Edward F Sherry

Royalties, evolving patent rights, and the value of innovation

Abstract The value of an innovation to the innovator can change over time, especially in response to changes in the legal protection (such as patent rights) afforded the innovator. A proven-valid-and-infringed patent is a more valuable economic commodity than is an untested patent. The increase in value can be estimated using the success rate of patent lawsuits. Using a database of the outcomes of U.S. patent litigation, we find that plaintiffs win patent litigation some 45% of the time at the trial court level. This has implications both for patent damages awards and for the incentives to innovate.

On the 'Smallest Saleable Patent Practicing Unit' Doctrine: An Economic and Public Policy Analysis

We discuss the recently developed court-originated legal doctrine that patent infringement damages should use as the damages base the selling price of the “smallest saleable patent practicing unit�? (SSPPU). The doctrine appears to have been motivated by concerns that using a broader damages base risks overcompensating patent holders by basing damages on product features the patent holder did not invent. We note that very few real-world licenses use the SSPPU as the royalty base. We discuss a number of conceptual and pragmatic problems with the SSPPU doctrine, including concerns about the fact that the SSPPU may be a component that accounts for only a small fraction of the value of the overall infringing product. In a recent controversial change to its IP policy, the IEEE-SA recently endorsed basing royalties for standards-essential patents on the “smallest saleable compliant Implementation�? of the relevant IEEE-SA standard. The most recent appellate court decision on the subject has rejected a categorical rule requiring the use of the SSPPU.

Public Policy Evaluation of RAND Decisions in Apple v. Motorola, Motorola v. Microsoft, in Re Innovatio, and Ericsson v. D-Link

The recent decisions in the Apple v. Motorola, Motorola v. Microsoft, In Re Innovatio, and Ericsson v. D-Link cases have offered much-needed guidance on U.S. courts’ interpretation of what constitutes F/RAND licensing terms in the standard-setting context. In this paper, we have discussed the implications of these rulings from the perspective of economics and public policy. The courts have generally relied on modified versions of the criteria used in determining “reasonable royalty�? patent infringement damages. Whereas some of these proposed modifications are sensible in our view, others are inconsistent with generally accepted economic principles and are likely to have an adverse effect on incentives to innovate.

Assessing RAND Royalties: A Response to Contreras and Gilbert, 'A Unified Framework for RAND and Other Reasonable Royalties'

In a recent working paper, Profs. Contreras and Gilbert propose a “unified framework” for assessing royalties for both (a) patents that are subject to a FRAND commitment and (b) patents that are not. We believe that these two classes of patents are different (if for no other reason than in the former case, but not the latter case, the patent holder has agreed to give up the exclusive right to use the patented technology granted by the patent law), so that using a “unified approach” risks ignoring an important difference. They urge the use of an “incremental value” approach to evaluating royalties, while downplaying the fact that measuring “incremental value” requires identifying the next-best alternative, and ignoring the fact that there is a very big difference between the situation in which the next-best alternative is in the public domain (and thus freely available for others to use at no charge) and the situation in which the next-best alternative is itself patented. We conclude that their proposal for using a “unified approach” to evaluate royalties for both FRAND-encumbered and non-FRAND-encumbered patents ignores significant differences between the two types of patents.

Patent Thickets: An Economic Appraisal

We discuss various economic aspects of different types (or taxa) of “patent thickets” identified in a companion article co-authored by one of us. We analogize patent thickets to “tangible input thickets” (in which manufacturers of complex products need a large number of different physical inputs, supplied by different firms), pointing out the similarities and differences between the patent thicket and tangible input thicket situations. We discuss certain issues applicable to various taxa of patent thickets.