g

A Pocket Guide for Federal District Court 

William C. Rooklidge, Esq. 

Jones Day 

Martha K. Gooding, Esq. 

Philip S. Johnson, Esq. 

Johnson & Johnson 

Mallun Yen, Esq. 

Cisco Systems, Inc. 

In collaboration with other patent attorneys, experts

judges composing the Patent Damages Handbook Com

Federal Judicial Center 

2011 

This Federal Judicial Center publication was undertaken in further

ter’s statutory mission to develop educational materials for the 

While the Center regards the content as responsible and valuabl

flect policy or recommendations of the Board of the Federal Judicia


A. Statutory Provisions 4 

B. Forms of Compensatory Patent Damages 5 

1. Lost Profits 5 

2. Established Royalty 6 

3. Reasonable Royalty 6 

C. Burdens, Methods, and Standards of Proof 7 

II. Pleadings and Mandatory Initial Disclosures 9 

III. Discovery 12 

A. Phased Discovery 12 

B. Protective Orders 13 

C. Limits on Depositions 17 

D. Document Retention and Production 19 

E. Mandatory Final Disclosures and Supplementation 21 

IV. Summary Judgment Motions 22 

A. Timing of Summary Judgment on Damages 22 

B. Potential Damages Issues Amenable to Summary Dispo

V. Pretrial Case Management 27 

A. Pretrial Conference and Order 27 

B. Daubert Motions 28 

C. In Limine Motions 31 

VI. Trial 34 

A. Separate Trials 34 

B. Voir Dire 38 

C. Procedures to Aid the Jury’s Understanding 39 

D. Objections 39 

E. JMOL at the Close of Evidence 40 

F. Verdict Forms 40 

VII. Post-Trial 43 

A. Renewed JMOL Motions, Motions for New Trial & Rem

B. Ongoing Royalties 44 

C. Findings of Fact and Conclusions of Law 45 
1 

py gpg

goal was to create a guide drafted by a committee

scope, with members from the bench, bar, and acad

ing in-house counsel from a variety of industries and 

ages experts. The underlying idea was to benefit fro

tive experience of judges, attorneys, academics, and e

how best to achieve the “just, speedy and inexpensiv

tion”1 of patent damages. Recognizing that patent da

an area that continues to evolve, this guide is not a

restate substantive damages law or predict its futu

but is instead focused on case-management practices 

helpful in the adjudication of patent damages. 

 The following practices have not been reviewed 

by the U.S. Court of Appeals for the Federal Circuit or 

that court, and the chief judge did not participate in 

These practices are not intended to be “official” in an

ther does any particular member of this committee

pany, law firm, law school, or client that employs tha

the court on which that member serves, or orga

which that member is affiliated, endorse the applic

particular practice in any particular case. Nor is t

tended to suggest that current law needs or does not 

or legislative revision. Rather, this guide is intended t

resource for judges and lawyers under current law. 

 In compiling this guide, we have looked to and dr

work of others, including the Federal Judicial Center’

Management Judicial Guide,2 the National Jury Ins

ject,3 and the local patent rules, standing orders, an

ders of various district courts. Recognizing that “the r

   

1. Fed. R. Civ. P. 1. Unless otherwise indicated, all references 

the “Rules” are to the Federal Rules of Civil Procedure. 

2. Peter S. Menell, Lynn H. Pasahow, James Pooley & Matthew 

ent Case Management Judicial Guide, http://www.fjc.gov/libra

(2009) (hereafter “Patent Management Guide”). 

3. The National Jury Instruction Project, Model Patent Ju

http://www.nationaljuryinstructions.org (2009) (“Model Patent Inst
2 

Patent Damages Handbook Committee 

Dr. Alan Cox 

NERA Economic Consulting 

E. Anthony Figg, Esq. 

Rothwell, Figg, Ernst & Manbeck 

Hon. Jeremy D. Fogel 

United States District Court for the Northern District of Cali

Martha K. Gooding, Esq. 

Gary L. Griswold, Esq. 

3M Innovative Properties Company 

Hon. James F. Holderman 

United States District Court for the Northern District of Illin

Philip S. Johnson, Esq. 

Johnson & Johnson 

Douglas B. Luftman, Esq. 

Palm, Inc. 

Richard J. Lutton, Jr., Esq. 

Apple Inc. 

William C. Rooklidge, Esq. 

Jones Day 

Donald J. Rosenberg, Esq. 

Qualcomm Inc. 

Hans Sauer, Esq. 

Biotechnology Industry Organization 

John A. Squires, Esq. 

Chadbourne & Parke LLP 

Professor John R. Thomas 

Georgetown University Law School 

Marian Underweiser, Esq. 

IBM Corporation 

   

4. Patent Management Guide, supra note 2, at 1-1. 
3 
4 

py 

cedural practices described later. 

A. Statutory Provisions 

Section 284 of the patent statute addresses damage

pensatory and enhanced. The portion directed to c

damages states:5

Upon finding for the claimant the court shall award th

damages adequate to compensate for the infringemen

event less than a reasonable royalty for the use made 

vention by the infringer, together with interest and cos

by the court. When the damages are not found by a 

court shall assess them. . . . 

 The court may receive expert testimony as an aid 

termination of damages or of what royalty would be r

under the circumstances.6

 Awarding compensatory patent infringement dam

litigation attempts to assess “the difference betwe

entee’s] pecuniary condition after the infringement, 

condition would have been if the infringement had no

The question to be asked in determining such damage

competitors, is “had the Infringer not infringed, wha

Patent Holder . . . have made?”8

   

5. The patent statute also affords the patent owner the oppo

damages enhanced up to treble damages, attorney fees, costs, a

interest, 35 U.S.C. §§ 284–285, and, to the owner of a design paten

total profits. 35 U.S.C. § 289. In addition, the patent statute affor

compensatory damages remedy for design patents. See 35 U.S.C. 

ics are beyond the scope of this guide. 

6. 35 U.S.C. § 284. 

7. Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S

(quoting Yale Lock Mfg. Co. v. Sargent, 117 U.S. 536, 552 (1886)). 

8. Aro, 377 U.S. at 507. 
5 

, y pjg

U.S.C. § 284 on the compensatory portion of the dam

pre-judgment interest on any award of attorney fee

judgment interest under Fed. R. Civ. P. 37 on the entir

1. Lost Profits 

Lost profits normally are proved by determining 

would have been made by the patentee “but for” 

ment.15 That is, to obtain lost profits damages, the 

“must show a reasonable probability that, ‘but for’ 

   

9. State Indus., Inc. v. Mor-Flo Indus., Inc., 883 F.2d 1573, 157

(award split between lost profits and reasonable royalty). 

10. Although sometimes characterized as a reasonable royalt

Co. v. McFarling, 488 F.3d 973, 978 (Fed. Cir. 2007), the establ

strictly speaking, a form of actual damages, and is “reasonable” in 

typically provides the “best measure” of a royalty for the use ma

tion. Id. The relatively rigorous requirements for finding an est

based on previous license agreements, see, e.g., Rude v. Westcott, 

(1889), do not apply to the use of such license agreements in the re

analysis. See, e.g., Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 13

Cir. 2009) (applying comparability standard). 

11. A fourth form of compensatory damages, the infringer’s pr

fringement, was eliminated by statute in 1946 for all but design p

377 U.S. at 505. 

12. General Motors Corp. v. Devex Corp., 461 U.S. 648 (1983) (

terest award is the norm); Group One Ltd. v. Hallmark Cards, In

(Fed. Cir. 2003) (pre-judgment interest may be denied); Underwate

Morrison-Knudsen Co., 717 F.2d 1380 (Fed. Cir. 1983) (no pre-judg

enhanced damages portion). 

13. Mathis v. Spears, 857 F.2d 749 (Fed. Cir. 1988) (pre-judgme

be awarded on attorney fees). 

14. Tronzo v. Biomet, Inc., 318 F.3d 1378 (Fed. Cir. 2003) (pos

est). Where willful infringement is found, the court may enhanc

damages awarded up to three times under 35 U.S.C. § 284. See In 

LLC, 497 F.3d 1360 (Fed. Cir. 2007) (en banc). If the case is adjudg

tional,” attorneys fees (in addition to costs) may be awarded t

party. 35 U.S.C. § 285. 

15. Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538, 1545 (Fed. Cir. 

