Thursday, June 17, 2010

Laserdynamics v. Quanta -- The Continuing Slow Death of the Entire Market Value Rule

Last September in Lucent v. Gateway, the Federal Circuit finally took control of the law of patent damages by, with one hand, upholding the entire market value rule and, with the other hand, killing it. Former Chief Judge Michel made it clear that, before the courts were going to allow damages for infringement of a patent covering a small component or feature of a larger product to be based on the revenues for the sale of the entire product, the plaintiff had to prove that the patented technology was the reason that customers bought the product in the first place, i.e. that the "entire market value" of the product was the patented technology.

The Lucent decision has had a pretty good run since last September -- although it has mainly come up in decisions where new Chief Judge Rader has taken the district court bench.

However, last week, Judge Ward of the normally plaintiff-friendly Eastern District of Texas applied the new strict standard to cut Laserdynamics' $52 million award down to a mere $6 million.

In this case, the patent covered an optical disk reading method enabling a computer to identify an inserted disk and find the appropriate software to read or play it. The plaintiff’s expert testified the royalty should be 6% on stand-alone disk drives ($1.69/disk drive) and 2% on assembled computers containing the disk drive ($17.20/computer), using the entire market value rule. The jury’s verdict of $52 million was based on this analysis

Judge Ward held that the application of the entire market value rule was improper and ruled that the price of the finished computer should not be included in the verdict. He held that Laserdynamics had presented no evidence that its patented method drove the demand for QCI’s finished computers and noted that “the claimed invention embodied in the disc-drive is but one relatively small component of the entire assembled computer."

Ward further observed that “there is nothing in the record that shows the demand for QCI’s assembled computers was in any way driven by LaserDynamics’ disc-discrimination method patent” and that LaserDynamics “did not carry its evidentiary burden of proving that anyone purchased [the assembled computer] because of the patented method.”

Indeed, LaserDynamics pointed to no evidence that Quanta sold more of the assembled computers because it included drives practicing LaserDynamics’ patent.

So, if your patent covers the bell on the bicycle instead of the bicycle itself and you can't show that customers are streaming into the shop asking for your special bell, don't think you will get any sympathy from the bench. Because if a plaintiff can't cut a break in EDTex, it isn't going to happen anywhere.

Tuesday, June 15, 2010

Dow "Bags" a $62M Verdict From Nova Chemicals -- But Will it Hold Up on Appeal?

Dow Chemicals convinced a Delaware jury today to award it $61.7 million in damages in its patent infringement lawsuit against rival Nova Chemicals in a lawsuit which involved Dow's patents for super-strong thin-film plastics used in grocery bags.

As readers here know, I applaud any damages award in patent infringement cases between competitors. In fact, $57.5 million of the award was for profits Dow claimed it lost because of Nova's sales of competing plastic products.

However, there is some reason to think that the Dow lost profits award may not hold up on appeal -- or even on a challenge in the District Court.

In order to obtain an award of lost profits, a plaintiff must satisfy the so-called Panduit test -- which requires the plaintiff to prove that there were no non-infringing alternatives to the infringing product. The theory behind this requirement is that, to be awarded lost profits, a plaintiff must show that, if the infringer's customer did not buy the infringing product, it would have bought the plaintiff's product instead -- thus, the infringement caused the sale to be "lost." [If the "alternative" is also infringing -- even if sold by another company -- it does not "count"]

According to Nova, in presenting its damages case, Dow did not properly consider the existence of alternatives to the infringing Nova product which Nova's customers could have selected. Dow's own expert, in fact, conceded that Exxon made a non-infringing alternative and that, in fact Nova also sold an alternative product which Dow admitted did not infringe.

Dow also based its claim that it would have captured 80% of Nova's sales of its infringing product, not on rigorous market research, but on the testimony of "enthusiastic" Dow salesmen -- not the kind of solid economic data the Federal Circuit demands.

It remains to be seen whether the economic testimony supporting this verdict will hold up at the Federal Circuit or whether the District Court itself may strike down the award.

Though Dow seems to think it has this verdict in the bag, it might want to check for holes in the bottom.

Friday, June 04, 2010

Marketing and Enforcing Your Intellectual Property – An Inventor’s Manifesto

It is truthfully said that a piece of property, whether tangible or intangible, is only worth what someone will pay for it. However, if potential customers do not know the piece of property exists or how good it is, or how they can use it to their best advantage, the piece of property is still worthless.

