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Recommended Pre-Suit Case Analysis

Recommended Pre-Suit Case Analysis. Likelihood of infringement Likelihood of validity Size of potential recovery Likelihood of injunction and its importance Venue Legal fees and disbursements Experts. Size of Potential Recovery.

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Recommended Pre-Suit Case Analysis

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  1. Recommended Pre-Suit Case Analysis • Likelihood of infringement • Likelihood of validity • Size of potential recovery • Likelihood of injunction and its importance • Venue • Legal fees and disbursements • Experts

  2. Size of Potential Recovery • Adequate to compensate for infringement, but not less than reasonable royalty (§284) • Lost profits • Reasonable royalties • Multiplied damages • When damages accrue

  3. Lost Profits • “But for” test for recovering lost profits • Demand for patented product or method • No non-infringing substitutes • Patentee has mfg capacity • Amount of profit but for infringement • Market share theory

  4. Reasonable Royalties • Applies to extent patentee unable to prove lost profits • Reasonable royalty = amount willing licensee and willing licensor would agree to prior to infringement • Georgia Pacific factors • Royalty base is sale price of infringing article if entire market value derived from patented feature

  5. Multiplied Damages • Willful infringement • Must prove infringer acted recklessly • High likelihood that infringer’s action infringed valid and enforceable patent • Infringer knew or should have known consequences of his actions • Under §284, court can award up to treble damages • Exceptional case • Court can award attorneys fees to prevailing party under §285 • Willful infringement • Litigation misconduct

  6. When Damages Accrue • If patentee sells patented product, damages accrue when infringer given actual or constructive notice • Marking constitutes constructive notice • Not required for method patent • Consequences of failure to mark • Damages don’t accrue until actual notice • E.g., letter charging infringement • Filing suit • If patentee doesn’t sell patented product, damages accrue when infringement began

  7. Likelihood of Injunction and Its Importance • Historically permanent injunction routinely granted • In eBay, S. Ct. held non-patent test applies • Injunction factors • Irreparable harm • $ adequate compensation • Balance of hardships • Public interest • Public health or welfare

  8. Venue – Where to Sue • Subject matter jurisdiction • §1338(a) • Personal jurisdiction • Venue • §1391(b), §1400(b) • Patent friendly jurisdiction • Home forum • Time to trial • Local patent rules

  9. Recommended Pre-Suit Case Analysis • Likelihood of infringement • Likelihood of validity • Size of potential recovery • Likelihood of injunction and its importance • Venue • Legal fees and disbursements • Experts

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