An owner of Intellectual Property (IP) can choose to license or transfer the IP it holds. If an owner chooses to license its IP, considerations such as whether the license will be exclusive or non- exclusive, what types of IP will be licensed, which products of the licensee(s) will be covered under the license, the […]
Ocean Tomo Expert Testimony
The U.S. Supreme Court Rules on Case Concerning the Standard for Enablement
On May 18, 2023, the U.S. Supreme Court issued a unanimous opinion in the case of Amgen Inc. v. Sanofi and Aventisub LLC (Docket No. 21-757), holding that two U.S. patents owned by Amgen failed to satisfy the enablement requirement of 35 U.S.C. §112(a). The Court’s ruling upheld the opinion of the Federal Circuit. U.S. […]
Recent Rulings Suggest Damages Experts Have Discretion in Considering License Agreements Post-Dating a Hypothetical Negotiation
On January 5, 2023, in the matter of Willis Electric Co., Ltd. v. Polygroup Limited, et al., Judge Wilhelmina M. Wright of the United States District Court for the District of Minnesota denied a motion to exclude expert testimony that relied on a license agreement post-dating the hypothetical negotiation.1 In this matter, Plaintiff Willis Electric […]
The U.S. Supreme Court Hears Oral Argument Concerning the Standard for Enablement
On March 27, 2023 the U.S. Supreme Court heard oral arguments in Amgen Inc. v. Sanofi and Aventisub LLC (Docket No. 21-757), a patent dispute originally filed by Amgen in late 2014. Amgen contends that Sanofi and Aventisub’s biologic, Praluent®, infringes seven U.S. patents, including U.S. Patent Nos. 8,829,165 (“the ‘165 Patent”) and 8,859,741 (“the […]
Case Law on the Role of Non-Infringing Alternatives Under a Reasonable Royalty Analysis versus a Lost Profits Analysis
Consideration of non-infringing alternatives may be informative in determining financial damages associated with patent lawsuits under both a reasonable royalty analysis and a lost profits analysis. However, the following case law examples suggest that non-infringing alternatives serve a different role when considered under a royalty analysis compared to consideration under a lost profits analysis. In […]
Calculating Patent Damages: Key Developments and Notable Cases Explored
Joanne Johnson, Senior Director at Ocean Tomo, a part of J.S. Held, will speak on the latest trends and notable court rulings impacting patent financial damages calculation. The presentation is focused on case law setting forth useful guidance and accepted methodologies to avoid pitfalls when opining to patent damages. In recent years, the United States […]
The Importance of a Multi-Disciplinary Team When Analyzing, Valuing, and Transacting Technology and IP-Rich Companies
Historically, the roles of the appraiser, technologist, and investment banker were separate and unrelated functions in the deal-making process. However, as the global economy continues its decades-long transition from asset-heavy manufacturing to an intellectual property (IP) driven knowledge-based economy, the need for collaboration among these roles has become imperative to the comprehensive analysis of corporate […]
Financial Expert Michael McGinnis Appointed Vice Chair of the Texas IP Alliance
Ocean Tomo, a part of J.S. Held, proudly announces that financial expert Michael McGinnis has been appointed Vice Chair of the Texas Intellectual Property (IP) Alliance. The Texas IP Alliance mission is based on the belief that innovation and IP protection are critical assets that drive robust economic growth and improve social well-being in Texas […]