BIC Leisure Prods. v. Windsurfing Int’l, 1 F.3d 1214, 1218 (Fed. Cir. 1
6 

demand; and (4) the amount of profit it would have m

2. Established Royalty 

“When the patentee has consistently licensed others 

conduct comparable to the defendant’s at a uniform 

royalty is taken as established and indicates the term

the patentee would have licensed the defendant’s use 

tion.”18 Proof of an established royalty normally req

ing that it was the patentee’s regular practice to gra

third parties to authorize conduct of the kind engag

infringer at an established royalty rate.19 In this co

preme Court has rejected consideration of licenses en

a result of litigation.20

3. Reasonable Royalty 

In almost every patent case, the patent owner seek

royalty damages, either for infringement for which it 

lost profits or established royalty damages, or as a

damages theory.21 One approach to calculating reaso

   

16. Rite-Hite, 56 F.3d at 1545. 

17. Id. 

18. Monsanto, 488 F.3d at 978 (citing Birdsall v. Coolidge, 93 U

(established royalty furnishes best measure of damages); Nickson 

Mfg. Co., 847 F.2d 795, 798 (Fed. Cir. 1988) (absent proof of unusua

such as widespread infringement that artificially depressed esta

established royalty is best measure of damages); Hanson v. Alpine 

Inc., 718 F.2d 1075, 1078 (Fed. Cir. 1983) (same). 

19. Rude, 130 U.S. at 165. 

20. Id. While there is no corresponding bar to considering s

ments in connection with the reasonable royalty analysis, the Fe

cautioned that great care must be exercised in considering such ag

may well turn out not to be comparable. See generally ResQNet.co

594 F.3d 860 (Fed. Cir. 2010). 

21. A damages award may consist of lost profits for a portio

infringements and reasonable royalty for the remainder of the in
7 

valid, enforceable, and infringed.22

 The hypothetical negotiation analysis may con

range of evidence, and the factors to which that evid

late include what are referred to as the Georgia-Pac

That evidence is not necessarily limited to facts pred

of the hypothetical negotiation; in certain circumsta

developments occurring after the date of the hypothe

tion can inform the damages calculation.”24 There is 

by which these factors can be rated precisely in the 

relative importance or by which their economic sig

be automatically transduced into their pecuniary equ

C. Burdens, Methods, and Standards of Proof 

The amount of patent infringement damages is a ques

The patentee has the burden of proving damages26 an

by a preponderance of the evidence.27 Whatever t

sued, patent infringement is a tort, and as with all t

     

TWM Mfg. Co. v. Dura Corp., 789 F.2d 895, 898 (Fed. Cir. 1986). F

approach is commonly applied where the patent owner seeks to p

based on market share. See State Indus., Inc. v. Mor-Flo Indus., In

1577 (Fed. Cir. 1989). 

22. Rite-Hite, 56 F.3d at 1554. That is not to say that the “anal

not considered in the context of a hypothetical negotiation; it may 

23. In Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Sup

(S.D.N.Y. 1970), the court compiled fourteen evidentiary factors 

factor that, taken together, restate the hypothetical negotiation m

“a conspectus of the leading cases.” 

24. Lucent Techs., 580 F.3d at 1333 (citing Sinclair Refining Co. 

leum Process Co., 289 U.S. 689, 698 (1933)). 

25. Smithkline Diagnostics, Inc. v. Helena Labs. Corp., 926 F.2d 

Cir. 1991). 

26. Id.; see also Blake v. Robertson, 94 U.S. 728, 733 (1876) (“D

proved; they are not to be presumed.”); Lucent Techs., 580 F.3d at 

den of proving damages falls on the patentee.”). 

27. Vulcan Eng’g Co. v. Fata Aluminium, Inc., 278 F.3d 1366

2002). 
8 

den to justify application of the “entire market value r

 The patentee’s burden in establishing patent 

been described as “a burden of reasonable probabil

recognize that “any reasonable royalty analysis ‘n

volves an element of approximation and uncertaint

less of the form of damages, however, the court sho

any less rigorous standard of admissibility to the e

that required by the rules of evidence32 or any less r

dard to the proof of facts. Speculation is not evide

should allow damage awards based only on “sound e

factual predicates.”34 

   

28. Coupe v. Royer, 155 U.S. 565, 582 (1895) (patent infringem

the pecuniary losses that the patent owner “has suffered from th

King Instrument Corp. v. Perego, 65 F.3d 941, 948 n.3 (Fed. Cir. 

harm limited by foreseeability); Rite-Hite, 56 F.3d at 1546 (same). 

29. Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1336 

(“For our entire market value rule to apply, the patentee must pro

ent-related feature is the basis for customer demand.’”). 

30. Lam, Inc. v. Johns-Manville Corp., 718 F.2d 1056, 1065 (Fed. 

31. Lucent Techs., 580 F.3d at 1325 (citing Unisplay, S.A. v. Am. 

F.3d 512, 517 (Fed. Cir. 1995)). 

32. See Crystal Semiconductor Corp. v. Tritech Microelectron

F.3d 1336, 1354–58 (Fed. Cir. 2001) (affirming grant of JMOL on los

expert testimony was “incompetent” and “unreliable,” and affirmin

on price erosion because expert testimony was “unreliable” and “

priate benchmark”). 

33. Lucent Techs., 580 F.3d at 1327. 

34. Integra Lifesciences I, Ltd. v. Merck KGaA, 331 F.3d 860, 

2003), rev’d on other grounds, 545 U.S. 193 (2005) (reversing denial 

sonable royalty where record not clear on date of first infringeme

Exploration & Prod. Co., 298 F.3d 1302, 1311 (Fed. Cir. 2002). 
9 

lief,

 patent infringement complaints rarely assert 

claim in any more detail than that shown by the for

for Patent Infringement: a request “for damages.”36

 Any lack of specificity in the complaint may well 

by the requirement of Rule 26 that the patent owne

provide damages information and documents as par

disclosures. The rule states: 

 (A) In General. Except as exempted by Rule 26(a)(

otherwise stipulated or ordered by the court, a party m

out awaiting a discovery request, provide to the other p

. . . 

 (iii) a computation of each category of damages c

the disclosing party—who must also make available 

tion and copying as under Rule 34 the documents or 

dentiary material, unless privileged or protected from d

on which each computation is based, including materia

on the nature and extent of injuries suffered . . . .”37

 The amount of detail and precision that is possib

in initial disclosures will vary widely from case to ca

can be practical limits to what can be disclosed ea

Patentees often find that they do not know the full n

tent of a defendant’s infringing conduct and do not h

information at the outset of the litigation to know or 

cisely the damages caused by the alleged infringemen

sequence, patentees often limit their initial damages d

general categories of patent damages, such as “los

reasonable royalty damages.” Moreover, because th

fringer’s profit information, for example, is not typic

   

35. Fed. R. Civ. P. 8(a)(3). 

36. Fed. R. Civ. P. Appendix of Forms, Form 18. 

37. Fed. R. Civ. P. 26(a)(1). 

38. See Advisory Comm. note to 1993 Amendment to Fed. R. 

(“a party would not be expected to provide a calculation of dama

many patent infringement actions, depends on information in th

another party or person”). 
10 

that the fair determination of damages requires th

confidential information of both parties, and that ea

require a fair amount of fact discovery before they ca

the other’s information sufficiently to formulate ev

damages contentions, both sides should be require

initial damages disclosures that are as complete as 

possible, as well as “high level” documents in their po

are likely relevant to a fair assessment of the damages 

 For a patentee, initial disclosures normally w

documents concerning industry and business 

profitability, market shares, and comparable licens

and royalty rates related to the patent at issue. It w

clude basic marketing, pricing, manufacturing, and s

tion relating to any products or processes that emb

ented invention or are licensed under the patent, or 

with, or are sold with or sold as a result of sales o

processes that embody the patented invention, or 

under the patent. For the accused infringer, the do

tially produced should similarly include document

license agreements and royalty rates that relate to 

product or process; basic marketing, pricing, and s

tion relating to the accused products; and the avail

non-infringing substitutes; as well as information th

may be relied on to define the royalty rate or base. 

 Meaningful compliance with the initial damages 

quirements can be essential to the efficient manag

litigation, and courts overseeing damages disclosur

mindful of the role these disclosures may play in the 

tion of the litigation. Failure to provide good-faith da

sures and at least “high level” damages discovery at 

the litigation may hinder settlement discussions, dela

and result in unnecessary expenditure of time, money
11 

invalidity, and validity contentions from the parties 

fringement litigation. These requirements avoid a “sh

approach to infringement or invalidity that is unfair t

and unnecessarily prolongs the case and increases co

by amendment of local patent rules,40 general or stand

orders in individual cases, courts should consider a

the patent owner to serve initial damages contention

case and the accused infringer to respond shortly th

ally at the same time they serve their respective initia

on infringement and non-infringement. At the very le

closures should identify the form of damages being so

lost profits, reasonable royalty, or established royalt

the nature of the asserted damages base, in order 

discovery. Courts may also wish to discuss with cou

sibility of consulting with their damages experts or 

priate analytical resources in connection with the 

sures; thoughtfully crafted early damages disclosures 

ful in framing discovery and in maximizing the poten

settlement. 

