Given our adversarial system, it is not surprising that plaintiffs advance creative damages theories that would help them maximize their recoveries. In patent law, one recurring tactic for patentees is to seek remedies based on the entire infringing product instead of the specific feature covered by the patent. This distinction can significantly inflate remedies because modern multicomponent products contain thousands, sometimes hundreds of thousands, of different features. Thus, entire products are orders of magnitude larger, more complex, and more valuable than individual features.
In recent years, the Supreme Court has sensibly rejected attempts to base patent remedies on entire products in the context of permanent injunctions and design patents. The Federal Circuit nonetheless continues to allow patentees to recover all the lost profits associated with an entire infringing product even when the patent at issue only covers one aspect of a multicomponent product. In Mentor Graphics Corp. v. EVE-USA, Inc., the Federal Circuit recently affirmed a $36,417,661 award, giving the patentee all of the lost profits caused by the sales of the defendant’s infringing semiconductor emulator systems. The patent, however, covered only one feature of the defendant’s product. The court explicitly rejected attempts to apportion profits between those attributable to the patented feature and other significant factors.
This Article argues that the failure to consider apportionment is wrong on both the law and policy. From a doctrinal perspective, the Federal Circuit has misinterpreted Supreme Court precedent, dating back to the nineteenth century, to arrive at an overly simplistic “but for” test to assess damages. From a policy perspective, awarding lost profits based on the entire infringing product—rather than just the feature—compensates the patentee for value she did not create and deters innovation in technologies that operate with or build upon other technology (“complementary technology”). Accordingly, this Article argues that it is time to realign the lost profits doctrine to make it consistent with other types of patent remedies. Patentees should only be compensated based on the value of the patent they hold. That means focusing the remedy on the infringing feature and not the infringing product.
Bernard Chao, Lost Profits in a Multicomponent World, 59 B.C.L. Rev. 1321 (2018), http://lawdigitalcommons.bc.edu/bclr/vol59/iss4/4