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 1

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 2

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 3

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 4

Multiplied Damages Willful infringement Must prove infringer acted recklessly High likelihood that infringers 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 5

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 dont accrue until actual notice E.g., letter charging infringement Filing suit If patentee doesnt sell patented product, damages accrue when infringement began 6

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 7

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 8

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 9