Monday, April 17, 2023

Some Recent Papers on Damages, Injunctions

1.  Catherine J. Canby has published a note titled Pushing the Boundaries:  Extraterritoriality, Patent Infringement Damages, and the Semiconductor Industry, 101 Tex. L. Rev. 955 (2023).  It’s available on Westlaw but is not yet up on the Texas Law Review’s website.  Here is the abstract:


 Boundaries are a foundational characteristic of patent systems across the globe. However, the extent to which the territorial boundaries reach remains an open question. It is a long-held tenet of patent law that patent owners may recover against infringers. But in considering patent damages and extraterritoriality, two basic principles of U.S. patent law are seemingly placed in juxtaposition: first, that patent owners are entitled to full recovery, and second, that patent rights are fundamentally domestic in nature.


An extraterritorial application of law is the extension of a country's law to conduct outside the territorial confines of that country. Recently, the Federal Circuit considered a trilogy of cases addressing extraterritoriality in the context of patent damages. In these decisions, the Federal Circuit relied heavily on the presumption against extraterritoriality, emphasizing a rigid view of territoriality in determining damages for patent infringement. In all three of the cases, the court declined to award lost profits for foreign sales. Flowing from a domestic act of infringement.


Opening the aperture slightly, the Supreme Court held in 2018 that a patent owner can recover "lost foreign profits" arising from an act of infringement under 35 U.S.C. § 271(f). Under this provision, a patentee may recover damages when an infringer supplies or exports components of a patented invention originating in the United States with the intent that the components be combined in an infringing manner abroad. This Note considers the extent to which the Court's decision can be applied to infringement under other provisions, such as §271(a), which defines direct infringement of a U.S. patent. Although various scholars have debated this topic, this Note extends beyond the current literature by exploring the impact of these judicial decisions on the U.S. semiconductor industry. An extension of patent damages would augment domestic policy designed to stimulate U.S. competitiveness in the global semiconductor arena. Using the semiconductor industry as a paradigm, this Note ultimately concludes that allowing patent owners to recover damages for extraterritorial losses arising from infringement under § 271(a) will likely lead to more benefit than harm.

2. George Derpanopoulos, Jaci Overmann, and C. Paul Wazzan published an article titled The Use of Conjoint Analysis in High-Stakes Litigation:  A Historical Review up to Navarro et al., v. Procter and Gamble, Which Withstood a Rigorous Daubert Challenge, 102 J. Pat. & Trademark Off. Soc’y 526 (2022).  Here is the abstract, and here is a link to the paper on the website of BRG, the firm that employs one of the authors:

The use of conjoint analysis has become increasingly common in litigation including in, among others, patent infringement cases (for example, how much does the patented feature increase the value of the overall product), deceptive advertising cases (for example., how much demand was driven by the representation of a product as “organic”), copyright infringement cases (for example, how much profit was driven by the use of a copyrighted image on product packaging), product liability cases (for example, how much of a car’s overall sales are driven by the inclusion of antilock brakes), and data privacy cases (for example, how much do users value their personal information). As the use of conjoint analysis has increased, so have the incidences of courts rejecting these types of analyses. This article: (1) reviews the mechanics of conjoint analysis; (2) briefly summarizes recent matters where the approach was used and accepted (or rejected) by the courts; (3) draws some inferences based on these cases; and (4) concludes with a detailed presentation of a recent case where conjoint analysis was successfully used resulting in a detailed court opinion that is summarized here. The objective of this article is to provide the reader with a comprehensive overview of the current state of the art in the use of conjoint analysis in litigation.

I was not aware of the article until the other day, when James Nieberding published an essay on Law360 titled How Willingness to Pay Informs Damages Methodology, citing the article.

3. Matthieu Dhenne has published a comment titled Preliminary Injunctions Based on a Patent Application:  A Justified Solution? (Fingolimod Case), 45 EIPR 236 (2023).  Here is the abstract:

In a decision of June 3, 2022, opposing NOVARTIS and BIOGARAN, the Tribunal Judiciaire de Paris ("Paris High Court") accepted the admissibility of a request for provisional measures based on a European patent application. This solution, however surprising it may seem at first sight, could nevertheless be justified.

For previous discussion of this issue, which has come up in other European jurisdictions in cases involving the same pharmaceutical product, see the materials cited on this blog here.

4. Menglin Sun published a note titled The Jury’s Role in Granting Reasonable Royalty:  Right or Wrong?, 50 AIPLA Q.J. 335 (2022).  The article, which is available to AIPLA members on AIPLA’s website but is not yet up on Westlaw or on Hein Online, argues that under 35 U.S.C. § 284, the determination of a reasonable royalty is a matter for the jury (in a jury trial), not an equitable remedy to be determined by a judge.  Although this is consistent with U.S. practice, the author discusses the arguments for and against this interpretation, before concluding that current practice is legally correct.

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