Page 10 - Intellectual Property Disputes

Chapter 1

Introduction

Intent of the Practice Aid

The objective of this practice aid is to provide nonauthoritative guidance to practitioners engaged to
provide expert or litigation consulting services concerning intellectual property rights and the calculation
of damages in intellectual property disputes. This practice aid focuses on the theoretical, legal,
economic, and accounting foundations of intellectual property and methodologies commonly employed
in the calculation of intellectual property damages. Because the calculation of intellectual property
damages may involve a variety of analytical skills and methods, practitioners should ensure that their
qualifications allow for the provision of such services pursuant to applicable professional standards,
such as Statement on Standards for Forensic Services. Further, other practice aids, such as Attaining
Reasonable Certainty in Economic Damages Calculations, may include general damages concepts that
are relevant considerations in the assessment of economic damages, including in intellectual property
disputes. Practitioners calculating damages in intellectual property disputes might consider general
damages concepts addressed in other practice aids.

The first section of this practice aid provides an overview of intellectual property laws (patent,
trademark, copyright, and trade secret) in the United States. The second section addresses the calculation
of damages arising from the infringement of intellectual property assets and rights.

Two appendixes accompany this practice aid. Appendix A, "Intellectual Property Print and Electronic
Resources," provides a select listing of intellectual property periodical and publication resources.
Appendix B, "Summary of Intellectual Property Cases," provides a listing of selected case law. These
example cases provide insight about the methods and procedures accepted by certain U.S. courts in the
calculation of damages. However, the practitioner is cautioned that these court cases provide only
general guidance and may not be consistent at the district court level; the facts and circumstances of
each engagement are controlling and may dictate the choice of appropriate methodology.

The courts have issued many important intellectual property case decisions since the development of the
2012 edition of the Forensic and Valuation Services Practice Aid Calculating Intellectual Property
Infringement Damages. In these decisions, intellectual property infringement damages are discussed at
length. The list of cases in appendix B is by no means all-inclusive; the list contains a sample of
noteworthy cases taken from the U.S. Supreme Court, Federal Circuit court, and district courts to
provide guidance to practitioners regarding the methods and procedures considered or accepted by U.S.
courts in the calculation of damages. The precedential value of intellectual property case law changes as
appellate and other courts publish new decisions. New decisions may potentially affect the application
of law and the methodologies described herein. Therefore, the practitioner should consult with client
counsel regarding the proper application of any cases cited in appendix B. As noted in this practice aid,
the U.S. courts continue to award damages in intellectual property cases under a variety of theories and
analyses, giving the damages expert a variety of recognized methods to consider in evaluating the
economic consequences of the infringing activity.

6 © 2020, Association of International Certified Professional Accountants