   

39. Accused infringers often are unwilling to disclose sales, p

business information that is fundamental to the calculation of 

ground that the information is highly confidential and cannot prop

to the patent owner. As explained in Part III(B) below, the best 

court to ensure that confidentiality of initial disclosures are adequ

either by local rule, standing order, or an early protective order. 

40. The local patent rules in different jurisdictions vary in t

example, while the Western District of Pennsylvania rules 

infringement, invalidity, and claim construction, see http://www.pa

/Documents/Forms/LocalPatentRules.pdf (2009), the Eastern Distri

also address willfulness. See United States District Court for the E

Texas, Patent Rules, http://www.txed.uscourts.gov/page1.shtml?l

Appendix M (2010). 
12 

fact that “is only magnified by the emerging emph

tronic discovery.”41 Full-fledged damages discovery 

another concern: It not only can be expensive and bu

ultimately may prove to be unnecessary, either beca

settles before trial or because the patent is determin

lid, unenforceable, and/or not infringed. 

 To minimize burden and improve efficiency, c

consider, as part of the initial case assessment an

whether the interests of justice would be served by 

ages discovery. For example, after the mandatory Rul

disclosures and the above-described initial “top lev

disclosures from both parties, the court may choose 

or all damages discovery until after the court’s ru

construction.42 When the court’s ruling on claim co

not scheduled to occur early in the proceedings, pha

be efficient, as damages discovery will take some tim

best be conducted in concert with discovery on 

Moreover, limiting initial damages discovery to “top 

mation may or may not give the parties enough basi

about damages to permit meaningful settlement n

And while claim construction sometimes promotes 

ment or stipulation to judgment followed by appeal, o

up for summary adjudication under Rule 56 (thereby 

need for damages discovery), a court-ordered hiatus 

discovery may lead to significant inefficiencies by re

tended period of fact discovery and, perhaps, a de

   

41. Patent Management Guide, supra note 2, at 4-1. 

42. Such an order usually would address the timing of cons

only compensatory damages, but also willfulness and enhanced d

ter two topics are beyond the scope of this guide. 

43. Early damages discovery may, for example, reveal that th

ages may be less than the expected cost of proceeding with or def

tion. 

44. The Northern District of Illinois’ rules establish a fact disc

begins 28 days after the exchange of patent claim terms a
13 

discovery. 

 One benefit of phased discovery is that it allows 

ity and damages to the same jury, either at the sam

phases. Some courts, however, opt to bifurcate pa

ment cases into liability and damages phases for bo

and trial. In the final analysis, the decision whether 

phased discovery or order separate discovery and 

ages is committed to the trial court’s discretion and 

viewed only for abuse of discretion.45 

B. Protective Orders 

Parties in patent infringement actions routinely s

granted—a protective order to govern documents an

produced in discovery. There is good reason for thi

gation frequently pits direct competitors against ea

process where some of their most important trade se

tion is relevant to the resolution of the case.”46 The n

an order is particularly acute in the context of damag

which often includes extremely sensitive financia

concerning a party’s costs, revenues, profits, and th

sure of such information publicly could severely ha

business or competitive position. Courts must ensu

ages discovery is not used as a means to harm a com

ity to compete in the marketplace.47

     

construction and ends upon the entry of a claim construction ruli

District Court for the Northern District of Illinois, Local Patent 

http://www.ilnd.uscourts.gov/home/_assets/_documents/Rules/loc

preamble.pdf. 

45. In re Innotron Diagnostics, 800 F.2d 1077, 1079 (Fed. Cir. 1

orders are reviewed under Federal Circuit precedent and are not c

law of the regional circuit from which the appeal originated. Gar

Herst Lighting Co., 820 F.2d 1209, 1212 (Fed. Cir. 1987). 

46. Patent Management Guide, supra note 2, § 4.2.5 at 4-6. 

47. Apart from actions involving competitors, patent infri

brought by entities whose sole business is enforcing and licens
14 

rules containing a standard form of protective ord

matically applies to any filed patent case or by sua s

a standard protective order at the outset of the actio

protective orders—sometimes known as “default ord

that the parties can timely make their initial disclosu

confidentiality protection and also can eliminate (

costly and distracting disputes between the parties 

tents of a protective order. Parties still may seek t

court’s standard protective order in some respects, 

court-imposed default order at the outset is likely to 

focus the areas of dispute. Experience has shown tha

the protection provided by a default order, the less l

ties will be to engage in motion practice over the c

order. 

 It is often helpful for the court to explore, at the in

ing conference, the types of confidential informatio

believe are likely to be the subject of discovery, so t

tive order—whether a default order or an order cr

particular case—may be tailored to address specific 

gories of documents that pose particular confidentiali

 One of the most common areas of dispute in prot

is who will be allowed access to the confidential inf

whether a two-tier protective order is necessary or 

One approach is to have a single-tier protective or

vides only a single level of “confidential” protectio

designated materials to be disclosed to both in-hous

counsel. Proponents of the single-tier approach ass

orders are simpler and less costly to administer; they 

that allowing in-house counsel access to confidentia

     

significant risks for an accused infringer’s confidential business in

entities may be engaging in parallel patent prosecution or evaluatio

information for purposes of other patents or portfolios. While this 

be addressed by limiting the use of confidential information to the 

such a restriction can be difficult to enforce. 

48. Patent Management Guide, supra note 2, § 4.2.5 at 4-6. 
15 

 In many cases, one or both of the parties believe 

tion to be disclosed is so highly confidential and 

sensitive as to merit an extra level, or “seco

confidentiality protection.49 Such additional protec

necessary where employees or in-house counsel for 

party are involved in competitive decision making, 

strategy, licensing negotiations, sales and marketing, 

and development in [the] relevant product market.”

ployees or in-house counsel should not be permitt

confidential and competitively sensitive information. 

tective orders provide not only a “confidential” des

also include a “highly confidential,” “outside attorne

similar designation for information that may not be 

party employees (including in-house counsel involve

tive decision making). 

 Proponents of the two-tier approach focus on th

sensitivity of the information produced in patent 

cases and assert that forcing a party to disclose highl

information to the other party could unfairly jeopar

ducing party’s business and effectively coerce the pro

into settling a non-meritorious case simply to avoi

harm to the company. Proponents of two-tier orders 

   

49. Particularly in the context of computer software source 

occasion have required even greater protection, such as security 

the storage and review environments, including a locked room 

computer. 

50. Complex Lit. Comm. of Am. College of Trial Lawyers, Ana

Case 61 (Federal Judicial Center 2009). See also Brown Bag Softw

Corp., 960 F.2d 1465, 1470 (9th Cir. 1992) (competitive decision ma

vising on decision about pricing or design ‘made in light of simila

ing information about a competitor’”) (citation omitted). On the fa

Brown Bag court concluded that permitting in-house counsel to ha

producing party’s trade secret information “would place in-hous

‘untenable position’ of having to refuse his employer legal advice 

tract, employment, and competitive marketing decisions lest he im

rectly reveal [the producing party’s] trade secrets.” Id. at 1471. 
16 

censing discussions. In addition, there is a risk that a 

not a direct competitor at the time of the disclosure m

direct competitor in the future. Those favoring a two-

point out that any asserted need for in-house couns

cess to highly confidential information to advise thei

erly “can be addressed in a more specific context w

seeks permission to share particular information th

designated attorneys-only.”51

 In cases where the parties cannot agree on the 

levels of protection, the court should consider such 

nature of documents to be produced and the possib

petitive or other harm; the extent of involvement 

counsel for the receiving party in competitive decisio

the one hand, versus involvement in litigation and s

tivities, on the other hand; the likelihood of over-desig

higher level of protection; and the possibility of avo

gating over-designation. Examples of such mitiga

specifically identifying the types of documents en

higher level of protection and providing a procedure 

to rule on contested designations. When the disput

whether, or to what extent, in-house counsel should 

to discovery materials, courts look beyond an attorn

in-house counsel to evaluate the facts concerning 

counsel’s role and the risks of improper use or 

confidential information.52 In addressing protective or

   

51. Patent Management Guide, supra note 2, § 4.2.5 at 4-6. See 

ware, 960 F.2d at 1470–72 (affirming protective order that required 

to retain an independent consultant to view producing party’s trad

than providing confidential information to receiving party’s in-hous

52. See U.S. Steel Corp. v. United States, 730 F.2d 1465, 1469 

(“Status as in-house counsel cannot alone create the probability of 

confidentiality and cannot therefore serve as the sole basis for de

Matsushita Elec. Indus. Co. v. United States, 929 F.2d 1577, 1579–8

(attorney access to confidential information denied because mova

position would be compromised by unacceptable risk of inadverte

sure of confidential information due to attorney’s involvement in 
17 

tection, while others have adopted a standard pro

featuring two-tier protection.53 Still others provide 

level of “highly confidential” protection.54 Yet anothe

to adopt patent local rules that provide interim prot

confidential information by confining disclosure, a

court order, to outside counsel.55 Another variation is 

to impose its form protective order only if the partie

to reach agreement on the terms of a protective 

specified deadline.56

 In all events, protective orders should prov

“confidential” or “highly confidential” information 

only for purposes of the instant litigation. 

