Washington and Lee law professor Christopher Seaman will speak at the 16th Annual IP Symposium: Patent Assertion Entities hosted by the Texas Intellectual Property Law Journal. The symposium is held at the University of Texas at Austin on Friday, February 20, 2015. Professor Seaman will present a new research projected titled Ongoing Royalties as an Alternative to Injunctive Relief for PAEs After eBay: An Empirical and Theoretical Assessment.
From the abstract:
Since the Supreme Court’s 2006 decision in eBay v. MercExchange, it has become increasingly difficult for patent assertion entities (PAEs)—firms that own, license, and assert patents in litigation, but do not practice the patented invention themselves—to obtain injunctive relief after a finding of infringement. Recent studies have shown that evidence of competition in a product market between a patentee and an infringer is the single most important consideration in granting injunctive relief post-eBay, which few if any PAEs can satisfy.
When a permanent injunction cannot be granted, the Federal Circuit has endorsed an alternative equitable remedy called an ongoing royalty, which is essentially a limited, post-judgment license to the infringer. However, lower federal courts have not settled on a consistent methodology for determining an appropriate ongoing royalty, including the related issue of whether enhanced damages should be awarded for post-judgment infringement. This Article addresses the issue of ongoing royalty awards from both an empirical and theoretical perspective. First, it reports the results of an original empirical study regarding ongoing royalty awards by district courts following eBay. Second, applying insights from this empirical data, it proposes a new framework for computing an ongoing royalty that serves patent’s law objective of incentivizing innovation while also avoiding excessive damages.