Evolving Patent Damages

• Author: Russell L. Parr
• Profession: President of Intellectual Property Research Associates
• Pages: 471-483

CHAPTER 29

EVOLVING PATENT DAMAGES

As judges make decisions and appeals courts afrm or remand, the determination of patent

infringement damages is continually rened. This chapter discusses unique decisions and

their impact on the future of infringement damages.

In Paice LLC v. Toyota Motor Corp., an appeals court ruled that post-judgment royalty

rate awards, when an injunction is not granted, are not necessarily the same royalty rate that

was determined by the jury for past infringement.

In Bard Peripheral Vascular, Inc. v. W. L. Gore, Inc., it turns out that if you don’t opti-

mize the implementation of your intellectual property, you might just lose it. A decision

in Arizona District Court denied Bard a permanent injunction because Gore made a bet-

ter product using Bard’s patented technology than Bard, even though Bard and Gore were

competitors.

POST-VERDICT ROYALTY RATES

Paice LLC brought infringement action against Toyota Motor Corp., alleginginfringement

of its patents for a hybrid electric vehicle drivetrain. Information about Toyota was obtained

from its website as follows:

ToyotaMotor Corporation primarily conducts business in the automotive industry. Toyotaalso

conducts business in the nance and other industries. Toyota’s automotive operations include

the design, manufacture, assembly and sale of passenger cars, minivans, and commercial vehi-

cles such as trucks, and related parts and accessories. Toyota’s nancial services business

consists primarily of providing nancing to dealers and their customers for the purchase or

lease of Toyota vehicles. Toyota’s nancial services also provide retail leasing through the

purchase of lease contracts originated by Toyota dealers.1

Information about Paice LLC was obtained from its website as follows:

Paice LLC was the vision of Dr. AlexSeverinsky. During the oil crisis of 1979, Dr. Severinsky

conceived the idea for a hybrid gasoline/electric car that could help reduce America’s

dependence on oil. That vision eventually led Dr. Severinsky to form Paice (Power Assisted

Internal Combustion Engines) in 1992 as part of the small company incubator program at

the University of Maryland’s Clark School of Engineering. Later that year, he led a patent

application covering his groundbreaking concepts for a hybrid vehicle. Paice was issued U.S.

Patent No. 5,343,970 (the ’970 patent) in 1994.

The ’970 patent is considered by many as a breakthrough in hybrid technology: Hybrid electric

vehicles increase fuel economy and reduce harmful emissions by combining an electric motor

1Toyota Motor Corporation (2010), Form20-F.

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