Table of Contents

• Chapter 1. Intellectual Property Overview
  by Michael A. Crain
• Chapter 2.  20 Questions to Ask When Doing Due Diligence For an IP Valuation
• Chapter 3. Latest Techniques to Sort Out the Complexities of Brand Valuation
• Chapter 4.  Debunking the Myth That Business Appraisers Lowball Brand Values
  by Christof Binder
• Chapter 5.  The Residual Contribution Method for Valuing a Corporate Brand
  by Rene Hlousek
• Chapter 6. Cost of Capital: You Can Love More Than Just One
  by David Wanetick
• Chapter 7. Uniloc v. Microsoft: Where Do We Go From Here?
• Chapter 8. Uniloc v. Microsoft: Lessons Outside of the Courtroom
  by Brad Pursel
• Chapter 9. A Poor Example of Celebrity Valuation
  by Mike Pellegrino
• Chapter 10.  Wrestling Match Over Valuation of Hulk Hogan Sex Tape
• Chapter 11. 10 Key Patent Damages and Valuation Takeaways from Google v. Oracle
  by Steven R. Hansen 
• Chapter 12. Indirect Profits from Copyright Infringement: Establishing a Connection Between Profits and the Infringement
  by John Pilkinton and Ryan Bell
• Chapter 13. Patent Infringement Damages:  Lost Profits and Royalties
  by Richard Bero
• Chapter 14.  Using Internet Analytic Tools for Valuation and Damages Calculations in Internet IP Infringement and Defamation Cases
  by Doug Bania and Brian Buss
• Chapter 15.  Three-Step Analysis to Manage the ‘Noise’ in IP Royalty Rate Data
• Chapter 16. Proving Damages in Trademark Cases
  by Stanley P. Stephenson and Gauri Prakash-Canjels
• Chapter 17. Lost Profits in Trademark and Copyright Cases
  by Rick Hoffman, Mark Glick, and Milan Politi
• Chapter 18. Case Law Digests

Look Inside the Compendium >>

• ActiveVideo Networks, Inc. v. Verizon Communications, Inc.
  Federal Circuit affirms $115 million damages award for infringement, affirming expert’s reliance on a licensing agreement that took place two years past the date of the hypothetical negotiation.
• Aini v. Sun Taiyang
  At issue is the ownership and alleged infringement of the trademark TOPICLEAR and the calculation of damages from this infringement.
• Andrew Luce v. Terence Hanrahan
  The California Court of Appeals, First District reversed an unjust enrichment damages award in this misappropriation of trade secrets matter. The court ruled that the wrongdoer’s compensation should be deducted from the wrongdoer’s gross profits to the ex ...
• Apple, Inc. v. Motorola Mobility, Inc. (I)
  Federal court dismisses all the damages expert in the case, for both parties, for failure to calculate damages based on reliable consumer surveys and the “real world” cost of infringement alternatives.
• Apple, Inc. v. Motorola Mobility, Inc. (II)
  After excluding the parties’ damages experts under Daubert, the court finds no credible evidence remains to support their claims for patent infringement, damages, or equitable relief (either permanent injunctions or prospective royalties).
• Apple, Inc. v. Samsung Electronics Co. (I)
  Federal district court precludes defendant’s expert from apportioning damages for infringement of a design patent (as opposed to utility patent) as contrary to the statutory remedy, but denies most Daubert objections against the plaintiff’s expert.
• Apple, Inc. v. Samsung Electronics Co. (II)
  In patent case, federal court strikes $450 million from $1 billion award and orders a new damages trial, finding the plaintiff’s expert used an improper, “aggressive,” notice date regarding some patents and the jury awarded impermissible forms of compensa ...
• Apple, Inc. v. Samsung Electronics Co. (III)
  District court grants Samsung’s emergency motion to preclude Apple from introducing a lost profits theory for several patents that runs counter to the Panduit-based damages model its own experts had developed, calling the new, non-expert alternative theor ...
• Apple, Inc. v. Samsung Electronics Co. (IV)
  Based on prior ruling requiring that analysis of off-the-market lost profits consider potential design-arounds as of the date of first infringement rather than the notice, court rejects Samsung’s pretrial motion to preclude calculation of Apple’s expert.
• Apple, Inc. v. Samsung Electronics Co. (V)
  Federal Circuit rejects Samsung’s call for apportioning damages related to design patent infringement, saying the proposed treatment would conflict with the express language of the applicable statute; court upholds most of $1 billion award to Apple.
• Arista Records LLC v. Lime Group
  Federal court precludes defendants’ damages expert from testifying to causes of music industry declines, but permits his calculation of reasonable royalty based on hypothetical negotiation to server as evidence of “expenses saved” by defendants in their i ...
• Arlington Industries, Inc. v. Bridgeport Fittings, Inc.
  By applying appropriate legal standard (Panduit factors) in infringement case, damages expert defeats Daubert challenge.
• AstraZeneca AB v. Apotex Corp.
  Federal Circuit affirms award of 50% of gross margin, finding that, even though the entire market value rule is not per se inapplicable in the pharmaceutical context, it does not apply in this case because patents cover the entire infringing product.
• AU Optronics Corp. v. LG Display Co., Ltd.
  Court adopts lower-end of expert’s reasonable royalty damages for patent infringement, saying it was not persuaded by top-end patent portfolio/lost profits analysis.
• AVM Technologies, LLC v. Intel Corporation (I)
  In Daubert challenge, district court finds expert misapplied entire market value rule (EMVR) in royalty calculation; although he used the “smallest saleable unit” featuring patented device, he did not account for unit’s other components in determining a r ...
• AVM Technologies, LLC v. Intel Corporation (II)
  Federal court grants defendant’s Daubert motion to exclude plaintiff’s damages testimony, because the expert failed to show how a single “comparable” settlement agreement that covered a different patent was a reliable basis for his reasonable royalty calc ...
• Baisden v. I’m Ready Productions, Inc. (I)
  Federal court bars testimony of IP expert on lost profits related to movie development and rights for lack of reliability and relevance to original copyright infringement claims.