C. Limits on Depositions 

Rule 30(a)(2) currently limits each party to a total o

tions, but parties in patent cases often seek leave to 

number or to eliminate the restriction altogether

doubtedly are instances where a larger number of d

     

and participation’ in ‘competitive decision making’”); Brown Bag S

at 1470 (court ruling on protective order dispute must “examine 

risks and safeguards surrounding inadvertent disclosure by any c

in-house or retained”). 

53. See United States District Court for the Western District of 

cal Rules of Court, http://www.pawd.uscourts.gov/Documents/Form

92 (2008); United States District Court for the Southern District of 

Rules, http://www.casd.uscourts.gov/uploads/Rules/Local%20Rule

at Appendix A (2009). 

54. See Patent Management Guide, supra note 2, at Appendix 2

tective Order). 

55. See United States District Court for the Northern District o

Local Rules, http://www.gand.uscourts.gov/pdf/NDGARulesPate

(2006); United States District Court for the District of Minneso

http://www.mnd.uscourts.gov/local_rules/pdfdoc/local_rules.pdf, a

56. Anatomy of a Patent Case, supra note 50, at 61. 

57. See Patent Management Guide, supra note 2, § 4.2.1 at 4-2 (

patent case that results in fewer than ten depositions”). 
18 

ditional depositions genuinely are necessary and w

dundant. Vague references to the complexity of th

large amounts at stake should not be sufficient. Ev

court is persuaded that the ten-deposition limit is to

the court should set a specific new limitation on th

depositions permitted. Blanket orders granting a two-

fold increase in the number of permitted depositions 

quately tailored to the needs of the specific case and 

cal to the just, speedy, and inexpensive determinati

pute. 

 One approach that is gaining favor is that of limi

ber of deposition hours to be allowed to each party. 

the preferred approach in highly complex cases, as m

witnesses may need to be deposed. Limiting the num

tion hours forces counsel to plan carefully for each d

to use their time wisely. The result is often more effi

ery than would be achieved by simply limiting the n

ponents. 

 Rule 30(b)(6) depositions of corporate represen

are useful in patent infringement cases, particularly in 

arena involved in infringement damages. Courts s

against “runaway 30(b)(6) depositions,” however, an

they are not used to evade the limits on the numb

tions.58 One effective approach is for the initial sched

provide that “each day of [Rule] 30(b)(6) deposition 

separate deposition for purposes of the per-sid

limit.”59

 The scope of topics for 30(b)(6) depositions 

source of dispute between parties. Rule 30(b)(6) only 

covery of “information known or reasonably availabl

nization.” Particularly with respect to patent damag

litigants not infrequently frame topics that are more 

   

58. See id. § 4.2.4 at 4-5. 

59. Id.
19 

examination be described with “reasonable particular

 Whatever limitation the court imposes (or the 

upon), it should apply only to percipient witnesses, 

experts (such as employees that a party intends to 

pert in addition to a percipient witness), and Rule 

nesses. The depositions of retained experts should n

to the limitation; the number of expert depositions 

defined by the number of experts on which a party 

fectively is self-limiting. 

D. Document Retention and Production 

“Document production can be extremely painful a

patent litigants.”60 And unfortunately, especially giv

sweep of electronic document production and retent

used as a weapon in patent infringement litigation. P

from source code production, there is no area more s

kind of abuse than patent damages documents. 

 Document production can be particularly painf

where, as a practical matter, there is a large disparity 

tity of documents in the possession of the parties—e.

of the litigants is a non-practicing entity or a corpor

ent owner that has little in the way of documents to 

In such cases, courts should be particularly mindful 

collateral objective of the requesting party is to incr

den and expense of the lawsuit to thereby force settl

than to discover information truly needed to determ

Accordingly, courts should be particularly cautious a

requests for production of “all documents” relating t

issue (such as sales, revenues, or profits), especially 

with electronically stored information, unless it is cl

production is reasonably calculated to lead to the 

better or more probative evidence on that issue, an

   

60. Id. § 4.2.2 at 4-4. 
20 

cost-efficient document production. The need for ju

and oversight is particularly acute when addressing 

rected to electronically stored information.61 For ex

outset of the case, courts should encourage coope

discovery process, review carefully the parties’ di

(including electronic discovery), and consider whe

the number of document requests permitted per sid

more focused discovery62 or, alternatively, might re

but broader, requests that would in turn lead to unn

covery and disputes. Given the initial disclosure requ

local rules in many districts already requiring partie

what is relevant, the better approach may be to allow 

geted requests as may reasonably be necessary. I

careful assessment by the parties of damages issues 

relevant information often may be provided in sprea

as part of the early disclosure process can be very he

tating the court’s ability to evaluate the reasonablen

portionality of the parties’ document requests, parti

calling for extensive production of electronically sto

tion. 

 The parties’ discovery plan also should address t

document production, particularly as it relates to 

stored documents. Courts should consider the poten

time savings that may result by allowing (or requiring

of financial or other damages-related data in a format 

ready manipulation for purposes of damages analyses

 In any event, courts should consider carefully th

covery costs and burdens in weighing patent damag

disputes and shift costs where appropriate. Shiftin

discovery to the requester is particularly appropriate 

is a sharp disparity in the volumes of documents s

   

61. See generally Seventh Circuit Electronic Discovery Com

Circuit Electronic Discovery Pilot Program, http://www.ilcd.uscour

%20-%20Phase%20One.pdf (Oct. 1, 2009). 

62. See Patent Management Guide, supra note 2, § 4.2.2 at 4-4. 
21 

Courts should require final damages disclosures afte

have had the opportunity to complete damages disc

disclosures serve a purpose different than the indi

reports required by Rule 26(a)(2)(B), which identify 

experts’ theories and evidence and constrain the

These disclosures may provide a further basis for 

summary judgment or in limine motions. Accord

should not allow the parties to amend final damage

freely, but rather should require a particularized sho

cause for belated amendment. The parties should 

however, to supplement those disclosures according 

standard as Fed. R. Civ. P. 26(e): “if the party learns 

material respect the disclosure or response is inco

correct, and if the additional or corrective informa

otherwise been made known to the other parties du

covery process or in writing.” 
22 

fringement actions and the enormous judicial resourc

consume, narrowing a patent case through proper su

dication can be particularly important. In addition 

lated to infringement and invalidity, there are a num

ages issues that may be amenable to summary judgm

A. Timing of Summary Judgment on Damages 

Effective management—and narrowing—of a case thr

tive motions depends in part on the timing of such 

the rulings on them. In many cases, important eviden

damages will come in the form of expert testimony. 

son, it is often appropriate for the court to consi

judgment motions relating to damages at the same 

separate from—Daubert challenges to the experts’ op

 Delaying resolution of summary judgment moti

eve of trial is inefficient for both the parties and th

best to resolve summary judgment motions well in a

final pretrial conference (indeed, well in advance of 

of counsel that typically precede the final pretrial co

that the court and the parties can prepare their pre

sions and prepare for trial knowing precisely what is

tried. 

B. Potential Damages Issues Amenable to Summary 

Disposition 

There are damages-related issues that may not depe

testimony, and it is often best to resolve such issue

possible since they, too, can affect a damages expe

Where it is possible to do so, addressing such issu

   

63. Desper Prods., Inc. v. QSound Labs, Inc., 157 F.3d 1325

1998) (quoting C.R. Bard, Inc. v. Advanced Cardiovascular, Inc., 9

(Fed. Cir. 1990)). 
23 

publication date of the patent application, even thou

may issue years later.64 Conventional patent damage

crue at 12:01 a.m. on the date the patent issues and 

no later than midnight on the day the patent expire

method claims are asserted, or when no product em

patent claims has been commercialized, damages may 

the beginning of infringement or the issuance of the p

ever is later.65 Under § 287, recoverable damages for 

cles may be limited in the event the patentee or its 

not given either actual notice of the patent or constr

of the patent through the marking of products mad

offered for sale, or sold under the asserted patent. 

notice requires the patentee or its licensees to ma

products embodying the patented technology wit

number, and the burden of establishing notice rests 

entee. 

