injury is presumed.  Apparently the facts of this particular case showed that the plaintiff was in negotiations with a customer when the defendant supplied that customer with an infringing product.

On a personal note, I will be speaking at one or two forums in Barcelona in late March 2019.  I'm looking forward to returning to one of my favorite cities.

3.  On the IAM Blog, Yulan Kuo published a post titled Taiwan Supreme Court Issues Decision on Unfair Enrichment in Patent Infringement Case.  According to the author, in Koninklijke Philips NV v. Gigastorage Corp. the court reversed the Taiwan IP Court's award of NT$1 billion for unjust enrichment and remanded for further consideration in light of various factors.  If I understand correctly, the court also wants the lower court to consider whether delay in enforcing one's rights might reduce the award, even if the statute of limitations has expired (compare with the U.S. Supreme Court's view in SCA Hygiene).  On a personal note here, I may be visiting Taiwan in the fall of 2019, so perhaps I will have an opportunity to discuss this case then. 

4.  On IP Watchdog, Mark Pedigo published a post titled Use of the Book of Wisdom in Reasonable Royalties, recapping the relevant Federal Circuit and lower court decisions permitting (or not) the use of information post-dating the date of the first infringement, for purposes of calculating reasonable royalties.  Mr. Pedigo concludes that "[u]se and acceptance of the book of wisdom can be relevant and useful, but it is not always allowed by the courts."

For some papers I have coauthored arguing that courts should be more open to the admissibility of such evidence, see here and here.