Technology related litigation, e.g., patent infringement and trade secret misappropriation matters, requires an explanation of complex concepts to the judge and jury. The responsibility for such explanations often falls to experts. Technical experts in patent infringement matters describe how elements of the asserted patent claims are (or are not) embodied in the accused product, to […]
Ocean Tomo Expert Testimony
Expert Testimony Insights on Trade Secrets
In a matter involving misappropriation of trade secrets related to software tools used in the healthcare industry, Syntel Sterling Best Shores Mauritius Ltd. v. Trizetto Grp., Inc., 68 F.4th 792, the Court of Appeals for the Second Circuit’s (“Second Circuit”) Order identified factors that may guide the recovery of damages based on avoided costs under […]
Intellectual Property Issues in Breach of Contract Disputes
An owner of Intellectual Property (IP) can choose to license or transfer the IP it holds. If an owner chooses to license its IP, considerations such as whether the license will be exclusive or non- exclusive, what types of IP will be licensed, which products of the licensee(s) will be covered under the license, the […]
License Comparability Guiding Principles: Two-Pronged Approach for Technical and Economic Comparability
Introduction As part of a damages analysis, when assessing whether a license agreement is comparable for the purposes of a hypothetical negotiation for a reasonable royalty, economic and technical comparability is important to consider. In this post, we posit certain high level guiding principles, focusing on a two pronged approach of technical and economic comparability. […]
The U.S. Supreme Court Rules on Case Concerning the Standard for Enablement
On May 18, 2023, the U.S. Supreme Court issued a unanimous opinion in the case of Amgen Inc. v. Sanofi and Aventisub LLC (Docket No. 21-757), holding that two U.S. patents owned by Amgen failed to satisfy the enablement requirement of 35 U.S.C. §112(a). The Court’s ruling upheld the opinion of the Federal Circuit. U.S. […]
Recent Rulings Suggest Damages Experts Have Discretion in Considering License Agreements Post-Dating a Hypothetical Negotiation
On January 5, 2023, in the matter of Willis Electric Co., Ltd. v. Polygroup Limited, et al., Judge Wilhelmina M. Wright of the United States District Court for the District of Minnesota denied a motion to exclude expert testimony that relied on a license agreement post-dating the hypothetical negotiation.1 In this matter, Plaintiff Willis Electric […]
The U.S. Supreme Court Hears Oral Argument Concerning the Standard for Enablement
On March 27, 2023 the U.S. Supreme Court heard oral arguments in Amgen Inc. v. Sanofi and Aventisub LLC (Docket No. 21-757), a patent dispute originally filed by Amgen in late 2014. Amgen contends that Sanofi and Aventisub’s biologic, Praluent®, infringes seven U.S. patents, including U.S. Patent Nos. 8,829,165 (“the ‘165 Patent”) and 8,859,741 (“the […]
Case Law on the Role of Non-Infringing Alternatives Under a Reasonable Royalty Analysis versus a Lost Profits Analysis
Consideration of non-infringing alternatives may be informative in determining financial damages associated with patent lawsuits under both a reasonable royalty analysis and a lost profits analysis. However, the following case law examples suggest that non-infringing alternatives serve a different role when considered under a royalty analysis compared to consideration under a lost profits analysis. In […]