Page 100 - Economic Damages Calculation

fringement, while the counter-plaintiff did not have its own commercially marketable device that em-
ployed the methods identified in the patent, the counter-plaintiff’s damages expert calculated damages
assuming that the counter-plaintiff would have been able to develop a device that used the patented
technology with Cirrus, one of its customers, and profitably market the device.

The court ruled that "[t]o recover lost profits damages, the patentee must show ‘causation in fact,’ that
is, a reasonable probability that the patentee would have made additional profits ‘but for’ the alleged in-
fringement." Id. at 4 (citations omitted). The court did, however, allow for the possibility that lost profits
may be recoverable "where the patentee has the ability to manufacture and market a product, "but for"
some legitimate reason does not." Id. (citations omitted).

The counter-defendant argued that the counter-plaintiff did not have a competing product "anywhere
close to being market ready during the period of alleged infringement." The counter-defendant also ar-
gued that the counter-plaintiff’s damages expert ignored the fact that the counter-plaintiff previously
failed to bid on a contract to be a development partner with Cirrus, had subsequent problems with other
development partners, and suffered from lack of support from its corporate partners.

The court agreed and denied the counter-plaintiff’s claim for lost profit damages, ruling as follows:

All of these factors combine to raise substantial doubt as to whether [the Counter-Plaintiff’s]
suggested alternative universe would actually have come into being. Maybe if [the Counter De-
fendant’s] interfering infringement that is alleged had not occurred, [the Counter-Plaintiff] would
have succeeded in developing and selling a commercial product within the relevant time period,
but merely showing that that might have happened is not enough to take the matter from the
realm of speculation into the realm of the reasonably probable.

Id. at *6–7.

Amerinet, Inc. v. Xerox Corp., 972 F.2d 1483 (8th Cir. 1992)

This case involved anti-trust related allegations that the defendant, a manufacturer and servicer of high-
end laser printers, engaged in monopolistic and unfair practices. Customers who purchased equipment
manufactured by the defendant typically entered into a full service maintenance agreement (FMSA),
which provided for servicing of the machines. The plaintiff, a broker and reseller of the plaintiff’s
equipment, challenged the defendant’s legal right to enact a supplement to the FMSA, which included
prohibiting the transfer of the FMSA upon sale of the printers. The plaintiff argued that this prohibition
effectively precluded them from being able to resell any used laser printers that had been previously ser-
viced by the defendant given its prospective customers’ limited ability to continue to have them serviced
and maintained subsequent to any transfer.

In addition to the anti-trust claims, the plaintiff further alleged that the defendant defamed and tortiously
interfered in its relationship with a major customer, causing the plaintiff to lose that customer. A damag-
es expert was retained, who calculated damages arising from these losses.

The trial court granted the defendant’s motion for summary judgment, which precluded the plaintiff
from presenting its antitrust-related claims at trial. The court, however, did allow the plaintiff to proceed
with its defamation and tortious interference claims related to the loss of its major customer, to which
the jury found for the plaintiff and awarded $1 million. On appeal, both sides challenged the court’s rul-
ings. The plaintiff challenged the court’s ruling with regard to its granting of the defendant’s motion for
summary judgment on the antitrust claims, while the defendant challenged the court’s allowance of tes-

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