Springboard Profits/Damages in Canadian Intellectual Property Litigation

A few weeks ago, I co-presented at the Intellectual Property Institute of Canada’s annual conference in Vancouver on the topic of financial remedies in patent litigation. My portion of the talk focused on springboard profits as part of the accounting of profits remedy. In this post, I’ll share some of my thoughts from the presentation, as well as some other ideas that were suggested to me by my co-panelists and audience members.

The Concept

The concept behind springboard profits is that, by virtue of having infringed a patent, the infringer has achieved a financial advantage that continues beyond the expiry of the patent. This can occur for several reasons:

• A valid patent prohibits not only the sale, but also the manufacture and offering for sale of an invention covered by the patent. This means that had the infringer not infringed during the life of the patent, it would have taken some time to develop its product, to build up inventory, to market the product and build distribution channels. In short, it would have taken months, if not years, to build up their sales to a steady plateau. By infringing, the infringer is able to “hit the ground running” following the expiry of the patent.
• If the patented product is a durable good, then the benefits to the infringer in selling that good may include not only the initial sale, but also the sale of replacement parts, maintenance services, or other associated revenue streams. While the initial sale of the good may have taken place during the life of the patent, there will be additional benefits accruing to the infringer well beyond the life of the patent.
• In some instances, there may be an even longer-lasting benefit to the infringer. The existence of multiple firms already selling the patented product by the time of the patent’s expiry may dissuade additional firms from joining the market following the patent’s expiry, firms who may otherwise have entered the market if there had been only a single incumbent with whom to compete. In situations like this, the infringer’s benefit will continue into the indefinite future.

Are such post expiry springboard profits recoverable in an accounting of profits? In Dow Chemical Company v. Nova Chemicals Corporation, 2017 FC 350 (CanLII), Justice Fothergill found that they were. He was persuaded by Dow’s argument that if the incremental profits earned by the infringer following the expiry of the patent are not also disgorged, then the infringer will be left in a better financial position than if it had not infringed, a result that is antithetical to the very concept of the accounting of profits remedy.

Nova’s Argument

While they were ultimately rejected, the arguments raised by Nova also deserve some comment. Nova advanced several arguments. Conceptually, the most interesting arguments was the following:

• An infringer who disgorges its profits from infringement is implicitly acting as the agent of the patentee, and such payments implicitly serve to effectively condone the infringing activities themselves.
• The difficulty with this argument is that the profits remedy is not necessarily equal to the amount that, in the real world, the plaintiff would have agreed to in exchange for use of its patented technology. In many cases (such as the Dow case) the plaintiff would clearly never have agreed to license the technology under those terms, as its Minimum Willingness to Accept would be based on the damages it would suffer by reason of losing its monopoly over the invention in question.

The same argument would hold if the remedy awarded was lost profits (i.e. damages). The damages award compensates the patentee for its losses during the patent period only; any losses beyond that period would also need to be considered insofar as they are causally connected to the infringement.

Could Nova’s argument work in a damages context?

Is there a situation in which Nova’s argument would have carried more weight? Perhaps.

Suppose a plaintiff elects a damages remedy, which it measures based on a reasonable royalty since it is unable to prove it suffered any loss of sales as a result of the infringement.  In that scenario, the plaintiff’s MWTA is less than the defendant’s MWTP; that is, the benefit to the defendant from licensing is greater than the value to the plaintiff of its monopoly. This arises most commonly where the plaintiff is a smaller firm, while the defendant is much larger and able to scale to market.

In that case, a hypothetical royalty rate (and a fortiori an empirically based royalty rate, measured based on comparable transactions) should incorporate the fact that the defendant will thereby gain a springboard advantage. If so, then there should be no award of springboard damages.

This conclusion is implicit in the words of Justice Fothergill at paragraph 123 of the Dow decision:

[123]      Dow is entitled to awards under both ss 55(1) and 55(2) of the Patent Act. Even if the royalty rates calculated by Dr. Heeb and Dr. Leonard can be said to include the period following the expiration of the ’705 Patent, the royalty compensates Dow only for Nova’s infringement during the period December 9, 2004 to August 21, 2006. The accounting of profits extends over a much longer period.

Happy Belated Bobby Bonilla Day! Some Valuation-Related Thoughts on MLB Contracts

With the World Series upon us, I thought I’d do a post or two on valuation and investment principles involved in baseball player contracts. In this post I'll talk about fixed income valuation and interest rates, through the vehicle of the infamous Bobby Bonilla contract.

