News | January 24, 2024
Comprehensive economic analysis performed by the Secretariat team demonstrates that a permanent injunction is warranted.
Secretariat’s experts have unparalleled depth of experience providing analysis, opinions, and testimony in high-stakes patent litigation, proceedings at the International Trade Commission, and strategic advisory engagements. Our team’s combined experience across a spectrum of issues and industries provides a quality of work that is undeniable.
Our comprehensive range of services includes in-depth analyses of lost profits, reasonable royalties, injunctive relief, and commercial success in the context of litigation and disputes. We are often called upon to evaluate fair, reasonable, and non-discriminatory (FRAND) royalties for standard-essential patents (SEPs), especially in the areas of mobile devices, cellular communications, audio codecs, video codecs, Wi-Fi standards, and broadcast television. In addition, we have performed economic and market analyses to evaluate patent hold-up from licensors as well as patent hold-out from licensees.
From billion-dollar jury verdicts to successful testimony on injunctive relief, our professionals have provided expert testimony in many cases that each had more than $1 billion in controversy.
Secretariat’s experts often provide analysis, opinions, and testimony for proceedings at the International Trade Commission. Our work involves evaluation of domestic industry, public interest, remedies, and bond issues.
No two patent disputes are the same and as a result our analyses are not cookie-cutter; instead, we tailor our approaches to the specific issues in each matter, letting relevant facts and robust analytical principles guide our work. Our experts routinely provide analysis, opinions, and testimony in patent litigation and regulatory proceedings for both plaintiffs/claimants and defendants/respondents across a variety of industries, including pharmaceuticals, biotechnology, medical devices, mobile devices, semiconductors, software, and sporting equipment.
Secretariat’s expertise in patents extends beyond litigation and regulatory proceedings. Our experts bring the same sophisticated and rigorous analysis to advising clients on licensing negotiations, valuation, patent monetization strategies, product forecasting, and launch analyses. Indeed, our analytical expertise in econometrics and predictive modeling provides our clients with an edge over the competition.
Secretariat’s experts worked on behalf of VLSI Technology in patent litigation involving microprocessor patents. The technologies at issue provide power savings and performance improvements in microprocessors. We conducted economic analysis to determine reasonable royalties, including an assessment of the economic contribution of the patented technology, development of an econometric regression model, and evaluation of all fifteen of the Georgia-Pacific factors. Based upon our work and testimony at two separate jury trials, VLSI was awarded damages of $2.175 billion at the first trial and $948 million at the second trial.
Secretariat’s experts worked on behalf of Juno Therapeutics and Sloan Kettering in patent litigation involving cancer immunotherapy. The technology at issue involves genetically engineering T-cells to fight cancer, which is known as CAR-T therapy. We conducted economic analysis to determine reasonable royalties, including an assessment of the economic contribution of the patented technology, availability of potential non-infringing alternatives, stage of development of licensed technology, competitive relationship between the parties, financial harms and benefits from use of the patented technology, and market analysis of related license agreements. Based upon our work and testimony, the jury awarded damages of $752 million, which was the exact number testified to by our expert.
Secretariat’s experts worked on behalf of Edwards Lifesciences to evaluate a significant, temporary restraining order (TRO) and preliminary injunction filed against Edwards amid a global patent dispute over medical devices used to treat mitral regurgitation. We conducted economic analysis to evaluate the claims that Edwards’ competitor would suffer irreparable harm and to determine whether the public interest and balance of equities favored Edwards. To assess the claim of irreparable harm, our experts determined whether damages could be quantified and whether an injunction would address potential harms from continuing sales, along with the economic relationship between the alleged patent infringement and the claimed harms. Based upon the work and testimony of Secretariat’s experts and the presentation by Edwards’s attorneys, the Delaware district court denied the motions for a TRO and preliminary injunction.
Lost profits are often described as the difference between a patentholder’s actual profits and the profits that would have been earned but for patent infringment. Accordingly, infringement that impacts prices, sales quantities, or costs of the patentholder may result in lost profits.
Upon a finding of patent infringement, a court shall award damages adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer. A reasonable royalty can be determined through an analysis of what a willing licensor and a willing licensee would have bargained for during an arm’s-length, hypothetical negotiation occurring on the eve of infringement. Several approaches, along with the Georgia-Pacific factors, can provide guidance.
The market approach often utilizes comparable license agreements or similar transactions to inform upon a reasonable royalty. Economic and technological differences between the comparable agreement and the hypothetical negotiation can often be quantified by way of economic, financial, or statistical methods. Such differences can include products, technologies, suppliers, customers, time periods, and competitive environments.
The income approach considers financial benefits derived by the infringer as a result of using the patented technology. These benefits can include higher prices, increased sales quantities, or reduced costs.
The cost approach can evaluate the costs of implementing a viable non-infringing alternative that provides that is reasonably available and provides similar benefits to the patented technology.
Irreparable harm, public interest, and balance of the equities are factors considered by courts in evaluating whether injunctive relief is appropriate in the context of patent infringement. The issue of irreparable harm examines whether the claimant’s harms are quantifiable and evaluates the causal nexus between the alleged harm and patent infringement. The public interest is evaluated by reviewing benefits and losses realized by the public, including the availability of substitutes, the impact of an injunction on prices, and the importance of patent rights in innovation. The balance of equities weighs the harms faced by the accused party if an injunction is granted versus the harms faced by the claimant if not granted.
To obtain available relief from the International Trade Commission (ITC) on a patent infringement claim, a complainant must prove an economic domestic industry exists. Referred to as the economic prong of the domestic industry requirement, the analysis requires showing certain domestic investments have been made or are in the process of being made that are reasonably attributable to articles protected by the asserted patent(s). The ITC focuses on three types of domestic investments:
A complainant may demonstrate the existence of an economic domestic industry by satisfying any one of the criteria above. When investments and costs are not tracked on a product-by-product basis, a complainant may perform allocations and estimates to attribute quantifiable domestic investments to the products claimed to practice the asserted technology using available financial data that may provide a reasonable basis for doing so.
