Calculation Method and Development Trends towards Reasonable Royalty Damages for U.S. Patent Infringement
|關鍵字:||合理權利金;分配法則;整體市場價值法則;標準基礎專利;持續性權利金;Reasonable Royalty;Apportionment;The Entire Market Value Rule;Standard-essential Patents;Ongoing Royalties|
Institute of Technology Law
對於合理權利金最近發展趨勢，即「標準基礎專利之權利金」及「持續性權利金」之計算方式，本文亦予以分析介紹。計算標準基礎專利之權利金時，與一般合理權利金之計算並不完全相同，尤其專利權人是否履行「公平合理無歧視之授權義務」，是否造成「專利箝制、權利金堆疊」而有礙競爭、損及消費者利益，近年來已成為美國學界與實務界關注之焦點，美國聯邦地方法院對此種權利金之計算呈現多樣化之狀態，聯邦巡迴上訴法院最近在Ericsson v. D-Link案中給予審判之指導方針，本文比較該案與其他標準基礎專利權利金計算之異同，並介紹我國智財法院相關判決及提出建議。此外，於陪審團判決確認侵害專利後，侵權人仍繼續侵權所衍生之「持續性權利金」議題，聯邦巡迴上訴法院雖曾表達過幾個原則，然未明示計算方法，本文分析德州東區地方法院法官對Mondis Technology Ltd. v. Chimei InnoLux Corp. 一案之意見及學者間不同之觀點，藉以建立「持續性權利金之計算架構」，並提出針砭之建言。|
This article firstly elaborated legal regulations about infringement damage compensation with American patents and then facilitated with qualitative analysis of judgment content to give a brief induction of the cases about Lost Profit, Reasonable Royalty, Comparable Licenses, Apportionment and Entire Market Value Rule, and take this opportunity to specify the calculation way of reasonable royalty used for American court. As judgment was entered under results for applicable law about some case conditions and not comprehensive viewpoint for reasonable royalty, and some judgments may have different explanation under the same legal principle between two judgments, why did it result from? To answer this question, we should firstly probe the initial intention for each legal principle, and then audit the differences between each two case facts before it properly applied for each legal principle. This article tried to classify and incorporate into different case types for formulating conceptual framework for reasonable royalty, as well as raise calculation mode for reasonable royalty. For recent development trends towards reasonable royalty, namely the calculation mode of royalty for standard-essential patents and ongoing royalties, this Article also gave analysis and introductions. While calculating royalties for standard-essential patents, it was not exactly the same as that of reasonable royalty, especially whether patentee fulfills fair, reasonable and nondiscriminatory obligation or whether it resulted patent holdup, royalty stacking and caused impairment for competition, damage of consumer benefits, which has become the focus in the American scholars and pragmatic industry in recent years, the United States District Courts have diversified statuses about calculation of such royalty, and the Federal Circuit gave the guiding principles at Ericsson v. D-Link case. In addition, in regards to the issue of infringer still continues to infringe Ongoing Royalties after jury verdict and affirmed infringement for patent rights, the Federal Circuit Court did not explicitly indicate calculation method even through it expressed several principles, this article analyzed the comments that gave by the judges at the Eastern District of Texas about the case of Mondis Technology Ltd. v. Chimei InnoLux Corp., as well as the different viewpoints made by scholars, so as to set up calculation framework for ongoing royalty, and raised for critical advice.
Technology Law Review