 It is not unusual for disputes to arise relating to 

issues can be narrow legal issues amenable to resolu

mary judgment. For example, the parties may disp

marking was required at all, given the nature of the 

non-asserted claims in the patent in suit. Disputes a

concerning the date on which notice was given. W

fringement is ongoing, notice always will have been g

than upon the filing of the action. Similarly, because 

requirement is not absolute, disputes often arise co

nature and extent of the marking used, and whether 

has been “substantially consistent and continuous.” 

ticularly so where the patent has been licensed and 

marking was performed by others acting under th

authority. 

   

64. 35 U.S.C. § 154(d). 

65. See, e.g., Hanson v. Alpine Valley Ski Area, Inc., 718 F.2d 10

Cir. 1983). 
24 

tion 287 must focus on the action of the patentee, n

edge or understanding of the infringer.”66 Because 

bears the burden of showing either compliance with 

statute or actual notice, and it has at its disposal th

regarding its own actions, the issue may be ripe for d

early stage, unless there is a genuine issue of materia

ing the patentee’s marking practices or the infringe

actual notice. For example, if the patentee is unabl

evidence showing that its marking, and the marking 

sees, has been “substantially consistent and contin

mary judgment can appropriately limit the damages 

early decision defining the damages period allows th

perts to properly focus their opinions and also can s

covery, e.g., by limiting discovery of product sales 

relevant time period.69

 Summary judgment also may be appropriate to 

theory for calculating damages that is unsupported 

dence. For example, the availability of lost profits is 

law.70 Under the generally accepted test for lost profi

must show (1) demand for the patented product, (2

acceptable non-infringing alternatives, (3) manufactu

keting capability to exploit the demand, and (4) th

   

66. Amsted Indus. Inc. v. Buckeye Steel Castings Co., 24 F.3d 1

1994). 

67. Id. 

68. See, e.g., Extreme Networks, Inc. v. Enterasys Networks, I

2d 909, 918 (W.D. Wis. 2008). 

69. Information that precedes the date that damages start may 

instance, the hypothetical negotiation may precede the date of ac

tive notice. Access to “pre-infringement” revenue and profit data 

quality of the damages analysis by providing a perspectiv

infringement” world. 

70. Poly-America, L.P. v. GSE Lining Tech., Inc., 383 F.3d 130

2004). The underlying economic analysis is, however, often dispute
25 

lost sales would have been made by the patentee

affiliate, the patentee may be unable to establish that 

profits in turn would have become the patentee’s pr

cases, summary judgment could remove the lost p

from the case.73 

 Summary judgment may be used to address ot

theories. As explained in the previous section, a pat

to recover damages under the entire market value ru

that the patented technology serves as the basis for 

mand. Without a sufficient evidentiary nexus between 

technology and customer demand, summary judgmen

the entire market value theory from the case.74 

 Where damages are calculated as a reasonable 

parties often disagree over the proper royalty base. S

often takes one of two forms: (1) the patentee makes 

of infringement against a component of, or an impro

larger infringing system but seeks a royalty base that 

entire system; or (2) the patentee seeks to include p

in connection with the infringing product (alleged

sales) in the royalty base.75 Some parties attempt to 

   

71. Panduit Corp. v. Stahlin Bros. Fibre Works, Inc., 575 F.2d 

Cir. 1978). The Federal Circuit has endorsed this test as one way (b

sive way) of showing lost profits damages. Rite-Hite Corp. v. Ke

1538, 1548 (Fed. Cir. 1995) (en banc). 

72. This presumes that the patent owner has not employe

methodology to address such factors, such as a market share anal

the presence of non-infringing alternatives, see State Indus., Inc. v

Inc., 883 F.2d 1573, 1577 (Fed. Cir. 1989), or consideration of th

quired to expand manufacturing capability to address capacity con

73. See Mars v. Coin Acceptors, 527 F.3d 1359, 1367 (Fed. Cir. 2

74. Cf. Lucent Techs. Inc. v. Gateway, Inc., 509 F. Supp. 2d 9

2007) (granting new trial on damages where the evidence failed “

the patented features themselves produced any customer deman

product”). In Cornell Univ. v. Hewlett-Packard Co., No. 01-CV-1974

LEXIS 41848 (N.D.N.Y May 27, 2008), the court addressed this iss

type challenge during trial. 

75. Patent Management Guide, supra note 2, § 7.4.3.3.2.2 at 7-28
26 

whether the patentee has a legal basis for seeking 

extend beyond the infringing component, product

Where the facts have been developed through discov

possible to address this issue on summary judgme

the royalty base is a key input to an expert’s damage

the issue should be addressed sufficiently ahead of t

necessary, the experts can conform their opinions to 

judgment ruling. 

   

76. Id.

77. See id. 
27 

The complexity of patent cases underscores the im

careful pretrial preparation by both the parties and t

of the keys to a well-prepared trial is a comprehens

trial conference and order. “The pretrial conference r

final opportunity to anticipate and resolve problem

otherwise interrupt and delay trial proceedings.”78 In 

the pretrial conference offers courts a valuable oppo

solve disputes about how damages issues will be pre

jury and to ensure a more effective presentation of 

In cases in which damages issues are complex, it ma

sense to convene a separate, “preliminary” pretria

focused solely on damages. The agenda for such 

might include which measures of damages may be a

jury or which Georgia-Pacific factors will be include

instructions. 

 The pretrial conference (or conferences) should 

dispositive motions have been ruled upon, so the c

parties know the contours of the issues that are to 

goal of the pretrial conference process is a compre

pretrial order that “will govern the issues for trial 

the ground rules for the conduct of the trial.”79 A 

should be preceded by compulsory meetings betwee

on a host of topics typically defined by the court in 

or standing order. The “meet and confer” process al

ties to identify areas of agreement that can be incorp

joint proposed pretrial order and to identify area

which then can be briefed to the court. 

 Among the most common subjects for the pretr

confer and submissions are witness lists, exhibit li

instructions. Standard jury instructions on damag

fairly barebones,80 and it is not uncommon for one o

parties to seek to modify or expand upon them. To 

   

78. Id. § 7.1 at 7-2. 

79. Id. § 7.1.3 at 7-3. 

80. See, e.g., Model Patent Instructions, supra note 3, 6.1–6.6. 
28 

tions will become clearer as the evidence comes in. 

parties may request further modifications to the jur

as trial progresses, and the court should entertain s

as appropriate. For example, one damages instructi

often arises is whether to instruct the jury on all fif

Pacific factors, where the evidence at trial does no

support all of the factors. To avoid jury confusion, c

limit jury instructions to those Georgia-Pacific fact

supported by sufficient record evidence. In accordan

51, the basis for any objections, and for the co

thereon, should be preserved on the record for later 

the court or on appeal. 

 As explained below, in limine motions—including 

dressed to damages issues—should be heard no la

final pretrial conference, and it is preferable for Daub

to be determined even earlier. To the extent that ot

issues are likely to arise at trial, such issues at lea

identified—and, ideally, briefed and determined—at 

trial conference. 

B. Daubert Motions 

“Critical to managing a patent trial is the court’s abil

expert testimony.”81 No issue in a patent trial cries 

application of the gatekeeping tools of Fed. R. Evid

Supreme Court’s Daubert decision82 more than dam

and parties are readily familiar with the requirement 

damages expert analysis (like any other expert opin

   

81. Patent Management Guide, supra note 2, at 7-17. 

82. Daubert v. Merrell Dow Pharms., Inc., 509 U.S. 579, 597 (19

eral Rules of Evidence . . . —especially Rule 702—do assign to th

task of ensuring that an expert’s testimony both rests on a reliabl

is relevant to the task at hand.”). 
29 

tion at the time before the first infringement knowing 

ent was valid and infringed.84 And that analysis is not 

the form of an accepted scientific methodology applie

litigation context or be presented in the form of a 

cepted methodology supported by peer-reviewed 

Application of the Daubert analysis to this kind of exp

may prove challenging, but is nonetheless critical.85 

 Challenges to expert testimony on patent damag

cus on the qualifications of the expert to opine on th

the reliability of the expert’s analysis of those 

qualifications analysis focuses on the education, tra

perience of the expert as it relates to the subject 

proposed testimony. That a witness is an accou

economist does not necessarily qualify her to testify 

fringement damages in general or on damages gener

ticular patent infringement case.86 The inquiry is 

case-specific, and “the court will need to resolve th

case-by-case basis, above all applying its common se

mine whether the expert has sufficient foundation 

   

83. Integra Lifesciences I, Ltd. v. Merck KGaA, 331 F.3d 86

2003), rev’d on other grounds, 545 U.S. 193 (2005); Riles v. Shell Exp

Co., 298 F.3d 1302, 1311 (Fed. Cir. 2002). 

