Managing Principal John Jarosz Discusses New Challenges in Patent Damages Litigation

October 14, 2014

Analysis Group Managing Principal John Jarosz participated in an October 9, 2014 webinar discussion of the Sedona Working Group 9 Commentary on Patent Damages and Remedies, which had been published for public comment in June 2014. The webinar discussion was featured in the Bloomberg BNA Patent Trademark & Copyright Law Daily article, "Patent Damages Models Debated During Sedona Conference Webinar" (October 10, 2014), which noted that the "commentary" published by Working Group 9 had proposed a "'retrospective model' that would allow all evidence of the value of a patented invention to be considered as part of a hypothetical negotiation, rather than just the evidence reflecting what was known at the time of first infringement."

Mr. Jarosz's webinar remarks considered the importance of the smallest saleable unit (SSU) as the basis for determining the appropriate royalty base with respect to the "'nexus' or 'footprint' of a patent" at issue in patent infringement litigation. The difficulty of identifying comparable licenses with a narrowly prescribed apportionment can create challenges, Mr. Jarosz explained: "If one carves down to the SSU, are you ever going to be able to find a comparable license?" He also pointed out that when the court starts with the SSU, "we're arguably making what were formerly comparable licenses less comparable," which could lead to "analysis without relying on licenses." Other webinar participants referred to alternatives, such as relying on marketing experts and related studies, but acknowledged that there was likely no straightforward solution to this problem.

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