In intellectual property litigation, the parties hire CPA expert witnesses to calculate damages relating to claims of patent infringement, copyright infringement, trademark infringement, trade secret infringement and false advertising.
The most common task we are asked to perform is the determination of a reasonable royalty using the 15 well-known “Georgia-Pacific Factors1”:
These Factors Include:
- The royalties received by the patentee for the licensing of the patent in suit, proving or tending to prove an established royalty.
- The rates paid by the licensee for the use of other patents comparable to the patent in suit.
- The nature and scope of the license, as exclusive or non-exclusive, or as restricted or non-restricted in terms of territory or with respect to whom the manufactured product may be sold.
- The licensor’s established policy and marketing program to maintain his patent monopoly by not licensing others to use the invention or by granting licenses under special conditions designed to preserve that monopoly.
- The commercial relationship between the licensor and licensee, such as, whether they are competitors in the same territory in the same line of business; or whether they are inventor and promoter.
- The 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.
- The duration of the patent and the term of the license.
- The established profitability of the product made under the patent; its commercial success; and its current popularity.
- The utility and advantages of the patented property over the old modes or devices, if any, that had been used for working out similar results.
- The nature of the patented invention; the character of the commercial embodiment of it as owned and produced by the licensor; and the benefits to those who have used the invention.
- The extent to which the infringer has made use of the invention; and any evidence probative of the value of that use.
- The portion of the profit or of the selling price that may be customary in the particular business or in comparable business to allow for the use of the invention or analogous inventions.
- The portion of the realizable profit that should be credited to the invention as distinguished from non-patented elements, the manufacturing process, business risks, or significant features or improvements added by the infringer.
- The opinion testimony of qualified experts.
- The amount that a licensor (such as the patentee) and licensee (such as the infringer) would have agreed upon (at the time the infringement began) if both had been reasonably and voluntarily trying to reach an agreement, that is, the amount which a prudent licensee – who desires, as a business proposition, to obtain a license to manufacture and sell a particular article embodying the patented invention – would have been willing to pay as a royalty and yet be able to make a reasonable profit and which amount would have been acceptable by a prudent patentee who was willing to grant a license.
1Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), modified, 446 F.2d 295 (Second Cir. 1970), cert. denied, 404 U.S. 870 (1971).
Representative Intellectual Property Engagements
View a list of representative intellectual property engagements.
Trial Testimony: Intellectual Property
- Dermal Research Laboratories, Inc. v. Naturopathic Laboratories International, Inc.
- Juicy Whip, Inc. v. Orange Bang, Inc.
- Bella Rosa, LLC, et al. v. Derek A. Van de Water, et al.
- Koon Chun King Kee Soy & Sauce Factory, Ltd. v. Eastimpex, et al.
- Advanced Magnetic Closures, Inc. v. Rome Fasteners, Inc.
- Koon Chun King Kee Soy & Sauce Factory, Ltd. v. Star Mark Management, Inc. et al.
- Maker’s Mark Distillery, Inc. v. Diageo North America, Inc., et al.
- The Citri-Lite Company, Inc. v. Cott Beverages, Inc.
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