The Use of Market and Industry Data in Patent Damages: The Two Approaches under Federal Rule of Evidence 703
December 29, 2006
Whether calculating lost profits or performing a 'reasonable royalty' analysis under the <i>Georgia-Pacific</i> factors, a damages expert in a patent case is required to consider a large variety of data ' not just data from the plaintiff or the defendant, but also data from third-party sources, such as trade industry publications or market analyst reports. The admissibility of an opinion based on third-party information, however, has been a source of conflict since 1993, when the U.S. Supreme Court decided <i>Daubert v. Merrell Dow Pharms., Inc.</i>
More from the Best of MLF 2006
December 28, 2006
In last month's issue, we covered the best of MLF from February to and including June 2006. In this issue, we will take a look back at July through November.
Beware the Gatekeeper
December 22, 2006
Last month, we explained that valuation issues come into play throughout Chapter 11 business reorganization cases. We discussed how to recognize the uncertainties underlying expert valuation conclusions; enterprise/going concern value; and the fact that the goal of any valuation is to make an estimate based on an informed judgment that embraces all facts relevant to future earning capacity and hence to present worth, including, of course, the nature and conditions of the properties, the past earnings record, and all circumstances that indicate whether or not the record is reliable criterion of future performance. We conclude this month with a discussion of expert evidence.
IP News
November 30, 2006
Highlights of the latest intellectual property news from around the country.
Skating the Thin Ice of the Written Description Requirement
November 30, 2006
In recent years, cases such as <i>Enzo Biochem, Inc. v. Gen-Probe, Inc.</i>, 323 F.3d 956 (Fed. Cir. 2002) ('<i>Enzo</i>') and <i>University of Rochester v. G.D. Searle and Co., Inc.</i>, 375 F.3d 1303 (Fed. Cir. 2004) ('<i>Rochester</i>') have fueled an ongoing debate over whether the first paragraph of 35 U.S.C. §112 includes a written description requirement, separate and distinct from enablement and best mode. According to Judge Randall Ray Rader, <i>Univ. of Cal. v. Eli Lilly & Co.</i>, 119 F.3d 1559 (Fed. Cir. 1997) ('<i>Eli Lilly</i>') brought the written description requirement squarely to light. <i>Rochester</i>, 375 F.3d at 1307 (Circuit Judge Rader dissenting). This 'new' requirement creates 'enormous confusion,' not only for the courts, but also for patent drafters. <i>Id.</i> Because the requirement is in flux, patent practitioners should avoid overlooking the requirement or taking it too lightly.
Nontraditional Trademarks: The Flavor of the Month
November 30, 2006
Recently, in a case of first impression, the Trademark Trial and Appeal Board refused to grant trademark protection to the flavor of an antidepressant tablet on the grounds that the flavor was functional and incapable of serving as a mark. <i>In re N.V. Organon</i>, 79 USPQ2d 1639 (TTAB 2006). The decision is a departure from the trend of extending protection to nontraditional trademarks. Although the Board left the door open to the possibility of registering flavor as a trademark, it made clear that future applicants will face significant challenges in registering such marks, including: 1) proving that a flavor has acquired secondary meaning; 2) overcoming the difficulties inherent in protecting a flavor due to the subjective nature of taste; and 3) proving that a flavor functions as a source indicator despite the fact that consumers are not exposed to a product's flavor prior to purchase.
Is Software a Section 271(f) 'Component' of a Patented Invention?
November 30, 2006
On Oct. 27, 2006, the Supreme Court granted certiorari in <i>Microsoft Corp. v. AT&T Corp.</i> (No. 05-1056), preparing to elucidate the contours of patent infringement under 35 U.S.C. §271(f) as applied to the exportation of software code. This case marks the first time in the 22 years since Congress enacted the provision that the Court will venture into this area. The outcome may have significant ramifications for the software industry because §271(f) was widely assumed to apply only to the tangible components of a physical machine. If §271(f) applies equally to software, then software companies will need to rethink their exposure to liability when exporting software abroad. Liability under §271(f) may extend beyond the initial act of exporting and further include downstream activities, such as copying and installing that are done entirely outside of the United States.
Bankruptcy Code Amendments Alter Franchise Case Strategies
November 28, 2006
The substantial amendments made by the Bankruptcy Abuse Prevention and Consumer Protection Act of 2005 (BAPCPA) to the Bankruptcy Code have had a significant impact on the dynamics of franchisee bankruptcies. The BAPCPA was generally intended to accelerate Chapter 11 'reorganizations' and provide relief to certain constituencies in the bankruptcy process (eg, landlords). This article focuses on the nuances of the BAPCPA's impact in franchisee bankruptcy cases.
The Second Annual MLF 50: The Top 50 Law Firms in Marketing and Communications
November 27, 2006
At the outset, let me congratulate the 50 firms that made this year's MLF 50. The fact that out of the hundreds of law firms with marketing programs, these 50 firms have attained the status of being considered the best programs in the country is a testament to the fabulous strides that law firm marketing, business development and media programs have achieved over the last year. There is good news here: Marketing is alive, well and prospering at many of the AmLaw 200 firms. This year, the MLF 50 showcases a wide range of firms and their marketing activities that can best be described by using a sports metaphor ' a full contact sport. The profession has come a long way in terms of sophistication, depth and creativity. In the following pages, you will see the power of marketing, business development and media and how can transform and strengthen a law firm ' and yes, make it more profitable. What is important to note is that many of these marketing activities were created as vehicles for pro bono and diversity initiatives. It should come as no surprise that doing good deeds for others and creating a diverse environment leads to prosperity.