• Baisden v. I’m Ready Productions, Inc. (II)
  Court admits financial expert’s contract interpretations that are consistent with the court’s, but excludes his legal conclusions regarding causation.
• Balance Dynamics Corporation v. Schmitt Industries, Incorporated
  On an issue of first impression, the Sixth Circuit concluded that Balance Dynamics could recover its damage control costs under the Lanham Act which stemmed from Schmitt Industries' false advertising. The court determined that recovery was based on a thr ...
• Banjo Buddies, Inc. v. Joseph T. Renosky
  The U.S. Court of Appeals, Third Circuit determined that while willfulness was a factor to be considered, a finding of willfulness was not required before an accounting of an infringer’s profits could be ordered for violation of section 43(a) of the Latha ...
• Basic American, Inc. v. Mounir A. Shatila, et al.
  The Idaho Supreme Court considered whether an expert, testifying to a business' damages, could rely upon a report prepared by the expert's employee in making his opinion. The court noted that the employee's report was hearsay evidence but was the sort of ...
• Basile Baumann Prost Cole & Assoc. v. BBP & Assoc. LLC
  Court strikes expert’s “lost asset value” theory of damages for trademark infringement because it relied entirely on the plaintiff’s allegations that it lost all of its goodwill value due to the defendants’ actions, without adequate proof.
• Besser v. Ohio State University
  At issue is the disclosure of all of the defendant's records concerning it's acquisition of a hospital.
• Bose Corporation v. JBL, Inc.
  The U.S. Court of Appeals for the Federal Circuit affirmed the district court’s calculation of a reasonable royalty award based on the entire value of the product containing the infringing component. It noted that the entire market value rule permits reco ...
• Brandeis University v. Keebler Co.
  In Daubert decision, district court finds expert erroneously based royalty calculation on the defendants’ maximum profits at risk should they fail to secure a license, rather than the cost of developing a “best imperfect substitute.”
• Brian Andreas v. Volkswagen of America, Inc.
  The U.S. Court of Appeals for the Eighth Circuit determined that a copyright infringer’s profits could be recovered by the copyright holder for indirect infringement to the extent that the infringer benefited from the infringement. Volkswagen’s advertisin ...
• Brighton Collectibles, Inc. v. Coldwater Creek, Inc.
  Good use of marketing and financial expert defeats summary judgment and Daubert motions related to claims of lost profits arising from copyright infringement.
• Brighton Collectibles, Inc. v. RK Texas Leather Mfg.
  In trade dress infringement suit, federal court excludes expert testimony on actual damages under Daubert where expert proposed to base lost profits solely on defendants’ profits, assuming one infringing sale correlated to one lost transaction for the pla ...
• Brocade Communications Systems, Inc. v. A10 Networks, Inc. (I)
  District court vacates patent damages because of expert’s use of the entire market value for reasonable royalty calculation, where the patented features did not drive consumer demand; apportionment of damages between the product’s patented and unpatented ...
• Brocade Communications Systems, Inc. v. A10 Networks, Inc. (II)
  On retrial, court finds EMVR is not necessary to present a viable lost profits theory and denies defendants’ motion to exclude plaintiffs’ damages evidence based on prior ruling that they had failed to show evidence to support an entire market value rule ...
• Burger King Corporation v. C. R. Weaver; M-W-M, Inc.
  The U.S. Court of Appeals for the Eleventh Circuit affirmed an award of lost profits under the Lanham Act for Weaver's use of Burger King's trademark after their termination of his franchises. The Court determined that even though Burger King was not har ...
• Cacique, Inc., et al v. Stella Foods, Inc., et al
  The California Court of Appeals, Second District affirmed a jury’s determination of lost profits. The lost profits award was based on expert testimony. The expert measured Cacique’s actual loss by showing that, but for the extraordinary advertising costs ...
• Caluori v One World Technologies, Inc.
  Court affirms expert’s use of prior lump sum settlement agreement in calculating reasonable royalty for infringement damages under the market approach, after showing that no other licenses existed and the settlement agreement directly related to the paten ...
• Carbo Ceramics, Inc. v. Keefe
  Lost profits calculation in trade secret misappropriation case requires strict adherence to precedent, including “reasonable royalty” method ...
• Carnegie Mellon University v. Marvell Technology Group (I)
  District court rejects defendants’ Daubert challenge finding plaintiff’s expert’s reference to total revenue was legitimate starting point of apportionment analysis and did not amount to use of Entire Market Value Rule.
• Carnegie Mellon University v. Marvell Technology Group (II)
  District court rejects plaintiff’s Daubert challenge finding defendants’ expert may “inaugurate” reasonable royalty analysis by referring to plaintiff’s existing licenses; however, licenses did not demonstrate an established royalty considering their lack ...
• Carnegie Mellon University v. Marvell Technology Group (III)
  District court denies defendants’ pretrial motion claiming expert failed to consider non-infringing alternatives in her apportionment analysis and affirms Daubert ruling in favor of plaintiff.
• Carnegie Mellon University v. Marvell Technology Group (IV)
  District court finds plaintiff’s expert qualified to testify to reasonable royalty calculation under Third Circuit’s liberal interpretation of Daubert despite lack of actual experience negotiating patent licenses; a hypothetical negotiation has no applica ...
• Celeritas Technologies, Ltd. v. Rockwell International Corporation
  The Federal Circuit affirmed a jury's damage award for patent infringement and breach of agreement to share communications technology. The damages were based on a hypothetical lump-sum paid-up license, whose fee was determined using the royalty rate comm ...
• Century Wrecker Corp. v. E.R. Buske Manufacturing Company, Inc.
  The U.S. District Court for the Northern District of Iowa denied the plaintiff's motion in limine to exclude evidence regarding what the defendant's would be able to afford as a reasonable royalty in this patent infringement case. The court permitted the ...
• Chico’s Fas, Inc. v. Clair
  Court excludes most of damages testimony under Daubert because expert based reasonable royalty calculation on data from IP databases and publications without subjecting information to rigorous analysis and establishing its relevance to case at hand.
