Mark Pedigo

Courts consistently focus on the availability of non-infringing substitutes as of the date of the hypothetical negotiation. In most of the cases reviewed, the determination of available substitutes was limited to those available at the date of first infringement. If an alternative introduced after the hypothetical negotiation was considered, its impact was discounted to reflect uncertainty as of the date of the negotiation. For example cases, please contact the author. From a review of the above cases, it is clear that the book of wisdom can be relevant and useful, but it is not always allowed by courts. Use and acceptance of the book of wisdom is case and court specific.

In the calculation of design patent infringer profits, two key issues are the definition of the article of manufacture and the methodology for calculating total infringer profits… Depending upon the case, infringer profits may be based on the entire accused product or may be limited to a component of the accused product, but there is no test or guidance at this point for how to determine if the entire product is the article of manufacture or if only a component or certain components comprise the article of manufacture. Therefore, it may be prudent, depending upon the case, to calculate infringer profits based on one or more alternative assumptions as to what the article of manufacture is comprised of in the specific situation. In some cases, the design patent will cover most or all of the product in question but in other cases such as in the Apple case, it will cover only a minor portion of the product.