Consecuencias de la mala manipulación de alimentos

Th e discovery on the patent monopoly issue will, of course, primarily be done by the defendant, because the plaintiff will have full access to information regarding its own market behavior and pricing considerations.

Th e initial discovery to be done by the defendant will be to determine whether, in fact, the plaintiff had a corporate policy of refusing to license its patent or simply did not have the opportunity to do so. Depositions should be taken of the appropriate management and technical personnel as to the willingness of the company to license the technology and whether the company had ever received any inquiries as the availability of such techno- logy for licensing. If the defendant suspects that inquiries or overtures may

Discovery and Using Your Experts 81 have been made, but this information is not forthcoming from the plaintiff , consideration may be given to subpoenaing likely licensees.

If the plaintiff claims that it has a “policy” of not licensing the patent-in-suit or similar patents, the defendant should examine those claims closely, since the situations in which a party has a clear written policy of not licensing pat- ents is likely to be rare. More likely, this “policy” will be, at best, amorphous and will represent the honest opinion of management as to what their policy would have been had they considered the issue or if a potential licensee would have approached them. Although the plaintiff may claim, for purposes of the litigation, that it would have been economically disadvantageous for it to license its patents to its competitors, this may not necessarily have been the case if the royalty amount were high enough or if the licensee’s fi eld of use was restricted in some manner. If the defendant knows, or even suspects, that the plaintiff may try to justify a high reasonable royalty rate using this theory, it should push very hard in discovery to obtain all of the information it can that would undercut any claim by the plaintiff that it would have refused to license its patents, given the opportunity.

Th is discovery may be more complicated than it might fi rst appear since, as in the P&G case, the plaintiff may actually have licensed some of its patents but taken the position that for other “core” patents it has a corporate policy not to license them to competitors. It is certainly worth the defendant’s while to verify that the plaintiff actually has such a policy and how longstanding it is or whether it is simply pretext. Discovery should also attempt to unearth the economic reasons for the plaintiff to adopt this policy — whether the technology at issue would be useful to other players in the marketplace and how “core” the patent-in-suit is to the plaintiff ’s ability to compete. Th e defendant, when making an argument that the patent-in-suit is not actually that central to the plaintiff ’s competitive position, must, of course, keep in mind that if damages are in fact being awarded to the plaintiff , the jury has already found that the defendant is using the patented invention and thus must think it has some competitive value. Any defendant who is thinking of making this argument must be prepared to point out substantial competitive diff erences between its business and the plaintiff ’s.

Th e next stage of the defendant’s discovery will be to determine the level of “monopoly profi ts” the plaintiff earns from having sole use of the patent-in-suit. Th e defendant should demand all available data regarding pricing and the pricing history of the plaintiff ’s products that use the patented invention, as well similar products that do not use that feature, for comparison purposes — all of which should be accumulated in discovery. Th e defendant should also accumulate such data regarding its own infringing products, including data that shows there is little sales or pricing diff erence between products that do and do not contain the patented feature since, if that is proven, the plaintiff will have a hard time arguing that “monopoly profi ts” are associated with the sole use of the patented feature.

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Determining the value of a license when a plaintiff claims a patent monopoly is another instance where an economist expert is particularly useful. If the plaintiff can make a convincing case that it would have gotten substantially more economic benefi t from refusing to license the patent-in-suit than from allowing its competitors to use it at a price, the experts need to reliably estab- lish how much that competitive benefi t would have been worth to the plain- tiff . Th e eff ect of the plaintiff ’s sole use of the patented feature on the plaintiff ’s pricing should be examined closely.

Another issue, particularly appropriate for economists, is the eff ect of the plaintiff ’s monopoly use of the patented feature on market defi nition. If the plaintiff insisted on keeping sole possession of the patented invention, other players in the market would be required to compete based on non-infringing features that they believed the consumer would prefer. New entrants to the market might well have been kept at bay because of the substantial product development and research costs of coming up with a non-infringing product. Th e plaintiff may have been able to not only keep its prices high but also to maintain its market share by refusing to license its patent — this, indeed, is the likely scenario that was presented to P&G that was able to keep its substantial market share by refusing to license its core technologies, thus forcing competitors to develop their own diaper technologies, at substantial cost.

Where, on the other hand, the plaintiff licenses its core technologies, or would have been willing to do so, the structure of the market will be quite diff erent. Instead of being forced to develop competing technologies, all the competitors would be able to use the plaintiff ’s patented technology. Companies that might have been unable or unwilling to spend the money to develop a product to enter the market may actually be able to become market participants. Competition, in this circumstance, will be based much more on price and the effi ciencies of the various market participants rather than on the attributes of the products themselves. Th e reasonable royalty value of the patent will depend on a completely diff erent set of economic factors than if the plaintiff chose to maintain its patent monopoly.

Working with experts on this very important factor is primarily a matter ensuring that your economist formulates a reliable market model taking into account the eff ect of the plaintiff ’s maintaining — or not maintaining — its patent monopoly.

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