• Children's Broadcasting Corporation v. The Walt Disney Company, et al. (II)
  The U.S. Court of Appeals for the Eighth Circuit affirmed the lower court’s decision to award a new trial on damages in this breach of contract and misappropriation of trade secrets case. Both parties were involved in the radio broadcasting business.
• Children's Broadcasting Corporation v. The Walt Disney Company, et al. (III)
  The U.S. Court of Appeals for the Eighth Circuit determined that a jury correctly determined the amount of Children’s Broadcasting’s damages in this breach of contract/misappropriation of a trade secret case.
• Collelo v. Geographic Services, Inc.
  Va. Supreme Court reverses and remands trade secrets case for new trial on damages under the state’s Trade Practices Act, but finds evidence from two experts on statutory damages insufficient to support plaintiff’s breach of contract and tort claims.
• Commonwealth Sci. & Indus. Research Organisation v. Cisco Sys.
  Federal Circuit invalidates infringement award where trial court’s damages model failed to filter out value to the patent in suit accruing from its being essential to wireless standard and failed to adjust its Georgia-Pacific analysis for standardization.
• Crystal Semiconductor Corporation v. Tritech Microelectronics International, Inc.
  The United States Court of Appeals for the Federal Circuit reversed in part and affirmed in part the lower court’s award of lost profits in this patent infringement case. The jury awarded lost profits based on the market segmentation theory of damages whi ...
• Dataquill Ltd. v. High Tech Computer Corp. (I)
  Court excludes portions of expert’s damages analysis that fails to show economic comparability of patents-in-suit to prior licenses, but permits his calculations based on the entire market value rule upon adequate showing that the patented technology help ...
• Dataquill Ltd. v. High Tech Computer Corp. (II)
  Court excludes portions of expert’s second, supplemental report for failure to explain technical and economic comparability of licenses used to calculate reasonable royalty damages in patent infringement case.
• De Lage Landen Operational Services, LLC v. Third Pillar Systems
  Court strikes expert evidence under Daubert in trade secrets case, because expert failed to pinpoint date on which misappropriation began—a “vital” requirement when applying the Georgia-Pacific framework.
• Deflecto, LLC v. Dundas Jafine Inc.
  Court calls Daubert challenger’s attack on expert’s lost profits opinion “misguided”; it unduly focuses on expert’s familiarity with legal standards and fails to explain what is wrong with expert’s use of software program for projecting future damages.
• DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.
  Plaintiff keeps lost profits for patent infringement, but loses damages for “pull through” products and also millions in reasonable royalties, for failure to timely object to inconsistent jury verdict.
• Don McClaran v. Plastic Industries, Inc.
  The Ninth Circuit reversed and remanded McClaran's damage award for breach of contract and trademark infringement regarding McClaran's kayak. The Ninth Circuit found the lost profits award speculative because it was based on projected sales of McClaran's ...
• Douglas A. Johnson v. Theresa C. Jones, et al.
  The U.S. District Court for the Eastern District of Michigan calculated an architect's damages under the Lanham Act for defendant's willful infringement of his architectural drawings. The damages against both defendant builder and architect were calculat ...
• Douglas Dynamics v. Buyers Products Co.
  Federal district court relies on 25% rule of thumb as starting point to calculate prospective reasonably royalty rate for patent infringement damages, despite (and without citation to) the Federal Circuit’s rejection of the rule in Uniloc v. Microsoft.
• Dynetix Design Solutions, Inc. v. Synopsis, Inc.
  District court finds expert’s royalty analysis is fatally defective as to the base and rate; expert improperly presumed that using smallest salable unit featuring the patented part ended rate analysis even though that feature was not closely tied to defen ...
• Eagle Group, Inc. v. Mike Pullen
  The Washington Court of Appeals, Division II affirmed a jury's award of lost future profits. It disagreed with the appellant's arguement that more substantial expert testimony was requried to prove Eagle Group's profit histroy and that the damage award wa ...
• Ed Nowogroski Insurance v. Reick, et al.
  The Washington Court of Appeals affirmed and reversed the trial court's determination of damages for misappropriation of client lists under the Uniform Trade Secrets Act. Three insurance agents left Nowogrowski, merged with another firm, and solicited N ...
• Electro-Mechanical Corp. v. Power Distribution Products, Inc.
  In ruling on defendants’ post-trial motion, district court finds plaintiff’s expert improperly invoked the entire market value rule (EMVR) in calculating lost profits because customers did not decide to buy a system containing the patented device simply t ...
• Energy Transportation Group, Inc. v. Sonic Innovations, Inc.
  Federal district court affirms damages award for patent infringement despite jury “splitting the difference” between the parties’ experts’ reasonable royalty analyses.
• Energy Transportation Group, Inc. v. William Demant Holding A/S
  Federal Circuit finds use of discarded 25% rule of thumb does not “irretrievably damage” expert’s royalty analysis because he also used acceptable alternative method, substantially supporting jury’s award.
• Enpat, Inc. v. Budnic
  Federal court denies plaintiff’s request to prorate past patent infringement damages from actual prior licenses without additional evidence that the parties’ would have used a similar proration during hypothetical negotiations.
• Enzo Biochem, Inc. v. Applera Corp.
  District court denies both parties’ motions for new trial, finding an award for “induced infringement” would be based on the very act of infringement that underlies the award for direct infringement and would be double dipping; also since the patented tec ...
• Ergotron, Inc. v. Rubbermaid Commercial Products, LLC
  Federal district court finds “multitudinous” Georgia-Pacific factors allow for flexibility and permissible degree of imprecision in expert’s royalty rate analysis.
• Ericsson Inc. v. D-Link Corp. (I)
  In IEEE 802.11n standard infringement case, district court denies defendants’ Daubert motion finding plaintiff expert’s damage model based on per unit royalty on sales of accused products included two levels of apportionment to properly capture only the v ...
• Ericsson, Inc. v. D-Link Corp. (II)
  In dispute over infringement of standard-essential patent (SEP), Federal Circuit holds royalty must be apportioned to the value of the patented feature and must exclude any added value to the patented feature from standard’s widespread adoption.
