08/23/17

Patentee's Monetary Recovery From An Infringer - A Revisit

Patentee's Monetary Recovery From An Infringer - A Revisit

Richard L. Stroup, Cecilia Sanabria, Kelly C. Lu, & Daniel G. Chung

In 1977, the original article was published in this Journal, authored by a younger version of one of the authors, at the start of his legal career. Since then, much has changed. The Federal Circuit was created and given exclusive jurisdiction over patent appeals. The Supreme Court, the Federal Circuit, the district courts, and the U.S. Claims Court have published additional precedent, refining the law and its application. Congress has made a few changes to the law, although the majority of controlling statutes and types of available awards remain much the same. Yet, since 1977 the interpretation and application of the law has shifted in many ways.

In preparing this revisit, we have started with the original article, while enlarging its scope and reorganizing its approach. The revisit explains the changes in the law and its application and also addresses recoveries and issues that were not presented in the original article. We have focused on controlling statutes and rules and precedent from the Supreme Court and the Federal Circuit, with the goal of providing a broad overview of the principles and factors that control. We have identified areas where the law of the regional circuits applies. We have cited lower court decisions to identify issues or views that help fill in this overview.

Because the law is complex and each infringement action presents its own specific facts, we have refrained from proposing that certain fact patterns necessarily lead to a given conclusion. We also have sought to objectively report on the status of the law without presenting our personal views of where the law is or should be going.

We have organized this revisit to include sections outlined below. While a reader can go directly to a section to gain understanding and insight regarding the law applicable to the identified subject matter, we have sought to organize this revisit to flow logically and build progressively upon earlier sections. At least in several instances, the law and procedures applicable to a given type of monetary recovery cannot be fully appreciated and applied without considering earlier, or all, preceding sections. In the last two sections regarding procedures and conclusions, we have not repeated footnotes to concepts and principles previously discussed and supported by earlier citation.

98 J. Pat. & Trademark Off. Soc’y 727(2016)

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