美国专利诉讼侵权损害计算方法最新进展(1)
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美国计算专利侵权损害赔偿额主要有两种方式：一是专利权人的利润损失；二是合理许可费。
与中国不同，美国大多数专利案件的赔偿数额是通过合理许可费来计算的。这是因为美国法院认为：第一，很多情况下专利权人不直接生产和销售专利产品，或者其和侵权人之间不存在直接的竞争关系，因而无法适用权利人利润损失来计算损害赔偿。第二，即便侵权人和专利权人是直接的竞争对手，但专利权人的利润损失计算需要原告承当较重的举证责任，而在合理许可费的判决上，无须证明因果关系，原告的举证责任较轻，同时法院拥有很大的自由裁量权，故从保护专利权人利益和有利于案件裁决的角度看，法院更多地使用合理许可费来计算损害赔偿额。
美国法院在专利侵权案件中，常常采用虚拟谈判法确定合理的许可使用费。最常采用的是在“Georgia-Pacific公司案”中提出了15个影响专利许可费用的要素，即“Georgia-Pacific要素”。
这些要素包括：权利人许可涉案专利已收取的许可使用费；被许可人使用与涉案专利相类似专利所支付的许可使用费；许可的性质及范围；许可方的既定许可策略；许可人与被许可人的商业关系；销售专利特色产品对于被许可人其他产品促销的影响；专利的存续期限以及许可的期限；由专利而生产的产品的获利程度、商业成功以及产品的市场认可程度；与旧的方法和设备相比，专利所具有的优势；专利的性质与专利为使用者带来的利益；侵权人利用发明的程度以及任何可证明该利用的价值的证据；在特定行业或类似行业应用发明通常可获得的利润或售价；在所实现利润中应归功于发明的利润比例；适格专家的意见、许可方和被许可方愿意接受的金额。
此外，如果因产品的整个市场价值都取决于专利的功能、或者说专利特征是消费者选择产品的理由，因此权利人的损害赔偿额应当以整个侵权产品，包括专利和非专利部分的全部获利来计算，这就是全部市场价值规则(the Entire Market Value Rule)。
如果对侵权产品的总价值中可归功于（attributable to）被侵权专利技术的贡献进行确定，作为计算专利侵权赔偿的基数，这就是分摊规则（Apportionment）。
本文分享了今年美国联邦巡回上诉法院关于侵权损害赔偿的两个最新案例- Finjan，Inc v. Blue Coat Systems，Inc.，879 F.3d 1299（Fed.Cir.2018）和Exmark Manufacturing Company Inc. v. Briggs & Stratton Power Products Group, LLC, 879 F.3d 1332 (Fed. Cir. 2018)。
后者我之前分享过：
这两个案例核心还是在于何时适用分摊规则，何时可以适用全部市场价值规则，还是有一定借鉴意义，推荐大家学习。
Recent Federal Circuit Decisions Confirm Distinctions Between Apportionment, the Entire Market Value Rule, and the Georgia Pacific Factors
MANNY JOSEPH CAIXEIRO
It has long been understood that damages for patent infringement must reflect the value of the patented technology, and that a prevailing patent holder should not reap the rewards of unpatented or conventional technologies. However, tailoring damages to the value of the patented technology can be challenging for litigants, counsel and experts, alike. Two recent decisions from the Federal Circuit Court of Appeals—Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) and Exmark Manufacturing Company Inc. v. Briggs & Stratton Power Products Group, LLC, 879 F.3d 1332 (Fed. Cir. 2018) —illustrate the nuances, pitfalls and evolving law that litigants must be aware of when calculating damages for complex infringing products.
Courts apply several doctrines to tailor the amount of damages to the value of the patented technology. For example, analyses of the appropriate royalty rate typically consider the “Georgia-Pacific Factors.” Several of the Georgia-Pacific Factors call for an analysis of the patented technology’s value, as distinguished from other factors that contribute to an infringing product’s sales. These include, most notably, Factors 9 (“The utility and advantages of the patent property over the old modes or devices, if any, that had been used for working out similar results”), 10 (“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”), and 13 (“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.”).
When it comes to the royalty base (i.e., the amount of revenue that will be subject to the royalty rate), the courts invoke the “Entire Market Value Rule.” The Entire Market Value Rule provides that when an infringing product contains a mix of patented and unpatented features, a prevailing patent holder must only apply the royalty rate to the portion of revenue generated by the smallest salable patent-practicing unit. However, an important exception exists: if the patented technology is the basis for consumer demand for the entire product, or substantially creates the value of the component parts, then the successful patent holder may calculate damages by applying the royalty rate to the revenue generated by the entire accused product.iii Thus, under the Entire Market Value Rule, if the patented technology does not drive the market value for a multi-component product, then a prevailing patent holder may only obtain royalty damages on the smallest component containing the patented technology—which may be smaller than the product at large.