Additionally, the ITC has not historically used a bright-line rule or rigid formula in the determination of whether quantified domestic investments are significant or substantial. While there may be a reliance on qualitative indicators of the significance or substantiality of investments, complainants may also quantitatively demonstrate why its investments are significant or substantial.
The default remedy for a complainant succeeding on patent infringement claims at the International Trade Commission (ITC) is an exclusion order, which precludes the infringing products from being imported into the United States. However, the ITC may decide not to issue an exclusion order after considering the impact such an order would have on the following public interest factors:
An analysis of the public interest factors often considers whether reasonable substitutes to the infringing products exist (e.g., such as those provided by a complainant), and whether those products can adequately meet the demand in the U.S. marketplace. It may also consider the extent to which the infringing products are used in any medical or health-related contexts, such that their removal could negatively impact the well-being of U.S. consumers of the products.
Regarding the impact to competitive conditions, the analysis often considers how the removal of the infringing product may shift market power among suppliers of substitute products, and whether such shifts would give rise to a dominant supplier within the marketplace. Such an analysis may be accompanied by a definition of the relevant marketplace to be considered to determine the products that are reasonably considered substitutable with the infringing products from a consumer perspective.
The analysis can also evaluate how manufacturing conditions may change domestically from an exclusion order. Such an evaluation may consider the extent to which substitute products are manufactured domestically, or if certain critical supplies or components used in the infringing products are manufactured domestically.
Commercial success is a secondary consideration of nonobviousness of an invention that reflects that the law presupposes that an idea for a claimed invention would successfully have been brought to market sooner — in response to market forces — had the idea been obvious to persons skilled in the art. A commercial success evaluation also considers nexus, or the economic link, between the patented technology and any commercial success.
In the absence of formal regulation, lawyers and eDiscovery professionals must ensure they are prepared and develop effective strategies for identifying, validating, and integrating AI-generated content into the legal review and eDiscovery process.
The highly distinguished team led by Managing Directors Bhavin Shah, Stephen Millington, and May Mhanna bring an impressive track record helping leading law firms, corporates, and institutional clients address complex challenges, from handling intricate financial investigations, implementing robust crisis management strategies, navigating and resolving regulatory inquiries, litigation support and more.
Courts and regulatory authorities around the world rely on our economic analysis to formulate and apply competition law.
From airwave spectrum rights to mineral rights and more, markets today depend on auctions, and potential bidders in these high-stakes auctions rely on sophisticated analysis and expert guidance to be successful.
The ability to gather and distill the volumes of data often underlying a class action – and present a clear and meaningful analysis to courts, regulators, and others – is fundamental to Secretariat’s expertise.
When projects are delayed, owners, contractors, designers, insurers, governmental agencies, and law firms across the globe trust Secretariat’s leading experts to provide their independent and rigorous analysis to help avoid, pursue, or defend costly disputes. Secretariat stands apart in how we articulate clear and concise opinions for even the most complex analyses.
Assessing the cost impacts and complex challenges of major international construction and engineering projects requires unique experience and knowledge. No team excels in this arena like Secretariat.
With proven skills in complex cases and exceptional strength in analytics, Secretariat experts provided extensive guidance on domestic and international matters involving commercial damages and disputes.
Secretariat’s experts and advisors address complex data challenges involved in disputes, investigations, and litigation.
Our industry-leading expertise in digital forensics and eDiscovery delivers thorough analysis and seamless solutions for data-intensive legal and investigative needs.
Secretariat’s highly experienced forensic accounting experts uncover financial misconduct and help resolve disputes with the investigative techniques necessary to analyze complex financial data, trace assets, and provide comprehensive reports and expert testimony, ensuring swift action with effective communication.
Secretariat’s experts have an unparalleled depth of experience providing analysis, opinions, and testimony in high-stakes patent litigation, proceedings at the International Trade Commission, and strategic advisory engagements. Our expertise in patents extends beyond litigation and disputes, to advising clients on licensing negotiations, valuation, patent monetization strategies, product forecasting, and launch analyses.
Continuously ranked at the top of Global Arbitration Review’s Expert Witness Firms’ Power Index, Secretariat’s experts have a long history of providing the kind of insightful, objective analysis and highly persuasive testimony trusted in some of the highest value arbitrations across the globe.
Suspicions or allegations of corporate misdeeds can cause tremendous harm and disruption to any organization. At Secretariat, our decades of experience drilling down to the facts can provide the confidence to know risks can be managed and challenges addressed and overcome.
Parties in labor and employment disputes – in cases brought by individuals or as class actions – depend on independent and verifiable economic analyses to support their positions. The experts at Secretariat have decades of experience analyzing claims, valuing damages, and turning large volumes of data into litigation support that clients and courts can readily understand and trust.
M&A transactions are among the most complex business activities from every perspective: financial, competitive, regulatory, and beyond. The bigger the parties, the more exponentially complex the transactions. From providing objective valuations and economic clarity to helping clients navigate regulatory investigations, Secretariat has a long history of advising both buyers and sellers in many industries in the U.S. and across the globe in some of the largest and most complex M&A transactions.
From telecommunications to energy issues, Secretariat’s economists and experts regularly advise companies and individuals navigating the world of complex regulations, enforcement, and rule-making.
At Secretariat, our adept Securities and Finance professionals craft pragmatic strategies and rigorous financial and economic analyses tailored for law firms, financial institutions, corporations, and government agencies enmeshed in consequential legal battles.