I will now instruct you on damages. If you find that [the alleged infringer] has infringed one or more valid claims of the [XXX] patent you must determine the amount of money damages to which [the patent holder] is entitled. By instructing you on damages, I do not suggest that one or the other party should prevail. These instructions are provided to guide you on the calculation of damages in the event you find infringement of a valid patent claim and thus must address the damages issue.
The amount of damages must be adequate to compensate [the patent holder] for the infringement, but it may not be less than a “reasonable royalty.” At the same time, your damages determination must not include additional sums to punish [the alleged infringer] or to set an example. You may award compensatory damages only for the loss that [the patent holder] proves was more likely than not caused by [the alleged infringer]’s infringement.
Where the parties dispute a matter concerning damages, it is [the patent holder]’s burden to prove that it is more probable than not that [the patent holder]’s version is correct. [The patent holder] must prove the amount of damages with reasonable certainty, but need not prove the amount of damages with mathematical precision. However, [the patent holder] is not entitled to damages that are remote or speculative.
As the facts warrant, the Court may also instruct the jury that “When the amount of damages cannot be ascertained with precision due to poor record keeping by [the alleged infringer], any doubts regarding the amount should be resolved against [the alleged infringer].”
Note: This instruction should be given in the event the parties agree on the date for commencement of damages.
In this case, you should assess damages beginning on [insert date]. [The patent holder] and [the alleged infringer] have agreed upon this date.
Note: This instruction should be given in the event the parties agree that the marking requirement was satisfied or does not apply.
In this case, if you find that the [patent in suit] was granted before the infringing activity began, you should calculate damages as of the date you determine that the infringement began. If you find that the [XXX] patent was granted after the infringing activity began, damages should be calculated as of [date patent issued].
Note: This instruction should be given if marking is at issue.
The amount of damages [the patent holder] can recover is limited to those acts of infringement by [the alleged infringer] that occurred after [the patent holder] gave [the alleged infringer] notice that it infringed the [XXX] patent. Notice of infringement can be actual or constructive, and I will explain in a moment what that means.
Actual notice means that [the patent holder] communicated to [the alleged infringer] a specific charge of infringement of the [XXX] patent by [the accused product or device]. This notice is effective as of the date given. [The patent holder] has the burden of establishing that it is more probable than not that [the alleged infringer] received notice of infringement on [date].
Constructive notice means that [the patent holder] complied with the marking requirement of the patent law. “Marking” means that substantially all of the products made, offered for sale, or sold under the [XXX] patent are marked to display the word ‘patent’ or the abbreviation ‘pat.’, together with the number of the patent. [The patent holder] has the burden of establishing substantial compliance with the marking requirement. To do so, [the patent holder] must show it is more probable than not that substantially all of the products it made, offered for sale, or sold under the [XXX] patent were marked, and that [the patent holder] made reasonable efforts to ensure that its licensees who made, offered for sale, or sold products under the [XXX] patent marked substantially all of their products.
Your job is to calculate damages from the date [the alleged infringer] received either actual or constructive notice, whichever was first. You should not award damages for any infringement by [the alleged infringer] occurring before it first received notice of the [XXX] patent.
Note: This instruction should be given only in the event the patent holder is seeking lost profits damages.
In this case, [the patent holder] seeks to recover lost profits resulting from [the alleged infringer]’s infringement. One way [the patent holder] may establish lost profits is by proving it is more probable than not that:
[Insert instructions on collateral products and price erosion here, if applicable (see infra).]
For those infringing sales where [the patent holder] does not seek, or does not prove, lost profits damages, the law requires that you award [the patent holder] a reasonable royalty. I will now instruct you on how to calculate reasonable royalty damages.
Collateral Products. This part of the instruction should be given only in the event the patent holder is seeking damages for lost profits on collateral products.
In this case, [the patent holder] is seeking profits from sales of [x], which it contends it would have sold along with [y]. These products are called collateral products. To recover lost profits on sales of such collateral products, [the patent holder] must prove three things:
Price Erosion. This part of the instruction should be given only in the event the patent holder is seeking damages for lost profits due to price erosion.
In this case, [the patent holder] contends that if [the alleged infringer] had not infringed the patent, [the patent holder] would have been able to charge higher prices for the patented [product] [method] [product produced by the method] and seeks as damages the profits it lost as a result of selling the patented [product] [method] [product produced by the method] at lower prices. This type of damages is referred to as price erosion.
Committee Note:
Design Patents. In a design patent case 35 U.S.C. § 289(2) provides that the patentee can recover the defendant’s profits as damages. In design patent cases an appropriate instruction should be given if requested.
If [the patent holder] has not proved its claim for lost profits, or has proved its claim for lost profits for only a portion of the infringing sales, then [the patent holder] should be awarded a reasonable royalty for all infringing sales for which it has not been awarded lost profits damages.
A royalty is a payment made to a patent holder in exchange for rights to make, use or sell the claimed invention. A reasonable royalty is the payment that would have resulted from a negotiation between a patent holder and the infringer taking place just before the time when the infringing sales first began. In considering the nature of this negotiation, the focus is on what the expectations of the patent holder and infringer would have been had they entered into an agreement at that time and acted reasonably in their negotiations. However, you must assume that both parties believed the patent was valid and infringed. In addition, you must assume that patent holder and infringer were willing to enter into an agreement; your role is to determine what that agreement would have been. The test for damages is what royalty would have resulted from the hypothetical negotiation and not simply what either party would have preferred.
In determining the royalty that would have resulted from the hypothetical negotiation you may consider real world facts including the following to the extent they are helpful to you:
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