Notably, the Entire Market Value Rule cannot be circumvented by using a low enough royalty rate. In other words, if the patented technology does not drive market value, the prevailing patent holder cannot overcome the Entire Market Value Rule—and thereby calculate damages by reference to revenues generated by the entire infringing product—merely by lowering the rate.
A third doctrine applied by the courts to tailor damages is “apportionment,” which is a more general concept that “the ultimate combination of royalty base and royalty rate must reflect the value attributable to the infringing features of the product, and no more.”iv Apportionment requires that, for multi-component products, the patent holder must provide sufficient evidence to show that its damages analysis separates and distinguishes between the values of an infringing product’s patented and unpatented features.
While most litigants and courts recognize the general need to tailor damages to the value of the patented technology, they are often imprecise as to which of the aforementioned doctrines are being applied in any given case. As a result, patent damages decisions—even from the same court—can appear inconsistent, create confusion, and lead litigants to make avoidable mistakes. Two decisions from the Federal Circuit’s most recent term---Finjan and Exmark--illustrate the dangers of misunderstanding and improperly applying apportionment, the Entire Market Value Rule, and the Georgia-Pacific Factors.
In Finjan, a patent was successfully asserted against a multi-component product: WebPulse, a “cloud-based service that provides information about downloadables to a customer’s network gateway in order to help the network gateway determine whether a particular downloadable can be accessed by a specific end user.”v Within WebPulse, all of the patent-practicing functionality was contained within a portion of the product called the “dynamic real-time rating engine” (“DRTR”). But even the DRTR was a multi-component product: it contained myriad features besides the patent-practicing functionality. At trial, Finjan calculated damages using a royalty base equal to the revenue generated by DRTR, arguing that DRTR was the smallest salable patent-practicing unit. While Finjan apportioned damages as between the DRTR and WebPulse’s other aspects, it did not apportion damages as between DRTR’s various features. Finjan argued that because DRTR was the smallest salable patent-practicing unit, no further apportionment was required.
The Federal Circuit disagreed, and held that because the DRTR was a multi-functional component, Finjan was required to apportion damages between DRTR’s patent-practicing and non-patent-practicing features. With respect to Finjan’s argument that the DRTR was the smallest salable patent-practicing unit, the court observed that “smallest salable patent-practicing unit” is a concept related to the Entire Market Value Rule—but this was not an Entire Market Value Rule case. There was no argument presented, for example, that the patented functionality drove sales of WebPulse, such that Finjan was entitled to calculate damages using all of WebPulse’s revenues as a base. In any event, even when a patent holder calculates its royalty base by reference to the smallest salable patent-practicing unit, the patent holder may still be required to apportion damages between patent-practicing and non-patent-practicing aspects of the smallest salable patent-practicing unit. As such, Finjan was, at its core, a straightforward apportionment case—but it was unduly complicated by the patent holder’s misguided invocation of concepts from the Entire Market Value Rule.
Exmark involved very different technology, and a very different application of the aforementioned damages concepts. Exmark’s patent claimed a lawnmower with a particular baffle that improved upon flow of air and grass clippings during operation.vi The baffle was the innovation over prior lawnmowers. When calculating damages, Exmark applied a royalty rate to the revenue generated by the sale of the entire lawnmower: not just the baffle. There was no dispute that apportionment was required, so that Exmark was compensated only for its patented improvement (i.e., the baffle). To accomplish the apportionment, Exmark selected a relatively low royalty rate, and applied it to the revenue generated by the entire lawnmower. The defendant objected, claiming that this was a violation of the Entire Market Value Rule, because there had been no evidence establishing that the baffle drove the market value of the lawnmower. Thus, the defendant argued, the baffle was the smallest salable patent-practicing unit, so the royalty base should have been the revenue generated by the baffle, not the lawnmower.
The Federal Circuit rejected the defendant’s argument because, as noted above, the patent claimed an entire lawnmower— albeit one with the new baffle technology. This was not an Entire Market Value Rule case because there was no “unpatented” feature, as might have been the case if the patent simply covered the baffle. To be sure, further apportionment was required to ensure the damages ultimately reflected the value of the patented improvement over prior art (i.e., the baffle). But this could occur by lowering the royalty rate through an appropriate application of the Georgia-Pacific Factors. Given that the Entire Market Value Rule was not in issue, there was no requirement that the royalty base be reduced to reflect the smallest salable patent-practicing unit, provided the royalty rate was appropriately low.
Some commentators have suggested that Finjan and Exmark are at odds with each other, with the former requiring apportionment of the base within the smallest salable patent-practicing unit and the latter abandoning the requirement for apportioning within the base. In fact, the two cases are consistent and reconcilable. Both cases require apportionment between patented and unpatented features, but the Finjan patent claimed only a subset of the product whereas the Exmark patent claimed the entire product. As a result, the method of apportionment differed between the two cases. Finjan and Exmark illustrate, however, the fine distinctions that apply in patent damages cases, and the need for counsel and litigants to have a deep understanding of the doctrines and underlying principles applied by the Federal Circuit.
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