Издательство John Wiley, 2003, -503 pp.
This book arises from the authors’ collective experience acting as damage experts and managing damage experts in intellectual property (IP) cases. In case after case we have observed that the damage portion of IP litigation is treated as a neglected stepchild. This failure to prioritize construction of a damage theory is curious since so much rides on each side’s evaluation of damages, both for settlement purposes and for trial preparation. Since it is so typical to allocate insufficient resources and inadequate attention to damages, lawyers know little about how to effectively use their own experts and undermine opposing experts, and the experts themselves do not possess the necessary background in IP to be effective. This uneducated state precludes informed analysis of IP litigation, including the decision of whether to litigate at all, what possible outcomes to anticipate, and what terms or financial compensation might constitute a reasonable settlement.
Over the years the authors have sought to fill this vacuum, first within their (two authors) own law firm and then more generally. We have taught IP damages classes for the National Association of Valuation Analysts, given presentations to numerous law firms, and instructed economists at the University of Utah in the law and economics program where Mark Glick is a professor. This book represents our attempt to systematize the general knowledge that experts and lawyers need to have in order to be effective in evaluating, presenting, and opposing damage claims in IP cases.
There are several implicit themes that run throughout this text. It may be useful to recognize these themes at the outset to establish a context for the following chapters. Initially, we are not conceed at all with issues such as how to answer questions in a deposition. An informed, honest expert will have little problem with leaing basic litigation skills. Of greater moment for any expert is a firm grasp of the necessary substantive knowledge. The deficiencies experts often display are, in part, a consequence of the departmentalization of most business schools in the United States. For example, there is not one question conceing calculating future sales on the CPAexam, and standard accounting programs do not offer any courses that prepare their majors for litigation support. However, there is a vast industry of accountants in the litigation support area, and lawyers typically uncritically rely on these experts for their damages cases. In contrast, economists are trained in microeconomics and econometrics (statistics applied to economics), a skill set remarkably compatible with judicial precedent on damages. Yet nothing in an economics Ph.D. program will prepare an economist to effectively guide attoeys in the discovery process, or understand the structure of the books and records of the company, or even how to apply their economic training in the specific IP context. Financial economists are yet another breed. Finance programs teach valuation principles, discounting, and risk analysis (i.e., all of the mechanics of the damage calculation). But none of these skills will have any value in litigation unless the attoeys provide the right information, effectively relate to the expert the judicial requirements for the analysis, and manage and combine the right skill sets for each case situation. In short, our experience is that success in an intellectual property damage case requires experts with complementary skills, combined with attoey instruction and management.
In the chapters that follow, we hope to provide experts and lawyers with what they need to know about intellectual property law and intellectual property litigation in order to be effective in their roles. Some chapters will be more relevant for some than others. For example, Chapters 1 and 2 on litigation and Daubert cover material many attoeys are likely to be familiar with, while nonlawyer experts are less likely to have been exposed to these topics. Experts, on the other hand, may consider skipping some of the chapters on economics, finance, and accounting, while lawyers should read those chapters carefully in order to understand what information and evidence their experts will require in order to be effective. Attoeys also may be more interested in the factors that determine potential damages than in the equations necessary for the actual calculations. In short, the chapters will vary in their direct applicability to the roles of experts and attoeys in an intellectual property damage case. However, gaining an increased understanding of the skills and knowledge that each team member will bring to the table can only benefit the entire litigation enterprise. Finally, because this book cannot substitute for formal training and experience, we provide suggestions for additional reading so that any specific topic can be studied in greater depth.
Part One: Legal, Economic, and Financial Foundations of Intellectual Property Damages 1
The Litigation Process
Damage Principles and Daubert
Introduction to the Economics of Intellectual Property Damage Calculations
Introduction to Accounting Principles in Intellectual Property Damages
Financial Principles Used in Intellectual Property Damages
Part Two: Patent Infringement Damages
Introduction to Patent Law
How to Calculate Patent Damages
Introduction to the Antitrust Laws
The Intellectual Property–Antitrust Interface
Part Three: Copyright, Trademark, and Trade Secret Damages
Introduction to Copyright Law
Introduction to Trademark Law and Trade Secret Law
Misuse of Copyrights, Trademarks, and Trade Secrets
How to Calculate Copyright, Trademark, and Trade Secret Damages
The Nuts and Bolts of Intellectual Property Damage Calculation
Part Four: Appendices
A Sample Requests for Production of Documents and Interrogatories
B Sample Expert Report of John Smith
C Antitrust Guidelines for the Licensing of Intellectual Property
D Sample Patent
E United States Code (U.S.C.) Title 35—Patents
F Copyright Act of 1976
G Trademark Act of 1946 (Lanham Act), as Amended
H Uniform Trade Secrets Act with 1985 Amendments
I Restatement of the Law, 3rd, Unfair Competition
This book arises from the authors’ collective experience acting as damage experts and managing damage experts in intellectual property (IP) cases. In case after case we have observed that the damage portion of IP litigation is treated as a neglected stepchild. This failure to prioritize construction of a damage theory is curious since so much rides on each side’s evaluation of damages, both for settlement purposes and for trial preparation. Since it is so typical to allocate insufficient resources and inadequate attention to damages, lawyers know little about how to effectively use their own experts and undermine opposing experts, and the experts themselves do not possess the necessary background in IP to be effective. This uneducated state precludes informed analysis of IP litigation, including the decision of whether to litigate at all, what possible outcomes to anticipate, and what terms or financial compensation might constitute a reasonable settlement.
