Patent Remedies USSC Updates Substantive Damages Analysis Apportionment Licensing evidence Design patents Procedural Considerations Injunctions

Patent Remedies Scott DeNike Russ Magnum Andy Pho Kim Schenk

Patent Damages at the Supreme Court in 2017 Laches SCA Hygiene Products v. First Quality Baby Products On March 21, 2017, the Supreme Court issued a decision holding that laches cannot be invoked as a defense against a claim for damages brought within the Patent Act’s 6-year limitations period under 35 U.S.C. §286. Extraterritoriality/Exhaustion Life Technologies v. Promega On February 22, 2017, the Supreme Court held that supplying a single component of a multicomponent product for manufacture overseas does not give rise to liability under 35 U.S.C. §271(f). Impression Products, Inc. v. Lexmark International, Inc. In its May 20, 2017 decision, the Supreme Court held that when a patent owner sells a product, the sale exhausts all patent rights in the item being sold regardless of any restrictions the patentee attempts to impose on the location of the sale. INSIGHTS Litigation Webinar Series

Design Patents: Article of Manufacture – Balancing Test INSIGHTS Litigation Webinar Series The scope of the design claimed in the plaintiff’s patent, including the drawing and written description, provides insight into which portions of the underlying product the design is intended to cover, and how the design relates to the product as a whole; The relative prominence of the design within the product as a whole; Whether the design in conceptually distinct from the product as a whole (i.e. does the product contain other components that embody conceptually distinct innovations?); The physical relationship between the patented design and the rest of the product may reveal that the design adheres only to a component of the product.

Equitable Remedies: Injunction (or enhanced damages) X26P Safer and more effective than the X26E, the X26P is a piece of law enforcement technology that's been improved inside and out to help you act confidently in the field. X2 A dependable piece of law enforcement technology, the X2 incorporates agencies’ most requested features such as a backup shot, dual lasers, and a warning arc to protect life in the field.

Equitable Remedies: Injunction (or enhanced damages) Jul 24, 2017 Alive and Well, except for the enjoined Axon Enterprise Inc. (NASDAQ:AAXN “Taser”) wins patent lawsuit to ban sale of competitor's weapon products ... (1) Taser received a judgment and permanent injunction against Stinger Systems' infringing S-200 conducted electrical weapons in 2010. (2) Taser also received the same injunction against Karbon Arms' MPID conducted electrical weapons in 2014. Both injunctions put both companies out of business, according to Axon. (3) Phazzer Electronics Inc. is now also “insolvent,” according to documents publicly filed by its counsel. https://www.bizjournals.com/phoenix/news/2017/07/24/axon-wins-patent- lawsuit-to-ban-sale-of.html

Equitable Remedies: Injunction (or enhanced damages) Caller “Dennis”: Pop quiz, hotshot. There's an [injunction] on a [product]. Once the [product ships], [you, the company, etc., are in contempt]. If [the product does not ship, you, the company, etc. go out of business]. What do you do? What do you do? Howard Payne: Pop quiz, hotshot. There’s a bomb on a bus. Once the bus goes 50 miles an hour, the bomb is armed. If it drops below 50, it blows up. What do you do? What do you do?

Equitable Remedies: Injunction (or enhanced damages) Find a subject matter expert Review invoices Become a subject matter expert Find a “roadmap” or “playbook”—see below and next slide Qualcomm v. Broadcom, Broadcom v. Qualcomm, Axon Enterprise Inc. (Taser) What is colorably different? Redesign the product Get a technical opinion of the redesign Get a legal opinion of the redesign Send an “end-of-life” notice Offshore: manufacturing, testing, sales (billing to/from), shipments Talk license, settlement Avoid contempt, stay out of court

Equitable Remedies: Resources and References Damages Resources https://www.fr.com/services/litigation/patent/patent-damages/patent-damages-primer/ Reasonable Royalty: Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1121 (S.D.N.Y. 1970), mod. and aff’d, 446 F.2d 295 (2d Cir.), cert. denied, 404 U.S. 870 (1971), Lost Profits: Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir.), cert. denied, 516 U.S. 867 (1995). This was an En Banc Fed Circ. decision. Injunctions eBay Inc. v. MercExchange LLC, 126 S. Ct. 1837, 1840, 78 U.S.P.Q.2d 1577, 1579 (2006) Apple Fed Circuit cases: Apple Inc. v. Samsung Electronics Co. (“Apple I”), 678 F.3d 1314, 102 U.S.P.Q.2d 1633 (Fed. Cir. 2012); Apple Inc. v. Samsung (“Apple II”), 695 F.3d 1370, 104 U.S.P.Q.2d 1401 (Fed. Cir. 2012); Apple Inc. v. Samsung (“Apple III”), 735 F.3d 1352, 108 U.S.P.Q.2d 1833 (Fed. Cir. 2013) Not colorably different: Tivo Inc. v. Echostar Corp., 646 F.3d 869 Int’l Rectifier Corp. v. IXYS Corp., 383 F.3d 1312 Contempt: Tivo v. Echostar Enhanced damages: Read Corp. v. Portec, Inc., 970 F.2d 816

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