84. Patent Management Guide, supra note 2, at 7-17 to 7-18. 

85. See Riles, 298 F.3d at 1311; Shockley v. Arcan, Inc., 248 F.3d 

Cir. 2001) (rejecting as “without any basis in economic reality” e

based on the number of sales patentee told him to assume); Utah 

v. Graphic Controls Corp., 350 F.3d 1376, 1385 (Fed. Cir. 2003) (a

ruling excluding, as irrelevant, “expert testimony and evidence 

ments . . . asserted to support a reasonable royalty model of damag

86. Cf. Monsanto Co. v. McFarling, 488 F.3d 973, 981 (Fed. Cir. 

of discretion in failing to exclude testimony of damages expert w

ther a farmer nor an agronomist, was a certified valuation anal

qualifications “go to whether the jury should believe the witness 

timony, instead of whether the opinions have a reasonable ba

Daubert requirements”). 
30 

with the determination of a reasonable royalty, wh

based on a multi-factored framework for identifying t

which the parties would have agreed had they cond

tiation when the infringement first began, knowing th

was valid and infringed, and willing to enter into a l

ment. This framework, based on the fifteen Georg

tors,89 is both wide-ranging and non-exclusive, and is 

to widely differing interpretation and, sometimes, mis

by parties and their experts. Common mistakes includ

terization of the Georgia-Pacific factors, use of an inc

articulated) hypothetical negotiation date, and inap

of facts that post-date the hypothetical negotiation.9

ability has been used to exclude expert testimony 

profits context as well.91

 Courts should perform their gatekeeping role u

Evid. 702 and Daubert to ensure that the legal standa

erly applied and improper damages testimony does 

trial.92 The Federal Circuit has made clear, however, t

keeping function does not amount to an “independen

exclude evidence where the parties have asserted 

and that “[t]he responsibility for objecting to evidenc

firmly with the parties.”93 Nor does the court’s gate

   

87. Patent Management Guide, supra note 2, at 7-22. 

88. Westinghouse Elec. & Mfg. Co. v. Wagner Elec. & Mfg. Co., 

(1912). 

89. Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Sup

(S.D.N.Y. 1970). 

90. Patent Management Guide, supra note 2, at 7-24 to 7-28. 

91. See DSU Med. Corp. v. JMS Co., 471 F.3d 1293, 1309 (Fed. C

damage analysis invariably invokes hypothetical reconstruction o

ketplace, that reconstruction must include some footing in econom

92. See, e.g., Integra Lifesciences, 331 F.3d at 871–72 (reversin

on reasonable royalty where record was not clear on date of first in

93. Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1325 

(rejecting argument that court had “abdicated” gatekeeping role 
31 

 The effectiveness of the court’s performance of it

role depends in large part on when and how it perfo

Daubert challenges frequently are raised as part o

judgment motion or in the form of an in limine motion

ing the Daubert analysis into the court’s consideratio

tive motions or in limine motions (which often are de

before trial) may not allow the care and attention w

best practice is to conduct the Daubert briefing and h

rate from, but at the same time as, the briefing an

summary judgment, or perhaps at a “preliminary” pr

ence devoted exclusively to damages issues, as sugge

C. In Limine Motions 

In limine motions are an important tool in effective 

ment, providing the court “an opportunity to establis

and substantive limitations that will streamline t

shorten the trial, and reduce jury confusion.”97 The ke

     

damages evidence to which no objection was made at trial; “Any i

on appeal is deemed waived by failing to object at trial.”). 

94. See, e.g., i4i Ltd. P’ship v. Microsoft Corp., 589 F.3d 1246

2009) (“Under Rule 702, the question is whether the expert 

sufficiently related to the disputed issue,” and “it is not the dis

under Daubert to evaluate the correctness of facts underlying a

mony”); Liquid Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 122

(“challenge [to inaccurate data] goes to the weight of the evidenc

admissibility”). On the other hand, “conclusions and methodology 

distinct from one another.” Gen. Elec. Co. v. Joiner, 522 U.S. 136, 14

Evid. 702 “specifically provides that the trial court must scrutin

principles and methods used by the expert, but also whether thos

methods have been properly applied to the facts of the case. F

comment to 2000 Amendments. In some cases, trial courts may con

is simply too great an analytical gap between the data and op

Joiner, 522 U.S. at 146. 

95. Daubert, 509 U.S. at 595. 

96. Patent Management Guide, supra note 2, at 7-18 to 7-19. 

97. Id. at 7-29. 
32 

in limine motions need more context and informatio

reasoned determination, and where that is the ca

should not hesitate to conditionally grant them—or 

abeyance—until the necessary context can be develop

 Some of the most common in limine motions rela

damages are directed to testimony and argument co

accused infringer’s net worth, total revenue, or reven

sales of anything but the actual royalty base. Such i

normally inadmissible as unfairly prejudicial and s

presented to the jury, whether in voir dire, openin

witness testimony, or closing argument.98 Of course, 

   

98. In Lucent Technologies, Inc. v. Gateway, Inc., even though 

jury verdict for lack of substantial evidence that the patented in

basis for consumer demand, the court stated that “the base used 

alty calculation can always be the value of the entire commercial 

long as the magnitude of the rate is within an acceptable range (a

the evidence).” Lucent, 580 F.3d at 1338–39. This statement refle

convention under which royalties are calculated as a rate applie

from sales of the licensed product to third parties. The court’s refe

being “within an acceptable range (as determined by the evidence

that the result of such an approach must produce a damages awar

tionate to the economic value (and damage to the patentee cause

is, one that is economically justified. As the Lucent court explained

patented invention is a small component of a much larger com

awarding a reasonable royalty based on either sale price or num

can be economically justified.” Id. Thus, that “sale price” or “numb

may be justified does not establish that total revenue is releva

scores the need for evidence showing that such an approach is, i

cally justified.” Id. See Uniloc USA, Inc. v. Microsoft Corp., No. 03

Dist. LEXIS 89813, at **81–82 (D.R.I. Sept. 29, 2009) (testimony by 

comparing $564 million royalty calculated on per-unit basis agains

dollar volume of sales of accused products in guise of a “reasonab

“gut-check” “runs afoul of the entire market value rule”). Courts sh

about admitting testimony or allowing argument directed to total 

larly total revenues unrelated to the infringement, because of the 

bative nature of that testimony or argument may be outweighed 

nature. In this regard, courts should be vigilant in guarding again

unfair prejudice, confusion of the issues, or misleading the jury.” Fe
33 

more prejudicial than probative.99

 The court should make clear well in advance of th

line for in limine motions—ideally, in an order—tha

should not bring in limine motions that are, in effe

motions for summary judgment. In limine motions ar

make important evidentiary rulings prior to trial, n

summary disposition. 

   

99. Patent Management Guide, supra note 2, at 7-29 to 7-44. 
34 

at trial “[f]or convenience, to avoid prejudice, or to ex

economize . . . .”100 

In deciding whether one trial or separate trials will b

convenience of the parties and the court, avoid p

minimize expense and delay, the major consideratio

proach will result in a just, speedy, and final disposit

gation. In many instances, the conventional approac

discovery on liability and damages to proceed concur

the most efficient and expeditious. In others, a pha

cated approach may be preferable. Relevant cons

clude the prospect of avoiding the burden and ex

damages discovery (and, perhaps, avoiding the nee

ages at all), the extent to which damages issues di

primary liability issues, and whether a single trial wou

potential for jury bias or other prejudice.101 The cour

evaluate the potential for jury confusion. Some of thes

loom larger in complex cases involving multiple pate

accused products.102

   

100. Fed. R. Civ. P. 42(b). See Gardco Mfg., Inc. v. Herst Light

1209, 1212 (Fed. Cir. 1987) (“Under Rule 42(b), a district court has 

in separating issues and claims for trial as part of its wide discre

agement.”). 

