Chapter 20 Outline

• Jurisdiction: United States

Chapter 20

Remedies for Patent Infringement

§20.01 Introduction

§20.02 Injunctions

[A] Statutory Basis: 35 U.S.C. §283

[B] Permanent Injunctions

[1] Generally

[2] Federal Circuit Decisions Before eBay v. MercExchange (U.S. 2006)

[3] The eBay v. MercExchange (U.S. 2006) Standard

[4] Appellate Standard of Review

[5] Factor (1): Irreparable Harm

[a] Generally

[b] Causal Nexus Requirement

[i] Apple III (Fed. Cir. 2013)

[ii] Apple IV (Fed. Cir. 2015)

[c] Standard Essential Patents/FRAND Licensing

[6] Factor (2): Inadequate Remedies at Law

[7] Factor (3): Balance of Hardships

[8] Factor (4): Public Interest

[9] Contempt Proceedings for Violation of Permanent Injunction

[C] Preliminary Injunctions

[1] Generally

[2] Preliminary Injunction Factors

[3] Appellate Standard of Review

[4] Choice of Law

[5] Procedural Considerations

[6] Factor (1): Patentee Likely to Succeed on the Merits

[7] Factor (2): Patentee Likely to Suffer Irreparable Harm

[a] Generally

[b] Causal Nexus Requirement

[c] Disproving Irreparable Harm

[8] Factor (3): Balance of the Equities Tips in Patentee's Favor

[9] Factor (4): Injunction Is in the Public Interest

§20.03 Ongoing Royalties for Future Infringements

[A] Generally

[B] Illustrative Decisions

[C] Criticism of Ongoing Royalty Awards

§20.04 Damages for Past Infringements

[A] Statutory Basis: 35 U.S.C. §284

[B] Compensatory Damages

[1] Lost Profits

[a] The Panduit Analysis

[i] Demand for the Patented Product

[ii] Absence of Acceptable Noninfringing Substitutes

[iii] Manufacturing and Marketing Capability

[iv] Amount of Profit

[b] Federal Circuit Expansion of Lost Profits Justification

[c] Price Erosion Damages

[d] Territoriality Issues

[i] Generally

[ii] WesternGeco (U.S. 2018)

[2] Apportionment, Entire Market Value Rule, and Convoyed Sales

[a] Convoyed/Accessory Sales

[b] Entire Market Value Rule Versus Apportionment

[i] Apportionment in Lost Profits Damages

[ii] Apportionment in Reasonable Royalty Damages

[3] Established Royalty

[a] Generally

[b] "Built-In Apportionment"

[4] Reasonable Royalty

[a] Hypothetical Negotiation

[b] Date for Hypothetical Negotiation

[c] Analytical Approach

[d] Rejected 25% Rule of Thumb

[e] Rejected Nash Bargaining Solution

§20.05 Enhanced Damages and Willful...