• Ericsson, Inc. v. Harris Corp.
  The U.S. Court of Federal Appeals affirmed an award of lost profits for patent infringement and price erosion. It found that the award was established by testimony from a CPA who established the markets using sound economic evidence, even though it was ba ...
• Fairway Dodge, Inc. v. Decker Dodge, Inc.
  The New Jersey Superior Court, Appellate Division, determined that an accountant’s lost profits estimate was not a net opinion where the approach used was adequately supported by reference to accounting and industry standards. Rather, it found that the as ...
• Fashion Boutique of Short Hills, Inc. v. Fendi USA, Inc., et al.
  The U.S. Court of Appeals for the Second Circuit considered whether the lower court appropriately excluded expert testimony regarding the value of lost business in this Lanham Act matter because the opinion was based on a causal connection which was dispr ...
• Finjan, Inc. v. Blue Coat Systems, Inc. (I)
  Court admits apportionment based on lines of infringing code and on value defendant places on product features in accused products but excludes apportionment using forward citation analysis for failure to show value of asserted patents in marketplace.
• Flowers Bakeries Brand, Inc. v. Interstate Bakeries Corp.
  Federal court admits reasonable royalty rates based on past licensing agreements, but bars lost profits evidence that fails to account for market factors that could have caused the loss.
• Fractus, S.A. v. Samsung Electronics Co.
  Court affirms $23 million patent infringement award based on apportionment analysis of the plaintiff’s expert, which relied on internal as well as external documentation of value of patented technology without improperly invoking entire market value of in ...
• Fresenius Medical Care Holdings, Inc. v. Baxter International, Inc. (I)
  Amount of jury's "reasonable royalty" award questioned in an infringement case where the damages estimates differ by more than $140 million.
• Fresenius USA, Inc. v. Baxter International, Inc. (II)
  Court applies modified Georgia-Pacific analysis—including changed economic circumstances between the parties as well as changes in patent law—to determine post-verdict, ongoing reasonable royalty rate.
• Funai Electric Co. v. Daewoo Electronics Corp. (I)
  Court upholds $9.5 million damages award for patent infringement based on market share method and reasonable royalty analysis.
• Funai Electric Co. v. Daewoo Electronics Corp. (II)
  Federal Circuit Court upholds application of entire market value rule to calculation of patent infringement damages when plaintiff showed that patented features of apparatus was basis for consumer demand.
• George G. Rodrique, Jr., et al. v. Veronica Hidalgo Rodrique
  The U.S. Court of Appeals for the Fifth Circuit concluded that the Louisiana community law regarding property distribution was not inopposite with the rights held by an artist under the Federal Copyright Act. It determined that the artist held exclusive ...
• Georgia-Pacific Corp. v. United States Plywood Corp.
• Halo Electronics, Inc. v. Pulse Electronics, Inc.
  Damages expert did not use “supercharged” version of disclaimed 25% rule of thumb, but analyzed each of Georgia-Pacific factors to predict reasonable royalty rate, district court finds.
• Hamil America, Inc. v. GFI, a Division of Goldtex, Inc.
  The U.S. Court of Appeals for the Second Circuit reversed the district court's calculation of an infringer's profits. The Second Circuit concluded that the deductions for overhead should have been considered even though the defendants were willful infrin ...
• Hark’n Technologies, Inc. v. Crossover Symmetry
  In trade dress infringement suit, although court finds expert’s computation of the incremental profit percentage figure based on the plaintiff’s entire product line, rather than the products at issue, “troubling,” it concludes damages formula is admissibl ...
• Home Pride Foods, Inc. v. Christopher S. Johnson, et al.
  The Nebraska Supreme Court reversed and remanded a lost profits determination in this trade secret case. The court noted that lost profits are based on net profits, not gross profits. Since no evidence of Home Pride’s net profits were in evidence, the cou ...
• i4i Ltd. Partnership v. Microsoft Corp. (I)
  Microsoft fails to overturn $200 million reasonable royalty damages award for patent infringement based on alleged flaws in expert survey and data.
• i4i Ltd. Partnership v. Microsoft Corp. (II)
  Court denies Microsoft’s request to set aside $200 million patent infringement damages award based on unreliability of reasonable royalty rate and other epxert evidence.
• Illinois Tool Works, Inc. v. MOC Products Co., Inc.
  Federal court permits damages expert to assume the plaintiff’s 50% market share in calculating lost profits, based on information from a technical expert, but disallows him from offering an opinion that the plaintiff in fact held a 50% share, for lack of ...
• Immersion Corp. v. HTC Corp.
  Court says nontraditional lost profits theory goes “too far” as it assumes sales occurred pursuant to a license the parties negotiated but never actually executed and assumes revenue derived not only from patents-in-suit, but also related unpatented softw ...
• In re MSTG, Inc.
  Federal Circuit finds that settlement negotiations related to reasonable royalty and damage calculations are not protected by particular privilege, but are subject to discovery, in addition to the settlement agreements themselves.
• Infinity Products, Inc. v. Herbert Quandt and Fabri-Tech, Inc.
  The Indiana Court of Appeals affirmed a lost profits award for misappropriation of trade secrets. The court rejected the position that because Infinity had entered the business by acquisition, it should be precluded from recovering lost profits because i ...
• Info-Hold, Inc. v. Muzak LLC
  District court disqualifies proffered expert under all the Daubert factors, finding he lacked any understanding of patent cases and the dominant legal principles; he applied the discredited 25% rule of thumb and the entire market value rule, failed to pro ...
• Interactive Pictures Corp. v. Infinite Pictures, Inc.
  The U.S. Court of Appeals for the Federal Circuit affirmed the district court’s reasonable royalty award for patent infringement based on a hypothetical negotiation. The court concluded that a paid up royalty of 10% over five years was appropriate. The aw ...
• International Star Class Yacht Racing Association v. Tommy Hilfiger U.S.A., Inc.
  The U.S Court of Appeals for the Second Circuit instructed a lower court to considered evidence (cost data) in the record of Hilfiger's profit margin on the infringing sales as well as evidence of sales attributable to Hilfiger's dominant trademark in thi ...