101. For example, in A.L. Hansen Mfg. Co. v. Bauer Prods., In

2004 U.S. Dist. LEXIS 8935 (N.D. Ill. May 17, 2004), the court explain

inquiry under Seventh Circuit law: 

First, the trial court must determine whether bifurcation w

promote judicial economy or avoid prejudice to the parties. Ne

both of these interests are implicated, the trial court must bala

terests against any countervailing prejudice to the non-moving 

when the trial court is satisfied that this balance favors bifu

court may order separate proceedings, but only if doing so wo

late the Seventh Amendment. 

Id. at **4–5 (citations omitted). 

102. In Laitram, which involved five asserted patents and, app

accused products, the court in part explained its decision to grant 

and damages phases by noting that “[r]ather than having to pre
35 

 (2) Phased trial: Liability issues are tried to verd

if liability is found, the same jury hears evid

determines the amount of, damages to be awa

 (3) Bifurcated trial: All issues except damages are 

dict first, leading to the entry of a final judgm

be appealed as a matter of right. Damages a

only if needed, after appeal, to a different jury 

 Each of these three approaches has its advocate

upon the nature of the issues to be tried, certain ad

disadvantages. 

 Unitary trials may be expeditious, but they requi

make strategic decisions about the amount of time 

damages, especially when liability is strongly contest

jury concludes there is no liability, the time and effo

the damages presentation will have been unnecessa

a single, un-phased trial of all issues may pose “the 

cially perilous in complicated trials with many sepa

tinct issues) that the jury will consider evidence tha

missible on only one issue to the moving party’s 

other issues.”103 Some counsel favor unitary trials on 

a jury that has doubt about, but nonetheless finds, lia

more restrained in the amount of damages it ultim

Moreover, at the discretion of the court, the jury in a 

may be asked to render a damages verdict regardle

sion on liability, thereby providing a dollar figure th

instated as the result of a successful JMOL on liabi

event of reversal on appeal. 

 Proponents of phased trials cite efficiency, as a 

ing only liability is likely to be simpler and shorter, 

ond, damages phase of trial, may prove unnecessary 

     

dence concerning plaintiff’s alleged damages at once, the parties 

precisely which inventions and HP calculators are involved, and 

ages proof to them.” Laitram Corp. v. Hewlett-Packard Co., 791 F

(E.D. La. 1992). 

103. Id. 
36 

ond verdict. 

 Proponents of bifurcated trials also cite efficienc

ing the ability to take an interim appeal to the Fede

the appeal of the liability determination results in a 

no liability—or if the case is settled pending (or as a 

appeal—damages will never need to be tried, resultin

cost savings. As one court explained: 

In the normal case separate trials of issues is seldom 

but in a patent infringement suit considerations exist 

gest that efficient judicial administration would be 

separate trials on the issues of liability and damages. T

the damages question in such a suit is often difficult a

sive, while being easily severed from the trial of the qu

validity and infringement of the patent. A preliminary 

the question of liability may well make unnecessary th

inquiry, and thus result in substantial saving of time o

and counsel and reduction of expenses to the parties. 

separate trial of the issue of liability may present coun

portunity to obtain final settlement of that issue or ap

out having reached the often time-consuming and dif

ages question.104

Particularly in complex cases, some courts favor bif

soning that “[i]t will be difficult enough to educate t

the various concepts involved in the validity, enfor

infringement issues that influence liability. To includ

time proof of the damages issues could risk needles

   

104. Swofford v. B&W, Inc., 34 F.R.D. 15, 19–20 (S.D. Tex. 1963

Fifth Circuit noted that “[t]he state of the record on this inte

makes a decision on separability take on facets of a decision based 

facts; we cannot tell from the record whether the action pendin

issues of fact common to liability and damages so as to preclude 

Swofford v. B&W, Inc., 336 F.2d 406, 415 (5th Cir. 1964). The co

affirmed, noting “[W]e approve of the district judge’s order on t

cannot think of an instance in a patent action where the damage 

woven with the other issues that it cannot be submitted to the ju

of the others without confusion and uncertainty.” Id.
37 

with meritorious claims. Adjudged infringers may dis

cated damages trial for fear that jurors addressing o

may take a less moderate approach to the damages d

since they undertake their damages deliberations kn

fendant to be an infringer and without the benefit of a

evidence that may have been presented during the 

Moreover, where liability is found, bifurcation inevita

some duplication, as a second jury must be educat

basics of the technology and market, at least to the p

can understand such issues as, for example, the natur

of any non-infringing substitutes. 

 A court that is inclined to phase or bifurcate a pa

need to determine whether to treat willfulness as par

ity or damages portion of trial. Courts differ in how 

this question. Some of the evidence relating to willful

that relating to the development of the infringing 

mally will be presented during the liability trial for ot

and would have to be presented again if willfulness 

second jury. Other willfulness evidence, such as the 

or reliance on the opinions of counsel, is normally re

the willfulness issue. Ultimately, whether it is most 

fair to address willfulness at the same time as the li

damages issues is a matter left to the court’s discret

   

105. Laitram Corp., 791 F. Supp. at 116 (citations and footnote o

106. The Seventh Amendment may be implicated where liabi

are to be tried by different juries, as the Constitution requires th

may not be tried by different successive juries.” Blyden v. Mancusi

Cir. 1999); see also United Air Lines, Inc. v. Wiener, 286 F.2d 302, 30

(on facts presented, “the issues of liability and damages, exemplar

not so distinct and separable that a separate trial of the damage is

without injustice”). In In re Innotron Diagnostics, 800 F.2d 1077, 1084 

the Federal Circuit denied a petition for writ of mandamus challen

Amendment grounds, the trial court’s order directing separate tr

tiff’s patent infringement action and defendant’s antitrust coun

plained: “‘the prohibition is not against having two juries review th

but rather against having two juries decide the same essential issue
38 

Circuit has declined to hear an appeal where injunct

main outstanding.108

 Multidefendant cases can present particular tri

for resolving damages issues in a way that is fair t

Even if certain liability-related issues are common to 

dants, damages or related issues like willfulness ma

example, a different hypothetical negotiation date m

each defendant. The defendants may have different d

tives available to them, or may use the patented inv

ferent ways. Accordingly, each defendant may 

justification for presenting its own damages case. Un

cumstances, the court should consider severing d

purposes of trial, both as a matter of efficiency and 

possibility of unfair prejudice. 

B. Voir Dire 

No special procedures normally are required for voir 

cases. Courts should ensure, however, that voir dire 

a vehicle to put improper or unduly prejudicial inform

the potential jurors. For example, counsel sometime

clude voir dire questions that reveal or relate to th

accused infringer, its revenues, profits, or market cap

revenues on the accused products as a way of in

jury’s thinking on damages. Much of this type of i

properly the subject of in limine motions and is in

evidence, much less in voir dire. Attempts to put suc

   

107. See, e.g., SRI Int’l, Inc. v. Advanced Tech. Labs., Inc., 93

App. LEXIS 36220, at **5–6 (Fed. Cir. Dec. 21, 1994) (non-precede

court opting to defer its determination of willfulness to the dam

not preclude the appeal of an otherwise final decision). 

108. See Advanced Cardiovascular Sys. Inc. v. Medtronic Va

Fed. Appx. 962, at *963 (Fed. Cir. 2007) (non-precedential) (dism

premature where request for permanent injunction remained pe

district court); see also Schwarz Pharma, Inc. v. Teva Pharms. US

Appx. 369, at *370 (Fed. Cir. 2005) (non-precedential) (same). 
39 

C. Procedures to Aid the Jurys Understanding 

In jury trials, providing preliminary substantive instru

applicable law before opening statements by coun

counsel to make interim statements during the evide

of lengthy trials, and allowing jurors to submit writt

for witnesses to answer are all procedures that have 

aid the jury in understanding the case.109 Reasonable 

ages present particularly complex issues that may w

cation of some or all of these techniques. After e

complexity and length of any given trial, courts sho

whether such procedures would be helpful to the jury

D. Objections 

As with all cases tried to a jury, there is a danger i

trials that “speaking objections,” the presentation 

evidence, or the inappropriate arguments of cou

highly prejudicial to the outcome of the case. Judg

mindful of this risk and should entertain pretrial mo

tablish procedures that will prevent the jury from hea

tion that may be more prejudicial than probative on 

patent damages. Special care should be taken to 

prior rulings, including the court’s prior Markman r

be addressed with the jury, as well as any other issu

interfere with the determination of the patent dama

erly introduced evidence. Examples of evidence th

excluded include references to general industry royal

amounts paid by third parties on account of patent

unless a suitable foundation is laid establishing the 

and comparability of those rates or payments to th

products at issue. 

