Intellectual Property Litigation
Two major categories of intellectual property are U.S. patents and U.S. trademarks. The United States Patent and Trademark Office (USPTO) is the Federal agency that grants U.S. patents and registers U.S. trademarks.
A U.S. patent is:
“an intellectual property right granted by the government of the United States of America to an inventor ‘to exclude others from making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States’ for a limited time in exchange for public disclosure of the invention when the patent is granted.”
A U.S. trademark or service mark is:
“a word, name, symbol, device, or any combination thereof, used to identify and distinguish the goods and services of one seller or provider from those of others and to indicate the source of the goods and services. Although Federal registration of a mark is not mandatory, it has several advantages, including notice to the public of the registrant’s claim of ownership of the mark, legal presumption of ownership nationwide, and a presumption of the exclusive right to use the mark on or in connection with the goods or services listed in the registration.”
During the 20-year period ended December 31, 2017, the USPTO granted 4.5 million patents, of which approximately 90 percent were utility, 9 percent were design, and less than one percent were plant. In each of the three classifications of U.S. patents, more than twice as many patents were granted in 2017 as in 1998. Both U. S. patents and trademarks are ubiquitous. The USPTO issued certificates of registration for approximately 3.2 million trademarks and renewed approximately 830,000 trademarks during the 20-year period ended December 31, 2017.
Given the proliferation of U.S. patents and trademarks, it is not surprising that, in recent years, complaints filed in the U.S. District Courts alleging infringement of one or more U.S. patents or trademarks annually number in the thousands. Professionals at BTZ have extensive experience addressing the intricacies of financial/economic damages in intellectual property litigation, as discussed more at:
- Patent Infringement Litigation
- Trademark Infringement Litigation
Source of definitions and numbers: USPTO Performance & Accountability Report, Pages 45, 59 ,169 and 185; and Bloomberg IP Law
The proliferation of U.S. patents is fueled by the rapid pace of global technological innovation. Today, major public companies may own U.S. patent portfolios that number in the tens of thousands. Innovations have led to the creation of products that are increasingly technologically complex. Given the complexity of some products and their myriad of features and functions, it is understandable that they may contain hundreds of components and may utilize the patented inventions of multiple patents, even hundreds or thousands of patents. The technological complexity of products combined with the intricacies of the law and precedents set by the courts regarding damages in patent infringement matters, together with the typical high volume of documents produced in patent matters tends to create thousands of pieces of evidence that may resemble a jigsaw puzzle.
While there is only one correct way to assemble a jigsaw puzzle, the approach to dispute advisory and expert witness services regarding damages in patent infringement matters requires insight and a tailored approach. The pieces of evidence consist of: documents produced by the parties containing financial, marketing and product information; licensing agreements with third parties; communications between the parties and others; legal documents filed in the matter; transcripts of deposition testimony; technical information about the products at issue and patents at issue; relevant case findings; and other public sources of information. Professionals at BTZ have the insight, knowledge, and experience necessary to assimilate these thousands of pieces of evidence to create a credible and cohesive opinion of damages that is supported by a thorough, well-written, concise, and compelling Rule 26 Federal report.
BTZ professionals have experience in determining damages in approximately 50 patent infringement matters including those pertaining to:
- mobile phones;
- the Internet;
- digital cameras;
- gaming devices,
- medical devices; and
- other products.
These engagements were performed on behalf of both defendants and plaintiffs, including Hewlett-Packard, Amazon.com, Qualcomm, Nintendo, Kodak, Kyocera and many other companies ranging from small privately-held companies to public companies. The work of BTZ professionals in patent infringement matters is comprised of:
- Formulation of the damages approach;
- Preparation of deposition topics and questions for PMK witnesses and experts on behalf of the opposing party;
- Identification and description of documents to be requested from the parties;
- Identification and synthesis of evidence relevant to the Georgia-Pacific factors to develop an opinion of the relevant reasonable royalty rate for patent matters;
- Review/analysis of relevant financial information;
- Evaluation of the effect of the Entire Market Value Rule on the appropriate royalty base;
- Evaluation of the factors for recovery of lost profits and calculation of lost profits damages if applicable;
- Consideration of a cap on reasonable royalties based on the costs of non-infringing design alternatives, if any;
- Evaluation of damages caused by price erosion, if applicable;
- Interviews of client personnel and technical experts;
- Research of industries and specific companies;
- Review and evaluation of pertinent contracts;
- Review/analysis of hundreds of patent licenses;
- Analysis of marketing materials and marketing research;
- Review of deposition testimony for relevant evidence;
- Calculation of the royalty base and reasonable royalty damages;
- Communication/coordination with counsel;
- Preparation of reports in compliance with Rule 26 of the Federal Rules of Civil Procedure; and
- Expert witness testimony at deposition and in Federal Court.
BTZ professionals who offer expert consulting and/or expert witness services regarding patent infringement matters include:
- Brian P. Brinig, Principal
- Robert A. Taylor, Principal
- Darlene D. Babcock, Director
Per the USPTO,
“trademark infringement is the unauthorized use of a trademark or service mark on or in connection with goods and/or services in a manner that is likely to cause confusion, deception, or mistake about the source of the goods and/or services”.
If a trademark owner has reason to believe that its mark is being infringed, it may file a civil action in either Federal court or state court depending on the facts and circumstances of the matter. Typically, trademark owners sue for infringement in Federal court according to the USPTO. In these matters, the court may find that the trademark owner is able to prove infringement or, on the contrary, that the defendant has not infringed the trademark or that the trademark owner may not prevail in the matter for other reasons. If the trademark owner proves infringement, the Court may provide remedies in the form of various orders and/or injunctions and may award monetary damages to the trademark owner. Monetary damages may be awarded by the court subject to the principles of equity, such as the profits earned by the defendant as a result of its trademark infringement; the damages incurred by the plaintiff as a result of the defendant’s infringement; the plaintiff’s costs associated with the action; the plaintiff’s attorney fees associated with the action; prejudgment interest; statutory damages; and other issues pertaining to willfulness. The types of recoverable damages are described in the Lanham Act for Federal matters and in various state statutes for matters filed in one of the state courts.
BTZ professionals may assist the court in determining damages in trademark matters by providing various financial opinions on behalf of the trademark owner (the plaintiff) or the alleged trademark infringer (the defendant). These financial opinions may pertain to the profits earned by the defendant associated with its trademark infringement, the damages incurred by the plaintiff as a result of the defendant’s infringement, and other relevant financial matters.
Professionals at BTZ have the insight, knowledge, and experience necessary to assimilate the relevant evidence in trademark infringement matters and generate a credible and cohesive opinion of damages that is supported by a thorough, well-written, concise, and compelling report and deposition and trial testimony. BTZ professionals have extensive financial and accounting experience and have been engaged in numerous matters that involve the determination of an entity’s profits associated with a specific product, line of products, or use of specified intellectual property; and numerous matters that involve the determination of the actual damages incurred by a business/entity as the result of the wrongful actions by a defendant.
BTZ professionals who offer expert consulting and/or expert witness services regarding trademark infringement matters include:
- Robert A. Taylor, Principal
- Darlene D. Babcock, Director