Sunday, May 03, 2009

Concerning Georgia Pacific v. U.S. Plywood

The following was submitted to the PatentHawk blog [Patent Prospector]:

Of your text -- The 1970 Supreme Court decision in Georgia-Pacific v. United States Plywood laid down what has become the case law bible for assessing damages, listing 15 factors for consideration in assessing damages--, note that the 1970 decision is a district court decision [ 318 F. Supp. 1116 (S.D.N.Y. 1970)]. The amount of the award was reduced on appeal, and the Supreme Court declined to hear the appeal from the Second Circuit. [ 92 S.Ct. 105 ]

Merely as an observation, Mark Lemley, in his prepared testimony before Congress on March 10, 2009, did not mention the Georgia-Pacific case.

***See also

Of the appealed Georgia-Pacific case-->

Georgia-pacific Corporation, Appellant, v. U.S. Plywood-champion Papers Inc., Appellee

United States Court of Appeals, Second Circuit. - 446 F.2d 295

Argued Feb. 16, 1971.Decided June 15, 1971, Certiorari Denied Oct. 12, 1971, See 92 S.Ct. 105.


As Judge Learned Hand put it: The whole notion of a reasonable royalty is a device in aid of justice, by which that which is really incalculable shall be approximated, rather than that the patentee, who has suffered an indubitable wrong, shall be dismissed with empty hands

Cincinnati Car Co. v. New York Rapid Transit Corp., 66 F.2d 592, 595 (2d Cir. 1933).

The distinction between a claimant's 'damages' and an infringer's 'profits' as terms of art is thoroughly discussed in Judge Herlands' opinion that held that GP's profits were not the proper measure of recovery and that USP's damages should be computed on the basis of a reasonable royalty. 243 F.Supp. 500 (S.D.N.Y.1965)


Thus, although we affirm the other findings, we feel that despite the trial court's professed intention to do so, it did not allow GP a reasonable profit after paying the suppositious royalty. This is a basic error which should be corrected. We would, in fact, be inclined to remand for reconsideration were it not for the extraordinary length of time this litigation has already lingered and the willingness of the party ultimately paying the damages to have us dispose of the case. Accordingly, we turn to a redetermination of the award on the basis of the record before us.


Mark Lemley's testimony on 10 March 2009

Testimony on patent reform on 30 April 2009


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