A four-part test to prove lost profits was laid out in the landmark case of Panduit Corp. v Stahlin Bros. Fibre Works. Meeting these four parts let the plaintiff prove that it would have sold its products if the infringing invention hadn’t been on the market:
1. Demand for the patented product. Proof of demand is usually shown either by demonstrating the product’s success or demonstrating a long-standing need for a new or improved product.
2. Acceptable alternative technologies. This determines whether the consumer would have bought the patented product rather than another, non-infringing product. Courts have defined a non-infringing substitute to be a product that generally has the same advantages as the patented invention and was available during the period of infringement.
3. Capacity to supply the product. Plaintiffs must show they can make and market the product. Proof typically involves showing a market presence through logs of customer contacts, lists of customers and distributors, ads and a sales history.
4. Quantifying lost profits. Plaintiffs must calculate and support the volume of claimed lost profits.
When lost profits can’t be established, plaintiffs can try to determine reasonable royalty. Another case, Georgia Pacific Corp. v. U.S. Plywood Corp., sets out fifteen factors that are relevant to determining reasonable royalty (see box below). Each factor must be considered, and together, they establish the minimum for damages when there is no demonstration of lost profits.
But a little knowledge is a dangerous thing. Some financial experts, aware of the Panduit and Georgia Pacific cases, rush in to calculate damages using reasonable royalty. But it’s critical to be aware that in some cases, both lost profits and reasonable royalty can be awarded (Standard Indus., Inc. v. Mor-Flo Indus. Inc.).
In other words, a financial expert who casually applies established or reasonable royalty as a measure of damages without a thorough investigation to determine if lost profits can be identified has just undervalued — perhaps significantly — your claim. Consult with your attorney about doing a thorough investigation to determine if lost profits can be identified.
The economic factors that determine the value of a patent — and thus determine lost profit damages — also influence the determination of a reasonable royalty. The following factors laid out in the Georgia-Pacific case provide a starting point for determining a reasonable royalty: