특허침해 손해배상액 산정기준에 대한 최신 쟁점 - 미국판례와 미국특허법개정안을 중심으로 -

다국어 초록 (Multilingual Abstract)

U.S. courts have interpreted 35 U.S.C. §284 as providing two means of calculating damages for patent infringement cases, which are known as lost profits and a reasonable royalty. To receive lost profits, a patent owner must show that "but for" the infringement, it would have made additional profits from the sale of its own products. A reasonable royalty commonly takes the hypothetical negotiation approach, which attempts to ascertain the royalty upon which the parties would have agreed had they successfully negotiated an agreement at the time of the first infringement. By designating a reasonable royalty as the floor below which damages shall not fall, the U.S. patent law guarantees at a minimum the royalty that the patentee would have received through an arms-length negotiation for the infringed patent, even if the patentee had never practiced the patented invention. Although the broad coverage of the award from lost profits can encompass the entire market value, the sale of "convoyed goods," the sale of "derivative goods," and the price erosion, etc. and thus resulting in high amount of damages award, patentees somehow prefer a reasonable royalty over lost profits and courts had never raised an issue about such preference by the plaintiffs. There are several reasons for such preference for a reasonable royalty over lost profits. Unlike lost profits, which require showing of "cause in fact," establishing that "but for" the infringement, he would have made additional profits, which then can be rebutted by the accused infringer, a reasonable royalty does not have such burden of proof. Yet in calculation of a reasonable royalty, courts have permitted incorporation of the entire market value rule, sale of "convoyed goods," discretionary increases, which had resulted in increase in the amount of award for a reasonable royalty. Also the most commonly used "hypothetical negotiation" approach requires several assumptions that inevitably raise the damages award. Such causes resulted in the regular appearances of outrageously high damages awards under the name of reasonable royalty, which are baseless and unpredictable in nature, thus fostering a litigation environment that allows the overly aggressive and jackpot minds of patent trolls to thrive. In response to the overcompensation problem in the reasonable royalty calculation, courts and Congress have been working together to fix the problem. Meanwhile, as many Korean corporations are currently defending in many patent infringement lawsuits in the U.S., many of which have been brought by patent trolls, this paper hopes to provide these corporations with up-to date information on patent litigation to better assess the risks that are attached to their pending or future lawsuits.

목차 (Table of Contents)

• Ⅰ. 서론
• Ⅱ. 특허침해 소송 및 손해배상액과 관련된 미국의 최근 동향 소개
• 1. 손해배상액 산정 규정에 대한 미국 특허법 개정안
• 2. 미국의 특허침해 소송 동향
• 3. 손해배상액과 관련된 최근 판례(Lucent v. Gateway)
• Ⅲ. 특허침해 손해배상에 대한 미국의 현행법
• Ⅳ. 손해배상액 산정기준에 대한 이론적 논의와 현재 산정기준의 문제점
• 1. 손해배상의 이론적 논의
• 2. 기존 손해배상 산정기준의 문제점
• Ⅴ. 특허침해에 대한 구제방법과 적용
• 1. Permanent Injunction(종국적 금지처분)
• 2. Lost Profits(일실이익)
• 3. Reasonable Royalty(합리적인 실시료)
• Ⅵ. 결론
• 참고문헌

참고문헌 (Reference)

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• 8 "eBay v. MercExchange, L.L.C., 126 S.Ct. 1837"
• 9 Richard F.Cauley, "Winning the Patent Damages Case" Oxford 2009
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• 18 "Lucent Technologies v. Gateway, Inc., and Microsoft Corp., 509 F.Supp.2d 912 (S.D. Cal. 2007)"
• 19 "KSR International Co. v. Teleflex Inc, et.al, 127 S.Ct. 1727"
• 20 Roger D. Blair, "Intellectual Property: Economic and Legal Dimensions of Rights and Remedies" Cambridge 2005
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• 22 "Georgia-Pacific Corp. v. United States Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y.1970)"
• 23 Mark A. Lemley, "Distinguishing Lost Profits from Reasonable Royalties" 51 : 2009
• 24 Janice M. Mueller, "An Introduction to Patent Law, 2nd ed" Aspen Publishers 2006
• 25 PriceWaterhouseCoopers, "A closer look"