There are often gray areas in determining damages resulting from the infringement of a patent in litigation when damages are based upon a design-around solution. This is in part because infringement can vary depending upon the number of claims found to be infringed upon and how broadly or narrowly they are defined by the court during the claim construction process. A design-around solution refers to whether a viable alternative exists to avoid infringing the patent at issue.
To put forth a successful patent damages calculation based upon a design-around solution that withstands the scrutiny of the court, a damages expert should work with technical experts and counsel to understand the scope and reach of the asserted claims. With the assistance of counsel, a damages expert should engage with the technical expert early on in discovery to gain insight on claim construction that may ultimately affect a damages expert's findings. Additionally, a damages expert should maintain this communication with the technical expert and counsel throughout the duration of the case and leverage this line of communication as the case, and the interpretation of the asserted claims, potentially evolves.
Understanding the scope and reach of the asserted patent claims assists the damages expert in determining if a design-around solution is feasible and, if so, what changes would need to be made to an accused product to avoid infringement of the patent-in-suit. For instance, assume a patent infringement complaint consisted of ten asserted claims, and the court has yet to rule on whether all ten asserted claims will remain in the case. A damages expert in this situation may want to initially assume that all ten claims are infringed upon and work with the technical expert to establish a ceiling on damages. Later, if only three of the ten claims survive the claim construction ruling and it is determined that the remaining claims only marginally contribute to the functionality of the product that embodies the patent-in-suit, a damages expert can potentially adjust the initial damage figure with input from the technical expert to reflect the court's ruling.
The patent holder and plaintiff's counsel rarely advance design-around solutions; rather, they typically take the position that there are no acceptable design-around alternatives to the asserted claims at issue. Nevertheless, a damages expert should confirm by discussion with the technical expert that this is in fact the technical expert's opinion before relying upon it.
Defense counsel may be reluctant to have its damages and technical experts interface during the course of a litigation. Typically, counsel for an accused infringer retains a technical expert to address patent invalidity, unenforceability, and/or non-infringement. However, the underlying assumption regarding infringement when determining damages in general and when quantifying damages based upon a design-around solution specifically, is that absent infringement, there are no damages and no need to design around any of the claims asserted by the patent holder. Hence, by asking a technical expert to entertain potential design-around solutions, defense counsel may believe that it runs the risk of undermining its position that the patent is not valid, enforceable, or infringed. For instance, counsel may be concerned that the trier of fact would conclude that even the defendant's own technical expert believed that some form of infringement occurred—as evidenced by a design-around solution he vetted with the damages expert—which would not be needed absent infringement. To address these concerns, it is important that a technical expert's opinions regarding invalidity, unenforceability, and/or non-infringement be appropriately differentiated from his or her opinions pertaining to a design-around solution and are accordingly communicated to the trier of fact as a fallback position only if there is a finding of liability.
Whether working on behalf of a plaintiff or a defendant, counsel should facilitate communication between the damages and technical experts early on in a litigation matter in order to formulate cohesive opinions that do not undermine one another. Additionally, the parties should collectively communicate often throughout the duration of the case as the facts and circumstances specific to the matter evolve, especially in light of a court's ruling on claim construction.
Keyword: expert witnesses, litigation, design-around solution, patent infringement, technical expert, damages expert