• Interplan Architects, Inc. v. C.L. Thomas, Inc.
  Court excludes expert evidence regarding copyright infringement that does not provide specific causal link between defendant’s gross revenues from infringement and the copyrighted works.
• IP Innovation LLC v. Red Hat, Inc.
  Court strikes expert’s use of entire market value rule in calculating reasonable royalty damages for a patented invention that is but “one of a thousand” features in the accused system.
• Irme Cziraki v. Lawrence Phillis, et al.
  The California Court of Appeals, Second District affirmed a trial court’s damage award in this derivative shareholder action, which awarded the plaintiff the value of a patent assignment. The value was computed by an expert who first determined the releva ...
• ITT Corp. v. Xylem Group, LLC
  District court dismisses plaintiffs’ overarching claim that a reasonable royalty was not an allowable damage theory in a trademark case, as well as its narrower claim that a royalty was available only to the plaintiff that could point to an established ro ...
• Joyce v. Armstrong Teasdale, LLP (I)
  Expert’s present value calculus for patented software fails to meet post-trial federal decisions on evidentiary standards for proving damages in patent cases, but the court grants leave to “repair” the report to conform to new standards.
• Joyce v. Armstrong Teasdale, LLP (II)
  Expert’s supplement report to comply with recent case law concerning sufficiency of proof to prove damages in patent cases fails for lack of qualitative evidence and comparable licenses.
• KW Plastics v. United States Can Co.
  At issue is the admittance of expert testimony.
• LaserDynamics, Inc. v. Quanta Computer, Inc. (V)
  Federal Circuit requires the apportionment analysis for patent infringement claims to focus on the “smallest saleable unit.”
• Lucent Technologies, Inc. v. Gateway, Inc. (II)
  Court reverses record-setting $358 million damages award for unreliable expert proof on damages, including lack of sufficiently comparable licensing agreements.
• Lucent Technologies, Inc. v. Microsoft Corp. (III)
  Federal district court precludes expert’s patent infringement damages under Uniloc standard for failing 1) to establish the patented software as the basis for consumer demand of Microsoft Outlook; or, 2) specifically apportioning damages between the paten ...
• Lucent Technologies, Inc. v. Microsoft Corp. (IV)
  Federal district court reverses $70 million award based on expert’s failure to apportion damages between the patented and unpatented features of the accused product, finding that, at most, the evidence supported $26 million based on proper apportionment ...
• Mattel, Inc. v. MGA Entertainment
  Federal district court strikes portions of expert copyright infringement damages that apply the ex post Georgia-Pacific reasonable royalty calculations, because federal law requires ex ante approach.
• McRoberts Software, Inc. v. Media 100, Inc.
  The U.S. Court of Appeals for the Seventh Circuit affirmed a jury's award of lost profits and actual damages in McRoberts suit for copyright infringement, trade secret misappropriation and breach of contract. McRoberts developed software to run on a Macin ...
• Michael Bowling v. Hasbro, Inc.
  Expert's methodology, credentials, called into question in reasonable royalty valuation.
• Michelle Frantz, et al. v. Charles R. Johnson
  The Nevada Supreme Court remanded a calculation of lost profits for exclusion of losses outside of the liability period determined by the lower court in this misappropriation of a trade secret case. Johnson's expert calculated lost sales of gaming cards ...
• Microsoft Corp. v. Motorola, Inc. (I)
  Federal district court rules that the adaptable Daubert standard can accommodate two different frameworks for analyzing RAND royalty rates for standard-essential patents, a typical “bilateral” hypothetical negotiation between the parties and a fairly new ...
• Microsoft Corp. v. Motorola, Inc. (II)
  Following expert testimony from both sides on the appropriate RAND rate, the federal court ordered Microsoft to pay Motorola $1.8 million a year in royalties for using certain patented features that are part of the H.264 video and 802.11 wireless standard ...
• Minco v. Combustion Engineering
  At issue in this patent infringement case is the defendant's claim of infringement, intervening rights, best mode, pre-assignment damages, calculation of the reasonable royalty, entitlement to lost profits, and willful infringement.
• Mirror Worlds, LLC v. Apple, Inc.
  Federal district court tosses out a $208 million jury award for lack of sufficient evidence proving patent infringement and for lack of legally justified damages, including improper reliance on entire market value of accused products.
• Mondis Technology, Ltd. v. LG Electronics, Inc.
  Federal district court permits patent damages expert to base running royalty calculations on market value of accused products, when “economic justification” supported application of entire market value rule.
• Monsanto Company v. McFarling
  Expert evidence helps support patent infringement award beyond established royalty rate.
• Monsanto v. Tidball
  Expert is disqualified from “saved seed” patent infringement case because she: disregarded federal precedent concerning the limits to reasonable royalties in such cases; lacked sufficient expertise; and was just excluded from testifying in a similar case.
• Nilssen v. Motorola, Inc. (I)
  Issues involve several motions in limine to exclude expert testimony in intellectual property dispute.
• Nilssen v. Motorola, Inc. (II)
  When this case accusing Motorola of violating patent, contract, and trade secret rights became one of the oldest on its docket, the district court decided to expedite matters by splitting the case in two.
• Nordock, Inc. v. Systems, Inc.
  Federal Circuit rejects design patent infringement award where prevailing expert improperly apportioned the infringer’s profits and jury failed to determine infringer’s profits but, against the weight of the evidence, simply stated they equaled zero.
• Nucar Consulting, Inc. v. Timothy Doyle, et al.
  The Delaware Court of Chancery determined the quantum of damages in this misappropriation of a trade secrets case using an unjust enrichment theory. It limited the recovery to the profits earned over a two-year period because the evidence showed that it w ...
• Okun v. Morton
  Court affirms value of Hard Rock Cafe IP assets based on testimony by the brand’s owner/entrepreneur rather than his two IP experts.
• Olson v. Nieman's, Ltd.
  Issue was whether the plaintiff's expert's damages calculation was speculative.
• On Davis v. The Gap, Inc.
