Patent Infringement Damages Expert Georgia Pacific Factors

Patent infringement damages expert witness Georgia Pacific Factors for determining reasonable royalties.  The Georgia-Pacific Corporation v. U.S. Plywood Corporation lays a foundation regarding patent infringement damages methodologies.

Rate paid for comparable patents support for minimum royalty rates, per unit royalty for various scenarios including hardware and software.  A patent infringement damages expert in Georgia Pacific Factors must understand:

1. Royalties patentee receives for licensing the patent in suit
2. Rates licensee pays for use of other comparable to the patent in suit
3. Nature and scope of license in terms of exclusivity and territory / customer restrictions
4. Licensor’s established policy and marketing program to maintain patent monopoly by not licensing others to use the invention
5. Commercial relationship between licensor and licensee, such as whether they are competitors or inventor and promoter
6. Effect of selling the patented specialty in promoting sales of other products of the licensee; the existing value of the invention to the licensor as a generator of sales of his non-patented items; and the extent of such derivative or convoyed sales
7. Duration of patent and term of license
8. Established profitability of the products made under the patent, its commercial success and its current popularity
9. Utility and advantages of patent property over old modes and devices
10. The nature of the patented invention; the character of the commercial embodiment of it as owned and produced by the licensor; and the benefit of those who have used the invention
11. The extent to which the infringer has made use of the invention and the value of such use
12. The portion of profit or selling price customarily allowed for the use of the invention
13. The portion of realizable profit attributable to the invention as distinguished from non- patented elements, significant features / improvements added by the infringer, the manufacturing process or business risks
14. Opinion testimony of qualified experts
15. Outcome from hypothetical arm’s length negotiation at the time of infringement began

Source: Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116, 1119-20 (S.D.N.Y. 1970), modified and aff’d, 446 F.2d 295 (2d Cir.); Unisplay, S.A. v. American Electronic Sign Co., Inc., 69 F.3d 512, 517 n.7 (Fed. Cir. 1995).

As a Patent Infringement Damages Expert in Georgia Pacific Factors, provide assistance to counsel as an expert consultant in Patent Infringement Damages under 35 U.S.C. §284 with general knowledge of important case law (Georgia-Pacific Corporation v. U.S. Plywood Corporation) regarding damages.  (As noted in CV, Recently declared qualified to testify on damages in the 9^th Circuit, Federal case by HONORABLE RONALD S.W. LEW Senior U.S. District Judge).  Expert witness consulting as Patent Infringement Damages Expert in Georgia Pacific Factors:

1. ‘…adequate compensation for the infringement…’
2. ‘…reasonable royalty…’
3. ‘…lost profits…’

Expert consultant retention asPatent Infringement Damages Expert in Georgia Pacific Factors in :

Horizontal technology and medical / healthcare specific patents and intellectual property

1. database software including indexing algorithms,
2. software distribution and encryption algorithms,
3. complementary DNA (cDNA)
   1. use of cDNA correlated with patient diagnosis, diagnosis codes
   2. use of cDNA correlated with medical procedures and procedure codes
4. healthcare software including but not limited to
   1. physician productivity metrics,
   2. electronic health records (EHRs),
      1. electronic prescribing
      2. encryption hashtags

• audits

1. clinical decision support
2. voice to text for progress notes
3. authentication and patient portals

• medication management and medication formularies

1. medical coding encoders, which analyze physician progress notes or terminology and recommend likely medical diagnosis or procedure codes
2. computer-assisted coding a.k.a. ‘C.A.C.’),
3. and general medical diagnosis and procedure coding as it is used for medical necessity determination and health insurance claims adjudication

The most common framework for determining a reasonable royalty was set forth in the seminal case of Georgia-Pacific Corp. v. United States Plywood Corp. 34 In that case, the court enumerated fifteen factors that it held relevant in determining the reasonable royalty award for the infringer’s actions. (See Damaging Royalties: An Overview (Berkeley Technology Law Journal) id. at 1120. The fifteen factors are: (1) royalties the patentee receives for licensing the patent in suit, (2) rates the licensee pays for other comparable patents, (3) the exclusivity and restriction terms, (4) the Licensor’s policy to maintain patent monopoly by not licensing the invention to others, (5) the commercial relationship between the two parties, (6) effect of selling the patented specialty in promoting sales of other products, (7) duration of patent and term of license, (8) established profitability of the products made under the patent, (9) advantages of the patented component over old components, (10) the nature of the patented invention, (11) the extent to which the infringer has used the invention, (12) the portion of profit customarily allowed for use of the invention, (13) the portion of profit attributable to the invention, (14) expert testimony, and (15) outcome from hypothetical arm’s length negotiation at the time of infringement.) These factors are now ubiquitously known as the Georgia-Pacific factors, and some have deemed them the standard of reasonable royalty calculations.   A Patent infringement damages expert witness Georgia Pacific should have solid grounding in these areas.

Related Posts:

Damaging Royalties: An Overview (Berkeley Technology Law Journal)

Healthcare Patent Expert Witness

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