Over the years the authors have sought to fill this vacuum, first within their (two authors) own law firm and then more generally. We have taught IP damages classes for the National Association of Valuation Analysts, given presentations to numerous law firms, and instructed economists at the University of Utah in the law and economics program where Mark Glick is a professor. This book represents our attempt to systematize the general knowledge that experts and lawyers need to have in order to be effective in evaluating, presenting, and opposing damage claims in IP cases.
There are several implicit themes that run throughout this text. It may be useful to recognize these themes at the outset to establish a context for the following chapters. Initially, we are not conceed at all with issues such as how to answer questions in a deposition. An informed, honest expert will have little problem with leaing basic litigation skills. Of greater moment for any expert is a firm grasp of the necessary substantive knowledge. The deficiencies experts often display are, in part, a consequence of the departmentalization of most business schools in the United States. For example, there is not one question conceing calculating future sales on the CPAexam, and standard accounting programs do not offer any courses that prepare their majors for litigation support. However, there is a vast industry of accountants in the litigation support area, and lawyers typically uncritically rely on these experts for their damages cases. In contrast, economists are trained in microeconomics and econometrics (statistics applied to economics), a skill set remarkably compatible with judicial precedent on damages. Yet nothing in an economics Ph.D. program will prepare an economist to effectively guide attoeys in the discovery process, or understand the structure of the books and records of the company, or even how to apply their economic training in the specific IP context. Financial economists are yet another breed. Finance programs teach valuation principles, discounting, and risk analysis (i.e., all of the mechanics of the damage calculation). But none of these skills will have any value in litigation unless the attoeys provide the right information, effectively relate to the expert the judicial requirements for the analysis, and manage and combine the right skill sets for each case situation. In short, our experience is that success in an intellectual property damage case requires experts with complementary skills, combined with attoey instruction and management.
In the chapters that follow, we hope to provide experts and lawyers with what they need to know about intellectual property law and intellectual property litigation in order to be effective in their roles. Some chapters will be more relevant for some than others. For example, Chapters 1 and 2 on litigation and Daubert cover material many attoeys are likely to be familiar with, while nonlawyer experts are less likely to have been exposed to these topics. Experts, on the other hand, may consider skipping some of the chapters on economics, finance, and accounting, while lawyers should read those chapters carefully in order to understand what information and evidence their experts will require in order to be effective. Attoeys also may be more interested in the factors that determine potential damages than in the equations necessary for the actual calculations. In short, the chapters will vary in their direct applicability to the roles of experts and attoeys in an intellectual property damage case. However, gaining an increased understanding of the skills and knowledge that each team member will bring to the table can only benefit the entire litigation enterprise. Finally, because this book cannot substitute for formal training and experience, we provide suggestions for additional reading so that any specific topic can be studied in greater depth.
Part One: Legal, Economic, and Financial Foundations of Intellectual Property Damages 1
The Litigation Process
Damage Principles and Daubert
Introduction to the Economics of Intellectual Property Damage Calculations
Introduction to Accounting Principles in Intellectual Property Damages
Financial Principles Used in Intellectual Property Damages
Part Two: Patent Infringement Damages
Introduction to Patent Law
How to Calculate Patent Damages
Introduction to the Antitrust Laws
The Intellectual Property–Antitrust Interface
Part Three: Copyright, Trademark, and Trade Secret Damages
Introduction to Copyright Law
Introduction to Trademark Law and Trade Secret Law
Misuse of Copyrights, Trademarks, and Trade Secrets
How to Calculate Copyright, Trademark, and Trade Secret Damages
The Nuts and Bolts of Intellectual Property Damage Calculation
Part Four: Appendices
A Sample Requests for Production of Documents and Interrogatories
B Sample Expert Report of John Smith
C Antitrust Guidelines for the Licensing of Intellectual Property
D Sample Patent
E United States Code (U.S.C.) Title 35—Patents
F Copyright Act of 1976
G Trademark Act of 1946 (Lanham Act), as Amended
H Uniform Trade Secrets Act with 1985 Amendments
I Restatement of the Law, 3rd, Unfair Competition