美國專利侵害實際損害額之計算 ─ 以專利權人超出專利保護範圍之產品為中心

Abstract

本文探討美國專利損害賠償制度自分配法則、整體市場價值法則以來，針對專利權人請求超出專利保護範圍以外產品時之相關案例，指出過度擴張專利損害賠償範圍可能致生過度賠償及違背美國專利法立法目的等疑慮，再自近期美國案例法上所作限縮整體市場價值法則適用範圍之相關探討，觀察該限縮得請求損害賠償範圍之趨勢，最後就美國專利法修正案有關整體市場價值法則之正反意見論述及對訴訟策略之影響層面作一綜合評析。

Heated scholarly debate on the scope of patent damages calculation has long been focused on the application of the Entire Market Value Rule (EMVR) as well as the concept of apportionment. As Section 35 U.S.C. 284 provides that the compensation shall be adequate for the infringement, the EMVR shall never be regarded as a tool for over-expansion. However, the notable Rite-Hite case expanded the scope of the damages to include any profits that the patentee may have enjoyed due to the infringement. The starting point of this Research is the over-expansion of the EMVR in Rite-Hite. This research discusses the relevant cases when the patentees seek for patent damages awards based upon unpatented features of a product with the development of apportionment or the EMVR in the U.S. patent damages system, pointing out that the concerns of over-compensation and violation of the purposes of the U.S. patent laws caused by over-expansion of the scope of patent damages. The following part explores the trend of patent damages calculation based on the analysis requiring a more stringent application of the EMVR in recent U.S. case laws. The last part of this research provides an overall discussion about the positive and negative comments on the EMVR under the U.S. patent reform legislation and the impacts on the patent litigation strategy.