   

109. See Seventh Circuit American Jury Project Final Repo

http://www.7thcircuitbar.org/associations/1507/files/7th%20Circuit

0Jury%20Project%20Final%20Report.pdf. 
40 

gy y 

that issue. Such a motion may be made at any time be

is submitted to the jury. Such motions often are 

damages issues, including, e.g., issues related to appo

the entire market value rule, or to the availability o

category of damages. 

F. Verdict Forms 

Although the law does not require a trial court to 

verdict in patent cases,110 it is advisable for the cour

The Supreme Court has noted, “in cases that reach th

cial verdict and/or interrogatories on each claim elem

very useful in facilitating review, uniformity, and p

verdict judgments as a matter of law.”112 The Federa

has encouraged special verdicts, particularly in comp

 Special verdicts serve important purposes, both a

appeal. Special verdicts focus the jurors’ attention o

multiple issues they are asked to determine and giv

orderly way of approaching their deliberations and 

also facilitate appellate review and may help avoid 

retrial, or at least narrow their scope. As one court ex

The special verdict compels detailed consideration. Bu

it enables the public, the parties and the court to see 

jury really has done. The general verdict is either all w

right, because it is inseparable and inscrutable. A si

   

110. McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1356 (Fed

111. See Fed. R. Civ. P. 49. The Model Patent Instructions co

dict forms that can be useful starting points. 

112. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 

113. Union Oil Co. v. Atlantic Richfield Co., 208 F.3d 989, 997 

(“In the course of the lengthy jury trial the district court heeded t

sel to use special verdicts in complex cases.”); Comark Commc’

Corp., 156 F.3d 1182, 1189 (Fed. Cir. 1998) (“We note that the use o

interrogatories drawn to each claim element has been endorsed 

couraged by the Supreme Court”). 
41 

dict form. At the very least, the verdict form should a

enter separately amounts for each category of dam

(e.g., lost profits, reasonable royalty, price erosio

Where reasonable royalties are sought, it is advisabl

cial verdict form to ask the jury to state the royalty 

alty base, and the amount of reasonable royalties aw

damages are sought under the entire market value r

should consider any request to ask the jury whether 

feature is the basis for customer demand. Requirin

provide separate answers to these questions will incr

lihood that, even if the entire verdict is not upheld o

Federal Circuit will be able to resolve the case with

remand it to the district court for further proceeding

should be required to submit a proposed verdict f

one on which they agree. Absent agreement, each 

submit its proposed form to the court. 

 Special verdict forms for damages can be partic

when more than one patent is at issue. Depending o

stances, including whether the patents are related 

the same products are accused of infringing each of t

may be appropriate to use a verdict form that se

damages for each patent. If more than a single damag

to be entered, however, care should be taken to en

understands which of the amounts needs to be enter

upon their conclusions on the issues. For example

questions are presented relating to the amounts o

royalties and lost profits, the form of verdict shoul

   

114. Richardson-Vicks, Inc. v. Upjohn Co., 122 F.3d 1476, 14

1997). The court affirmed the trial court’s order overturning the 

granting JMOL of invalidity, noting, “Sorting through the record i

this when the issue is the correctness of a jury verdict is made co

difficult by the absence of specific findings by the jury. The effort b

plaintiff to support the jury verdict in its favor is also made more d

ferred route would have been to submit the underlying factual issu

the form of a special verdict under rule 49(a).” Id. 
42 

inconsistencies. In the event of any inconsistenc

should confer with the parties concerning how best t

inconsistency prior to dismissing the jury. 
43 

cide any renewed motions for judgment as a matter 

ant to Rule 50. The court should set a briefing schedu

ample time to fully and fairly brief the issues. 

 The function of a renewed JMOL motion is not 

court to substitute its own judgment for that of the ju

to allow the court to reconsider the legal issues raise

assess whether the jury had a legally sufficient eviden

find as it did. Movants therefore should not reargue 

that could have justified a different result, but rat

whether the evidence was sufficient to support the v

ent cases, such motions often address issues of lost p

lished royalty, and collateral sales. 

 A motion for new trial often is filed with the po

motion. Rule 59 authorizes a district court, on time

grant a new trial “for any reason for which a new tria

fore been granted in an action at law in federal cour

deciding a motion for new trial in a patent infringem

plies the law of the regional circuit, which often prov

trial court may grant a new trial “where the verdict 

clear weight of the evidence.”116 The court’s authority 

to “overturning verdicts for excessiveness and orderi

without qualification, or conditioned on the verdict 

fusal to agree to a reduction (remittitur).”117 Consis

parties’ Seventh Amendment right to jury trial, any 

offer by the court to reduce a verdict must be accom

offer to grant a new trial.118 The same is not true if the 

   

115. Gasperini v. Center for Humanities, Inc., 518 U.S. 415, 433 

116. Aero Prods. Int’l, Inc. v. Intex Recreation Corp., 466 F.3

(Fed. Cir. 2006) (citing Seventh Circuit law for “against the clear w

dence” standard); Shockley v. Arcan, Inc., 248 F.3d 1349, 1362 (Fe

ing Fourth Circuit law for “against the clear or great weight of the 

dard) (internal quotation marks omitted). 

117. Minks v. Polaris, 546 F.3d 1364, 1370 (Fed. Cir. 2008) (q

518 U.S. at 433). 

118. Minks, 546 F.3d at 1370.
44 

B. Ongoing Royalties 

Under some circumstances, courts may award a roy

verdict sales either where a permanent injunction ha

pending appeal or in lieu of a permanent injuncti

cases, where the district court determines that a p

junction is not warranted, the district court may wish 

parties to negotiate a license amongst themselves reg

use of a patented invention before imposing an ong

Should the parties fail to come to an agreement, the 

should step in to assess a reasonable royalty in ligh

ing infringement.”120 The Federal Circuit has indica

parties are not entitled to a jury trial on the issue of o

ties,121 but the trial court must provide a concise bu

nation of its reasoning to support the ongoing royalty 

 The Federal Circuit has not yet described the a

applied to the amount of ongoing royalties in lieu of 

injunction. In connection with a stay of injunction pe

however, the Federal Circuit has explained: 

 When a district court concludes that an injuncti

ranted, but is persuaded to stay the injunction pend

peal, the assessment of damages for infringement takin

ter the injunction should take into account the change 

ties’ bargaining positions, and the resulting change in 

circumstances, resulting from the determination of lia

example, the infringer’s likelihood of success on app

fringer’s ability to immediately comply with the injun

parties’ reasonable expectations if the stay was enter

sent or stipulation, etc.—as well as the evidence and 

found material to the granting of the injunction and the 

   

119. Id. at 1371. 

120. Paice LLC v. Toyota Motor Corp., 504 F.3d 1293, 1315 (Fed

121. Id. at 1315–16. 

122. Id. at 1315. 

123. Amado v. Microsoft Corp., 517 F.3d 1353, 1362 (Fed. Cir. 2
45 

of the trial or after the verdict is a matter of discretion

C. Findings of Fact and Conclusions of Law 

While Rule 52 identifies situations where findings 

conclusions of law are mandated, the court should ta

cases tried to the bench to provide as complete a rec

ble for review on appeal, so as to avoid remands resu

Federal Circuit’s lack of sufficient basis for applicatio

dards of appellate review.124 The Federal Circuit doe

to remand damages judgments from bench trials fo

tion of the underlying evidence and reasoning.125

   

124. ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572

1984); see also Pullman-Standard v. Swint, 456 U.S. 273, 291–92 (19

fails to make findings, judgment should be vacated and remanded). 

125. See, e.g., Heeling Sports Ltd. v. US Furong Int’l Inc., No

U.S. App. LEXIS 7182, at **3–7 (Fed. Cir. 2009) (non-precedentia

court’s damages award and remanding for explanation); Amado, 

(vacating trial court’s damages escrow award and remanding for 

and explanation); Paice, 504 F.3d at 1315 (vacating, for lack of 

court’s award of ongoing royalty in lieu of injunction and reman

ation of royalty rate). 
g, 

Magistrate Judge John M. Facciola, U.S. District Court for the District 

Judge James B. Haines, Jr., U.S. Bankruptcy Court for the District of M

Judge Edward C. Prado, U.S. Court of Appeals for the Fifth Circuit 

Chief Judge Loretta A. Preska, U.S. District Court for the Southern Dis

Judge Philip M. Pro, U.S. District Court for the District of Nevada 

James C. Duff, Director of the Administrative Office of the U.S. Courts 

Director

Judge Barbara J. Rothstein 

Deputy Director

John S. Cooke 

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