  The U.S. Court of Appeals for the Second Circuit affirmed in part and reversed in part the lower court’s decision not to award damages for The Gap’s infringement of Davis’ copyright. The Gap used Davis’ copyrighted eyewear in an advertisement. The appella ...
• Oracle America, Inc. v. Google Inc. (I)
  Federal district court precludes expert’s billion dollar damages calculations for patent infringement under the entire market value rule and other legal and evidentiary bases, and provides a clear ‘starting point’ for any reasonable royalty analysis.
• Oracle America, Inc. v. Google Inc. (II)
  Court sends plaintiff’s expert back for a third try at apportioning infringement damages between patented and unpatented features of technology system (Android), on a claim-by-claim basis.
• Oracle America, Inc. v. Google Inc. (III)
  Federal district court strikes portions of plaintiff’s expert’s third and final damages report under Daubert, including the "upper bound" value of his apportionment analysis, his determination of market share based on consumer surveys, and his "independen ...
• Oracle America, Inc. v. Google Inc. (IV)
  Federal district court strikes portions of supplemental reports submitted by defendant’s rebuttal witnesses, in part because the patent expert’s failed to analyze predecessors to the patents in suit and the copyright expert applied new methodologies.
• Oracle America, Inc. v. Google Inc. (V)
  Federal district court strikes portions of its own expert’s report on patent damages for failing to apportion damages among the patented and unpatented features of the in-suit IP.
• Oracle USA, Inc. v. SAP AG
  Federal district court reverses record-setting $1.3 billion in copyright damages based on the lack of proof of any comparable, real world licenses, permitting the plaintiff to opt for a remitter of $272 million based on the defendant’s profits from a spec ...
• Oyster Software, Inc. v. Forms Processing, Inc., et al.
  The U.S. District Court for the Northern District of California granted summary judgment on the issue of lost profits in this Internet trademark infringement case. Oyster’s expert reasoned that the decline in the number of hits to Oyster’s website during ...
• Pandora Jewelers 1995, Inc. v. Pandora Jewelry, Inc.
  Federal district court admits expert’s trademark infringement damages under Daubert, finding the he could assume liability and use defendant’s profits without apportionment to the alleged infringement, but denied his calculations based on corrective adver ...
• Personalized Media Communications, LLC v. Zynga, Inc.
  Court denies defendant’s Daubert motion finding plaintiff expert determined royalty base consistent with plaintiff’s infringement theory that defendant’s entire product infringed and the product was not functional without the patented technology.
• Phase 2 Developers, Corp. v. Citicorp Real Estate
  The California Court of Appeals, Second District affirmed a lower court’s grant of nonsuit to Citicorp after the trial court excluded the damages witness on Citicorp’s motion in limine following the expert’s deposition. The lower court excluded the expert ...
• Polar Bear Productions, Inc. v. Timex Corporation
  The U.S. Court of Appeals for the Seventh Circuit reversed a portion of a lost profits award as speculative because it was based on the premise that had the infringer paid a license fee, which was established as a separate aspect of the damage award, then ...
• Polaroid Corp. v. Eastman Kodak Co.
  Lengthy litigation concerning defendant’s alleged infringement of plaintiff’s patent, including consideration of taxable consequences in award of pre-judgment interest. plaintiff would have had to pay, absent the defendant’s violation.
• Poly-America, L.P. v. GSE Lining Technology, Inc.
  The U.S. Court of Appeals for the Federal Circuit reversed a lost profits award. It held that lost profits on lost sales made by the patent owner’s sister company, which held a non-exclusive license on the patent and sold products based on the patent, cou ...
• Powell v. The Home Depot U.S.A., Inc.
  Federal Circuit confirms that neither the infringer’s profits nor the patentee’s expected lost profits serves to cap reasonable royalty damages.
• Pulse Medical Instruments, Inc. v. Drug Impairment Detection Services, Inc.
  Court admits expert’s “lost opportunity value analysis” for calculating damages, finding that Georgia-Pacific reasonably royalty damages and lost profits are not exclusive remedies in patent infringement cases.
• R.K. Enterprises, LLC, et al. v. Pro-Comp Management, Inc., et al.
  The Arkansas Supreme Court reversed a lower court’s damage award in this misappropriation of trade secrets matter. The lower court’s award was based on the tort claim of conversion remedy. The Supreme Court concluded that the Trade Secrets Act provided th ...
• Real View, LLC v. 20-20 Technologies (I)
  Federal district court excludes hypothetical royalty for copyrighted software based on expert’s failure to rely on any comparable licenses or adequately explain their differences from his estimated 35% rate.
• Rembrandt Social Media, LP v. Facebook
  Court excludes plaintiff expert testimony under Daubert, finding both the expert’s royalty base and rate determinations fatally flawed due to the expert’s inexact apportionment; in valuing damages, he failed to compensate only for the infringement caused ...
• ResQnet.Com v. Lansa, Inc.
  Federal Circuit rejects expert’s reasonable royalty calculations for using comparable licenses with no economic relationship to the claimed invention.
• Robert J. Pound v. Airosol Company, Inc.
  The U.S. District Court for Kansas excluded a financial expert’s damage computation under Daubert in this false advertising matter. The expert utilized the yardstick method and a one-to-one sales loss assumption. Because she failed to perform a market ana ...
• Robocast, Inc. v. Microsoft Corp. (I)
  Court says no requirement exists that expert’s royalty analysis only consider transactions that are both technologically and economically comparable and finds Daubert allows for a reasonable royalty calculation based on a valuation of patent in suit embed ...
• Robocast, Inc. v. Microsoft Corp. (II)
  Under Daubert, court excludes royalty analysis that claims parties would have agreed to equal profit share, finding it was based on the discredited Nash Bargaining Solution, a “non-starter in a world where damages must be tied to the facts of the case.”
• Rolls-Royce PLC v. United Technologies Corp.
  Federal court strikes substantial portions of lost profits, reasonably royalty evidence for “egregious overreaching” by patent infringement plaintiff and damages expert.
