Not much from a pure prosecution standpoint, but damages issues may arise when otherwise counseling clients. The point here is that lost profit damages, often the preferred measure of damages for the patentee, may be recovered even when the patentee does not actually practice the claimed invention. Profits may be still be recognized as lost due to the infringement when other products that the patentee sells compete with the infringing device.
Background / Facts: The patent at issue was directed to a monolithic capacitor design with a lower frequency portion and a higher frequency portion, for use in broadband applications. It came out during the litigation that the patentee Prosidio did not literally practice the claimed invention with its “BB” capacitors, despite initial belief by the inventors and Prosidio’s marking of the BB capacitors under the patent.
Issue(s): Whether the first prong of the Panduit test for establishing lost profits (i.e., demand for the patented product) can be shown by products that are not covered by the asserted patent.
Holding(s): Yes. “[T]he demand in question in the first Panduit factor is not limited to demand for the patented products.” Rather, demand may also arise from a product that “directly competes with the infringing device.” Although Presidio conceded that the patent does not cover its own BB capacitors, the record shows that the BB capacitors directly competed with ATC’s infringing capacitors. Thus, demand existed for Presidio’s BB capacitors and that demand was directly impacted by ATC’s infringement.