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

2. Patent Remedies
Scott DeNike
Russ Magnum
Andy Pho
Kim Schenk

3. 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

4. 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.

5. Equitable Remedies: Injunction (or enhanced damages)
X26P
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6. 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 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.
lawsuit-to-ban-sale-of.html

7. 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?

8. 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

9. Equitable Remedies: Resources and References
Damages Resources
Reasonable Royalty: Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, (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

10. END