Likewise, if a piece of property can be stolen or misappropriated by anyone without payment to the owner, that property is equally worthless – no one will pay for something they can get for free, without fear that anyone will pursue them for payment.

This principle is as true for patents and other forms of intellectual property as for a piece of land or a car – perhaps even more so. An inventor might have the best idea in the world and think that, as a result the world will come to his door with bags of gold for the right to use his invention, but as he will quickly discover, until he markets his invention – just like any other product – no one will pay him for his fantastic invention. And, until he decides to enforce his patent rights, the world will rip him off with impunity.

Far too many inventors spend years developing their inventions and thousands of dollars applying for patents without aggressively pursuing the next step – marketing their invention like they were selling a product. Far too many patent owners look helplessly on while large companies use their inventions without paying the “reasonable royalty” the U.S. Congress mandates.

The only solution is for inventors, the companies and universities that employ them to take action to ensure that their rights are fully protected and theat they get all the compensation they are entitled to for their invention.

Accordingly, I propose the following principles for this inventor manifesto:

1. Every invention must be protected from those who would steal it.

It is the job of the inventor and his employer to make sure that every available form of intellectual property protection is employed to ensure that no one uses the invention without payment. If you don’t know how to protect your invention – whether it’s a patent, trade secret or copyright – find out and get it done. If it was worth putting the time into developing, it’s worth spending the money to protect.

2. Every invention must be marketed like Apple

If no one knows about your great idea, no one will buy it or license it – simple as that. If the invention is not being used exclusively to support the inventor’s company monopoly in its product, it is the job of the inventor or his company to find the very best home for that invention -- someone who can utilize that idea for the greatest possible product. Being shy about promoting yourself or your great idea betrays the hard work you put into developing this idea in the first place and deprives the marketplace of the use of your great idea. Steve Jobs isn’t shy about finding the best possible market for Apple’s innovations – you should have the same enthusiasm for yours.

3. Intellectual property rights must be decisively enforced

Intellectual property rights – particularly patent rights – give the owner a monopoly on their use. However, those rights are worthless if they are not enforced. You may need to hire a lawyer to inform those who are using your patent that they are in violation of your sole rights and that they must “cease and desist” immediately. You may need to sue these infringers to protect your rights in your invention. You must be prepared to do this – and do it firmly and decisively – if you take your invention seriously and are willing to stick up for your rights in that invention.

Infringers and their flacks in the media will call you a “patent troll” and claim that you are “abusing the system” by asserting your legal right to stop infringers from stealing your invention and to be compensated for their infringement. Ignore them. These epithets should be reserved for those companies who scoop up other people’s patents for the sole purpose of bringing a lawsuit – people who have contributed nothing to the economy. The true innovators should proudly assert their patent rights against those who would appropriate them without compensation.

Patent owners who are not willing to let their years of work go to waste and be freely appropriated by their competitors and other sharks in the marketplace must sign on to and dedicate themselves to following this manifesto.

Wednesday, June 02, 2010

Hasbro v. Buzz Bee: Nerf Wars and Super-Soaker Nausicaans

In a patent litigation development that I applaud, Hasbro sued two of its competitors -- Buzz Bee Toys and Lanyard Toys -- for what appears to be flat out copying of its Nerf-N-Strike and Super Soaker products. Whatever the merits of the patent claims, I have to look kindly on a competitor using its patents the way they were intended to be used -- to exclude a competitor from a market that the patent holder has legitimately monopolized. Hasbro is actually using its patents to protect its very profitable market segment and is punishing companies who are competing without expending the time and effort necessary to develop their own products.

Is Hasbro being a bully by using its patents to beat up on its smaller rivals? I don't think so. If you believe that patents have any economic worth, their primary utility is to enable a company to protect its competitive place in the market and that the damages caused by the infringement of a patent by a competitor are competitive injuries. This is how we know how much a patent is really worth -- by how much infringement of that patent harms the competitive position of the patentholder. It is this kind of patent lawsuit -- between competitors -- which validates the patent system in the first place. If a patentholder cannot use its patent to maintain the competitive position it gained by its patented innovation in the first place, I do not see much point in the patent system at all.

So, bravo, Hasbro -- just don't put these weapons into the wrong hands!