Course Level:

Intermediate

Advance Preparation:

Print and review course materials

Method of Presentation:

Live Webcast; Group-Internet Based

Prerequisite:

General knowledge of patent laws

Course Code:

149915

NY Category of CLE Credit:

Areas of Professional Practice

NASBA Field of Study:

Accounting – Technical

Total Credit:

1.0 CLE

1.0 CPE (Not eligible for QAS (On-demand) CPE credit)

Kathleen Akers, Director
Economics and IP Specialist
Epsilon Economics

Joanne Johnson, CPA, CLP, Senior Director
Ocean Tomo LLC, a part of J.S. Held

Kathleen Akers, Director

Epsilon Economics

• Introduction
• What is the International Trade Commisssion?
  • Protection of IP rights: unfair import investigations under 19 U.S.C. § 1337 (“Section 337”)
  • Headed by six Commissioners who are nominated by the President and confirmed by the U.S. Senate
  • Three areas of U.S. international trade:
    • Adjudication;
    • Research and analysis; and
    • Maintaining the Harmonized Tariff Schedul
• What are Section 337 Investigations?
  • To obtain Section 337 remedies, the complainant must establish, among other things, an “industry”¹ in the U.S.:
    • Technical Prong: articles protected by the IP
    • Economic Prong: domestic industry
  • Economic Prong:
    • (A) significant investment in plant and equipment;
    • (B) significant employment of labor or capital; or
    • (C) substantial investment in the exploitation of the IP, including through
    • engineering, research and development, or licensing.
• Economic Implications of ITC Remedies
  • Remedies of a Section 337 investigation include:
    • Limited or general exclusion order prohibiting importation of infringing products into the U.S.
    • Cease and desist order
    • Bond during 60-day Presidential Review Period
    • No damages awarded, but…
  • Popularity of ITC has significantly increased
  • Nearly all ITC complaints also had a concurrent district court case asserting the same underlying claims
• Recent Case Law
  • Overhead Door and Chamberlain
  • Apple and Ericsson
  • [TBD]
• Areas for caution in damages calculations
  • Bond
  • Public interest
• Conclusion        

Joanne Johnson, CPA, CLPSenior Director

Ocean Tomo LLC, a part of J.S. Held

• Introduction
• Brief overview of Panduit Factor analysis
  • Panduit Corp. v. Stahlin Bros. Fibre Works, Inc.
    • Overview of four factors, with focus on Factors 1 and 2
• Discussion of notable cases relevant to Factors 1 and 2
  • DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc. (2009)
    •  Demand
      • Factor 1 asks whether there is demand for the patented product as a whole
      • Factor 1 does not require any allocation of demand among the various limitations recited in a patent claim
    •  Non-Infringing Alternatives
      • Factor 2 addresses the elimination or substitution of particular features corresponding to claim limitations
  • Presidio Components, Inc. v. Am. Tech. Ceramics Corp. (2012)
    • Demand
      • Demand is not limited to demand for the patented products.
      • Demand can also arise from a product that directly competes with the infringing device
    • Non-Infringing Alternatives
      • A patentee does not have to prove every instance of no non-infringing alternatives.
      • A patentee only has to show there was a reasonable probability that the sales would have been made but-for the infringement.
  •  Georgetown Rail Equip. Co. v. Holland L.P. (2017)
    • Demand
      • Sales do not have to be made during the damages period to show demand
      • Evidence of demand before the damages period may suffice for Factor 1
• Discussion of commonly misused cases
  • Mentor Graphics Corp. v. Eve-USA, Inc.
    • Discuss recent denied Daubert motions that cite to Mentor Graphics to support apportionment of demand/apportionment of lost profits
  • Garretson v. Clark, 111 U.S. 120 (1884)
    • Disgorgement of defendant’s profits is an obsolete remedy and is a different remedy from a plaintiff’s lost profits
    • Disgorgement of profits have not been available as a remedy for patent infringement since 1946, when Congress amended the patent statute
• Conclusion / Wrap-Up

• Patent Lawyers/Consultants
• Intellectual Property Lawyers/Consultants
• Commercial Litigation Attorneys
• Chief Patent Counsel
• Chief Intellectual Property Officers
• Intellectual Property Managers
• Patent Analysts
• Patent Agents
• Patent Managers
• General Counsel