Page 73 - Intellectual Property Disputes

Georgia-Pacific Factors Analysis Where to Find

customer list, industry
research
4 Documents pertaining to the Correspondence and
amount of protection and testimony of company
effort the plaintiff places on management
its intellectual property
9 Cost savings and other Internal correspondence,
benefits of the intellectual financial records and
property in suit correspondence, technical
expert reports
15 Financial position of Financial statements and
companies and need for records over time,
intellectual property and particularly as of date of first
product sales infringement
6 Collateral sales and related Sales invoices showing how
product sales often the products are sold
together and marketing
literature

Classification of the Georgia-Pacific Factors

A treatise on the subject of intellectual property law and damages classifies the 15 Georgia-Pacific
factors into two broad groupings of (a) licensing activity (including prior and existing licenses, licensing
policies, and industry customs) and (b) the value of the patent (including anticipated profits, benefits of
the invention, value of the invention, available non-infringing alternatives, and the duration of the
patent). fn 21 Alternative classifications of the Georgia-Pacific factors exist, including similar categories
set forth in Promega Corp. v. Lifecodes Corp. fn 22

In Promega, the court stated that the Georgia-Pacific factors fall into two categories. The first category
is specific and general market conditions in the pertinent industry, which include prior and existing
licenses under the patent, industry custom and licenses on comparable patents, and the patent owner's
licensing policy and the relation between the parties. The second category is the anticipated profitability
of the product or process made, used, or sold by the alleged infringer and covered by the patent. It
includes the infringer's anticipated profits; comparative utility and non-infringing alternatives; collateral
benefits and convoyed sales; improvements, small parts, and apportionment; state of development and
commercial success; and duration of the patent. The grouping of the Georgia-Pacific factors
demonstrates the interplay of the issues presented in the Georgia-Pacific case and the hypothetical
negotiation.

fn 21 J.T. Thomas, D.A. Segal, and H.M. Lyon, Intellectual Property Law Damages and Remedies: Updated through Release 18,
Terence P. Ross, ed. (New York: Law Journal Press), 3-58.

fn 22 Promega Corp. v. Lifecodes Corp., 53 U.S.P.Q.2d 1463, 1999 WL 1427829 (D. Utah, 1999).

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