Georgia-Pacific Factors Applied To U.S. Patent Cases with R.O.C. Companies Being Parties – Through Lens of Testimonial Experts

Georgia-Pacific Factors Applied To U.S. Patent Cases with R.O.C. Companies Being Parties – Through Lens of Testimonial Experts

Despite of the criticisms to the Georgia-Pacific, current U.S. case laws still apply these factors for calculating damages in related disputes, including R.O.C. companies being parties. Companies registered in R.O.C. are involving in U.S. cases related to reasonable royalty, wherein O2 v. BiTech and O2 v. Sumida are examples.
R.O.C. companies are confronting with certain circumstances. One is that the competitive relationship with trading parties which may lead to a price erosion issue. An even more popular one is that manufacturing of components rather than whole systems which may lead to an apportionment issue. In these issues, some Georgia-Pacific factors may be applicable while others have limited applicability. However, there are circumstances, e.g., allocating the award, where reasonable royalty is not adopted at all due to failure of expert testimony.
While competitive relation of Factor (5) is applicable to price erosion issue, convoyed sale of Factor (6) may not be quite helpful to apportionment issue, and hardly any factor can be found to enhanced award or split award, especially when expert testimony of Factor (14) failed to meet the requirements. So, limitation to certain factors in certain circumstances are shown. Since the expert testimony, as long as it fulfills associated requirements, is always applicable to related issues in reasonable royalty cases and thus deserved more attention when dealing with analogous cases in the future.