Early Valuation of Damages in Patent Litigation

Intellectual Property Owners Association

12/08/2011 11:00 a.m. - 12:00 p.m. PST

Patent Litigation


Prior to the U.S. Supreme Court's 2006 decision in eBay v. MercExchange, a patent plaintiff was awarded a permanent injunction as a matter of course after proving infringement and validity. eBay abolished this rule in favor of the traditional four-prong equitable test for injunctions in civil cases, creating a great deal of uncertainty as to what circumstances would permit a successful patent plaintiff to obtain an injunction. In its October decision in Robert Bosch v. Pylon, the Federal Circuit resolved some of this uncertainty. By reversing a denial of an injunction (under an "abuse of discretion" standard), and entering an injunction without remand, the Federal Circuit sent a signal that an injunction against a competing product remains an achievable goal for plaintiffs in patent disputes.

The panel consists of two experienced patent litigators (one of whom represents Bosch) and a damages expert. They will consider how a plaintiff that practices a patent can best bolster its legal and economic case to get an injunction after a finding of infringement - and how a defendant can best counter those arguments.

The panel will also consider how the eBay decision has evolved into a rule at district courts that makes it extremely difficult for non-practicing entities to win an injunction. They will consider how an NPE could possibly counter that rule and how compulsory licensing is developing as the alternative to injunctions.


  • Rachel Krevans, Morrison & Foerster, LLP
  • Mark A. Hannemann, Kenyon & Kenyon LLP
  • Mario Lopez, NERA Economic Consulting

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