earticle

영어

U.S. courts have interpreted 35 U.S.C. §284 as providing two means of calculating damages for patent infringement cases, which are known as lost profits and a reasonable royalty. To receive lost profits, a patent owner must show that "but for" the infringement, it would have made additional profits from the sale of its own products. A reasonable royalty commonly takes the hypothetical negotiation approach, which attempts to ascertain the royalty upon which the parties would have agreed had they successfully negotiated an agreement at the time of the first infringement. By designating a reasonable royalty as the floor below which damages shall not fall, the U.S. patent law guarantees at a minimum the royalty that the patentee would have received through an arms-length negotiation for the infringed patent, even if the patentee had never practiced the patented invention. Although the broad coverage of the award from lost profits can encompass the entire market value, the sale of "convoyed goods," the sale of "derivative goods," and the price erosion, etc. and thus resulting in high amount of damages award, patentees somehow prefer a reasonable royalty over lost profits and courts had never raised an issue about such preference by the plaintiffs. There are several reasons for such preference for a reasonable royalty over lost profits. Unlike lost profits, which require showing of "cause in fact," establishing that "but for" the infringement, he would have made additional profits, which then can be rebutted by the accused infringer, a reasonable royalty does not have such burden of proof. Yet in calculation of a reasonable royalty, courts have permitted incorporation of the entire market value rule, sale of "convoyed goods," discretionary increases, which had resulted in increase in the amount of award for a reasonable royalty. Also the most commonly used "hypothetical negotiation" approach requires several assumptions that inevitably raise the damages award. Such causes resulted in the regular appearances of outrageously high damages awards under the name of reasonable royalty, which are baseless and unpredictable in nature, thus fostering a litigation environment that allows the overly aggressive and jackpot minds of patent trolls to thrive. In response to the overcompensation problem in the reasonable royalty calculation, courts and Congress have been working together to fix the problem. Meanwhile, as many Korean corporations are currently defending in many patent infringement lawsuits in the U.S., many of which have been brought by patent trolls, this paper hopes to provide these corporations with up-to date information on patent litigation to better assess the risks that are attached to their pending or future lawsuits.