Intellectual Property Law
New Matter Spring 2015, Volume 40, Number 1
Content
- 2015 New Matter Author Submission Guidelines
- Case Comments
- Contents
- Copyright Interest Group
- Del Monte International v. Del Monte Corporation: the Battle for the .Delmonte Top-Level Domain
- Entertainment and Sports Law Interest Group
- Federal Circuit Review
- Intellectual Property Section Executive Committee 2014-2015
- Intellectual Property Section Interest Group Representatives 2014-2015
- International Interest Group
- International Ip Developments
- Legislation Update
- Letter from the Chair
- Letter from the Editor-in-Chief
- Licensing Interest Group
- Litigation Interest Group
- MCLE Self-Study Article
- Ninth Circuit Report
- Patent Interest Group
- Supreme Court Considers Two Trademark Cases That May Alter How Holders Register, Protect, and Use Their Marks
- Technology, Internet, and Privacy Interest Group
- The Licensing Corner
- The State Bar of California Intellectual Property Alumni
- Trade Secrets Interest Group
- Trademark Interest Group
- Sins of Omission: Panduit's Overreach in Patent Model Jury instructions
Sins of Omission: Panduit’s Overreach in Patent Model Jury instructions
ROBERT W. PAYNE Hoge, Fenton, Jones & Appel, Inc.
It is generally an article of faith that to obtain an award of lost profits in patent infringement cases, a patentee plaintiff has the burden of proving a double negative. it must prove the non-existence of non-infringing substitutes. This is the teaching gleaned and consistently appliedâor misappliedâfrom the Panduit case.1 This burden effectively "cuts off" entitlement to lost profits awards in many business-to-business patent cases,2 forcing plaintiffs to fall back on smaller reasonable royalty awards.
But that burden does not, or should not, always apply. Major model patent jury instructions contribute to the problem. While their treatment of Panduit leads to only minor concerns, they do not clearly set out the occasions in which the Panduit analysis, including the requirement to prove the double negative, does not apply. These sins of omission have a critical impact on obtainingâor seeking to obtainâlost profits in patent cases. While commentators decry the significant cost of patent litigation brought by patent trolls in obtaining "unwarranted" royalty awards, few focus on the impact of devalued lost profits claims in purely business-to-business disputes.
Case law, policy, and logic mandate that those addressing patent lost profits recognize at the forefront at least three important exceptions. Those exceptions are: