Damages I

Patent Law

4.19.04

Relief

Issuance Complaint filed in District Court

Preliminaryinjunctionhearing

Damages assessed forthis period if marking

(or actual notice)

Prospective Effect

Final injunction

issues

Remedies: Injunctions

Preliminary Injunction -- 4 Factors:

1. Reasonable likelihood of success2. Irreparable harm3. Balance of hardships4. Impact on public interest

Permanent Injunction• Presumed

Remedies: Patent Damages § 284

• Marking/Notice (required for patented articles; not machines or processes) - §287

• Standard: adequate to compensate fully for injuries proximately caused by the infringement.

• Damage Measures:• no less than a reasonable royalty

• Lost Profits• Reasonable Royalty

• Treble Damages: Willful Infringement• Other Monetary Relief:

• Attorney Fees in exceptional cases• Prejudgment interest

Permanent Injunctions

• Routinely granted.

• Foster v. American Mach & Foundry Co. (CB: 1064)– Rare case.– Balancing the equities.

Damages

• Two measures:– Actual damages– Reasonable royalty

• Actual damages & the problem of proof– Panduit Corp. v. Stahlin Bros. Fibre Works, Inc.

– P. 1069

Panduit Technology

Damages

Two measures:Actual damages

Reasonable royalty

Actual damages & the problem of proof– Panduit Corp. v. Stahlin Bros. Fibre Works, Inc.

(CB:328-29)

Patent owner must prove:1. Demand2. Absence of substitute3. Capability4. Amount of profit

DamagesTwo approaches to substitution:

1. Patentable = unique, therefore, no substitutes.

2. Antitrust, substitution is a function of cross-elasticity of demand. Therefore, there will usually be substitutes.

The Fallback – Reasonable Royalties

• “Hypothetical Bargain” principle

• When? – Date infringement began

• Factors– Do not reward infringement !!– Available noninfringing substitutes?– Does infringer get a profit?

United States Patent 4,373,847 Hipp ,   et al. February 15, 1983 Releasable locking device

A releasable locking device is provided for securing a parked vehicle to an adjacent upright structure. The device includes a first means mounted on the upright structure and a second means mounted on the first means for vertical movement relative thereto between operative and inoperative mode positions. When in an operative mode, the second means is in a raised position and interlockingly engages a portion of the parked vehicle. A third means is provided which releasably retains the second means in an operative mode and prevents accidental movement of the second means from an operative mode position to a lower inoperative mode position. The first means includes guides for restricting movement of the second means to a substantially vertical path.

Inventors: Hipp; Steven J. (Milwaukee, WI); Hahn; Norbert (Cudahy, WI) Assignee: Rite-Hite Corporation (Cudahy, WI) Appl. No.: 260340Filed: May 4, 1981

Other damage theories

• Price erosion• Market share rule• Lost sales of related

but unpatented products

• Post-expiration sales

Not just lost sales, but

lower price—because infringer provides

price competition

Larry Solum, USD Law School

Other damage theories

• Price erosion• Market share rule• Lost sales of related

but unpatented products

• Post-expiration sales

Relative market share of patentee relative to

non-infringers

would remain the

same without the infringer.

Other damage theories

• Price erosion• Market share rule• Lost sales of related

but unpatented products

• Post-expiration sales

Components and other

related products which are normally sold with

the patented product.

Other damage theories

• Price erosion• Market share rule• Lost sales of related

but unpatented products

• Post-expiration sales

Head-start theory.

Competitor cannot enter

market immediatel

y post-expiration.