• Saforo & Associates, et al. v. Porocel Corporation
  The Arkansas Court of Appeals ruled, on an issue of first impression, that the appropriate measure of damages for misappropriation of a trade secret is either the infringer's actual profits or the plaintiff's lost profits, whichever is greater.
• Samsung Electronics Co. v. Apple, Inc. (VI)
  Supreme Court agrees with Samsung that design patent infringement damages statute (Section 289) does not per se require infringer to pay profits from entire product but can be limited to profits from component(s) to which the protected design was applied.
• Seatrax, Inc. v. Sonabeck International, Inc.
  The Fifth Circuit affirmed the district court's decision excluding Seatrax's damages expert under Daubert and Kumho Tire. It concluded this expert, an industry expert without any formal accounting training, could not testify regarding profit margins in m ...
• Shonda Brown, et al. v. Ruallam Enterprises, Inc. (I)
  The Arkansas Court of Appeals determined that the appropriate measure of damages in a misappropriation of trade secrets case was net profit, whether lost by the plaintiff or gained by the defendants, whichever was greater. It further concluded that roundi ...
• Shonda Brown, et al. v. Ruallam Enterprises, Inc. (II)
  The Arkansas Court of Appeals adjusted an award of the wrongdoer’s profits to reflect commission, telephone and salary expenses that were not considered in the lower court’s determination in this misappropriation of trade secrets case. It also affirmed t ...
• Silicon Knights, Inc. v. Epic Games, Inc.
  On July 8, 2011, Epic Games, Inc., ("Epic" or "defendant") filed a motion to exclude the reports and testimony of Terry Lloyd, an expert for Silicon Knights, Inc. ("SK" or "plaintiff"), and a motion to seal Epic's supporting memorandum and exhibits [D.E. 6 ...
• Simon Property Group, L.P. v. mySimon, Inc.
  The U.S. District Court for the Southern District of Indiana reversed a damage award for mySimon’s infringement of the “Simon” mark. The damages were determined as a percentage of mySimon’s value (determined by reference to the price CNET paid to acquire ...
• Sloan Valve Company v. Zurn Industries, Inc.
  Court excludes royalty analysis veering from “classic way” in that expert used number of infringing products, not revenue, as royalty base and dollar amount, not percentage of the revenue, as royalty rate.
• Southwestern Energy Production Co. v. Berry-Helfand
  In trade secret case, appellate court affirms award for actual damages stemming from defendant gas & oil company’s misappropriation of plaintiff scientists’ study; expert reservoir engineer properly relied on the compensation formula of plaintiffs’ prior ...
• Spectralytics, Inc. v. Cordis Corp. (I)
  Court upholds $22.5 million patent infringement damages based on 5% reasonable royalty rate, despite defendant’s arguments regarding lack of reliable comparables and evidence that the company sold for only $4 million.
• Spectralytics, Inc. v. Cordis Corp. (II)
  Federal Circuit court affirms 5% royalty rate damages for infringement of patented medical device, based on expert evidence that showed a 20% rate would have been reasonable in light of economic and competitive circumstances.
• Spine Solutions, Inc. v. Medtronic Sofamor Danek, Inc.
  Court grants new trial on damages, based on Federal Circuit’s decision in Uniloc abolishing the 25% Rule in calculating reasonable royalty for patent infringement.
• SSL Services, LLC v. Citrix Systems, Inc.
  District court denies defendants’ post-trial challenge to $10 million jury award finding the fact that the patent assignee at the time of the hypothetical negotiation was worth less than its single patent-in-suit does not control the assessment of patent ...
• State Contracting & Engineering Corp. v. Condotte America, Inc.
  The U.S. Court of Appeals for the Federal Circuit affirmed a lower court’s award of reasonable royalties in this method patent infringement case. It found that the plaintiff’s expert properly relied on the actual terms of the Florida Department of Transpo ...
• Steve J. Rooney v. Skeet'r Beat'r of Southwest Florida, Inc., et al.
  The Florida Court of Appeal, Second District reversed a lower court’s award of lost profits in this trademark infringement action because the lost profits calculation failed to consider factors other than the wrongful acts that may have lead to a decline ...
• SynQor, Inc. v. Artesyn Technologies, Inc. (I)
  Federal court found sufficient evidence to support $95 million lost profits and reasonable royalty award for patent infringement based on expert’s careful benchmarking and Georgia-Pacific analysis.
• SynQor, Inc. v. Artesyn Technologies, Inc. (II)
  Federal court denies motion for new trial in patent infringement case, finding among other evidentiary and legal rulings that the plaintiffs did not improperly apply the entire market value rule.
• SynQor, Inc. v. Artesyn Technologies, Inc. (III)
  Federal Circuit finds jury’s lost profits and reasonable royalty award based on plaintiffs’ price erosion theory is not excessive; sufficient evidence supported expert’s “but for” damages model calculating prices two to three times as much as the prices t ...
• The Three Boys Music Corporation v. Michael Bolton, et al.
  The Ninth Circuit Court of Appeals affirmed the district court's determination of the amount of damages due in this copyright infringement action. It agreed with the lower court that income taxes were deductible from the award of profits if the infringer ...
• Total Containment, Inc. v. Environ Products, Inc.
  The U.S. District Court for the Eastern District of Pennsylvania awarded Total Containment damages based on a reasonable royalty for Eviron's infringement of their patent. The court found that the starting point was 1/4 of the available profit. It adjus ...
• Troy Shockley v. Arcan, Inc., et al.
  The U.S. Court of Appeals for the Federal Circuit reversed an award of lost profits for Arcan’s infringement of Shockley’s patent. The Federal Circuit found that the lost profits evidence was unsubstantiated because it was based on sales Shockley assumed ...
• TXCO Resources, Inc. v. Peregrine Petroleum, LLC (In re: TXCO Resources, Inc.)
  Court denies lost profits damages for trade secret misappropriation in oil and gas case, but calculates $15.8 million reasonable royalty award based on prior “licenses” (farmout and joint exploration agreements) that were particular to the plaintiff and c ...
• Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc.
  District court finds damages expert’s model for reconstructing market and allocating share to plaintiffs based on a “but for” world, is too speculative to establish causation under the Panduit test and disallows lost profits; however, the court awards rea ...
• U.S. Valves, Inc. v. Robert F. Dray, Sr., et al.
  The U.S Court of Appeals for the Federal Circuit considered a lower court's calculation of lost profits stemming from a breach of contract. The court found numerous errors in the lower court's damage calculation including no cost of goods sold deduction ...
• Uniloc USA, Inc. v. Microsoft Corp. (I)
  Court denies dueling Daubert motions to exclude parties’ financial experts in patent infringement case.
• Uniloc USA, Inc. v. Microsoft Corp. (II)
  Federal Circuit abolishes use of 25% rule of thumb in calculation of reasonable royalty rate for patent infringement cases.
• University of Pittsburgh v. Varian Medical Systems, Inc.
  District court finds that entire market value rule applies only when unpatented features are combined with patented invention, denying this and numerous other objections by defendant to plaintiff’s reasonable royalty calculations.
• Utah Medical Products, Inc. v. Graphic Controls Corporation
  The U.S. Court for the Federal Circuit affirmed a lower court’s decision to exclude an expert witness who calculated a reasonable royalty in this patent infringement case at a Daubert trial. The court determined that the license agreements considered by t ...
• Vernon v. Cuomo
  North Carolina state court approves models and methods for valuation of early-stage medical technology, ultimately adopting a royalty sharing arrangement to account for the uncertainties and events arising after the report.
• Versata Software, Inc. v. Internet Brands, Inc.
  Federal district court declines opportunity to apply entire market value rule to damages in trade secrets case, and affirms $2 million award based on expert’s attributing all of the profits from contracts to the stolen technology.
• Versata Software, Inc. v. SAP America, Inc. (I)
  Court upholds $345 million lost profits/reasonable royalty award for patented software infringement based on careful market reconstruction and calculations by plaintiff's team of four experts.
• Versata Software, Inc. v. SAP America, Inc. (II)
  Federal Circuit affirms lost profits and royalty award finding defendants raised questions of admissibility of plaintiff expert testimony in the “improper context” because these are Daubert issues; also plaintiffs’ lost profits theory meets Panduit requir ...
• Virnetx Inc. v. Cisco Systems, Inc. (I)
  In Daubert ruling federal court finds the plaintiff’s expert violated entire market value rule when calculating a reasonable royalty, the apportionment factor he used to reduce the revenue of entire products was “a poor substitute” for the analysis necess ...
• VirnetX, Inc. v. Cisco Systems, Inc. (II)
  Federal Circuit strikes award against Apple, finding it resulted from district court’s misstating the law on the entire market value rule and apportionment and court’s failure to serve as gatekeeper under Daubert and exclude unreliable damages testimony.
• Volterra Semiconductor Corp. v. Primarion, Inc.
  In a patent case, in a pretrial ruling, the court finds the plaintiff cannot claim direct harm for lost revenues its foreign subsidiary sustained because of the defendants’ infringement by relying on expert testimony that equated the value of the injury d ...
• Von der Ruhr v. Immtech International, Inc.
  Court precludes a patent owner from testifying to lost profits damages, an area traditionally better served by experts and “true” market analysis.
• W.L. Gore & Associates, Inc. v. GI Dynamics, Inc.
  Court denies summary judgment motion, finding sufficient damages evidence for misappropriation of trade secrets—even for early-stage technology—based on the actual pricing data by the competitor, which valued the risk at various stages of development.
• Warsaw Orthopedic, Inc. v. NuVasive, Inc.
  Federal Circuit strikes down lost profits where patentee does not practice patents and fails to qualify for convoyed sales because of missing functional relationship between nonpatented parts it sells to related company and latter’s patented products.
• Wellogix, Inc. v. Accenture, LLP
  Texas Court of Appeals affirms $26 million damages award for lost business value due to misappropriation of trade secrets, based on expert evidence that relied more on contemporaneous market transaction, which demonstrated what a willing investor paid for ...
• Western Diversified Services, Inc. v. Hyundai Motor America, Inc.
  The U.S. Court of Appeals for the Tenth Circuit adopted the definition of “willful” as “the defendant’s intent to benefit from the goodwill or reputation of the trademark holder” for use when recovering profits from an infringer in the absence of actual d ...
• WesternGeco LLC v. ION Geophysical Corp.
  Court excludes expert’s reasonable royalty analysis because it assumed a “financially catastrophic” deal for the licensor, one that would have eliminated all profits and revenues.
• Whitserve, LLC v. Computer Packages, Inc.
  Federal Circuit reverses $8.3 million award because expert used the “now discarded” 25% rule of thumb and conducted a “superficial” Georgia-Pacific analysis to reach unrealistic conclusions.
• Whyte v. C/R Energy Coinvestment II, L.P. (In re SemCrud)
  Bankruptcy Court values Chapter 11 debtor on a going concern basis and finds the income approach is best suited to determine solvency at the time of critical financial transactions; the defendants’ expert properly relied on a contemporaneous Goldman Sachs ...
• Wordtech Systems, Inc. v. Integrated Networks Solutions, Inc.
  Federal Circuit rejects patent damages award based on 13 actual licenses for the patents in suit for failing to support jury’s lump-sum award.
• World Wide Prosthetic Supply, Inc. v. Robert J. Mikulsky
  The Wisconsin Supreme Court concluded that World Wide could recover lost profits for Mikulsky’s manufacture and marketing of a defective product incorporating World Wide’s trade secret under Wisconsin’s version of the Uniform Trade Secrets Act.
• Zaxis Wireless Communications, Inc. v. Motor Sound Corporation, et al.
  The California Court of Appeal considered whether Zaxis had the ability to pay a punitive damages award. The appellate court noted that while Zaxis had a negative net worth for accounting purposes, it had available $19 million cash on hand and a $50 million credit line.
• Zinn v. Seruga
  Ex-spouses claim trademark infringement; court finds ex-husband liable and assesses damages based on expert evidence of gross infringing (but not competing) sales, multiplied by estimated profit margins.