Bobby Bonilla was a fine player for the Pittsburgh Pirates in the early 1990s, and he and fellow "Killer B", Barry Bonds (who was a lot skinnier back then) went to three straight National League Divisional Series, losing all three.

Bonilla eventually arrived with the New York Mets (after stops in Baltimore, Florida, and the Mets themselves (in a previous go-round)), and by the year 2000 his skills were in severe decline. The Mets owed Bonilla $5.9M on the last year of his contract. Instead of paying Bonilla the $5.9M that year, however, the Mets and Bonilla agreed to a series of payments whereby the Mets would pay Bonilla $1.193M per year every year for a 25-year period, beginning on July 1, 2011 and ending in the year 2035, when Bonilla is 72 years old. The nominal value of the total payments will be just shy of $30M.

July 1 is now sadly observed by Mets fans every year as “Bobby Bonilla Day”. The sadness is due to three main reasons:

• It seems ridiculous that the team is still paying a former player, now in his early 50s, over $1M a year.
• Bonilla was somewhat of a disappointment even while he played for the Mets. While he made a couple of All Star teams in his first stint with the team, by 1999 he was producing a negative WAR value.
• It is commonly known that then-Mets owner Fred Wilpon was a major investor of disgraced Ponzi-schemer Bernie Madoff, and it is believed that the outsized “returns” Madoff was generating led to what was, objectively speaking, a foolish financial decision.

I’m not here to dispute the first two points, but I do want to talk a little about the financial principles of the third point. 
Discounting and Interest Rates in the Year 2000

It is often pointed out that the interest rate, or discount rate, on the Bonilla deal is 8%.  This is true, as I show in the table below. Thus, from the Mets’ perspective if they could invest the $5.9M at a rate of 8% per year for the next 35 years, they would earn exactly enough money to pay off the annual payments to Bonilla, leaving them with no balance owing at the end of the 35 years. 

Is it crazy for the Mets to have made that assumption? It would appear that the answer may be “no”. While it may be hard to remember based on the current low-yield environment, the US T-bond rate back in 2000 was in the range of 6.5% to 7% in the first part of 2000, while the 30-year “High Quality Market Corporate Bond Rate” at the time was around 8%. While that is a pre-tax rate, it nonetheless appears true that the Mets could have taken their money and invested it in a fairly safe investment and been none the worse for wear. So the deferral seems to make some sense from the Mets' point of view.

Another way to look at the deal is from Bonilla’s perspective. Effectively, Bonilla was agreeing to lend the Mets $5.9M for a long period of time, eventually getting paid back at an annual interest rate of 8%. Given the overall steadiness of Major League Baseball – no teams have folded for over 100 years - this would be similar to lending money to a high quality corporation. The one difference is that for Bonilla, there has been a significant tax advantage to a) spreading more of his earnings across lower tax brackets, and b) being taxed now as a resident of Florida (which has no state taxes) rather than New York (which does). So at the time, this was a win-win deal.

 

Interest Rates in 2018

There is a belief that bonds (lower case, the financial instruments, not the allegedly HGH-infused home run king) are a safe investment. After all, unlike the stock market they provide a fixed, knowable series of payments over time.

This is, in many ways, a mistake. While it is true that the payments on a bond are prescribed, the value of those payments will vary based on changes in rates of return on other investments. Bonds will fluctuate very significantly in value based on changes in nominal interest rates. Thus, if a ten-year bond with face value of $1,000 is issued with a coupon of 5% and the market interest rate at the time is 5%, the bond will sell for $1,000. If interest rates drop the next day to 3%, the same bond (paying a 5% coupon) will become much more valuable, and investors will be willing to pay almost $1,200 for the same bond.

If you think of Bobby Bonilla's contract as a bond with a coupon of 8%, it is clear that the cost of honouring that bond has gone up, with long-term interest rates in the 4% range now. Because the Mets did not (it would appear) secure the future Bonilla payments by matching them to a long-term fixed income investment back in 2000, the value of their liability has not been declining by nearly as much as it should have over time. The present value of the Mets' remaining payments to Bonilla is currently several million dollars higher than it should have been had interest rates remained high.

Conclusion

Trying to predict interest rates is a bit of a mug's game., and in any event the financial landscape in Major League Baseball has shifted so dramatically in the past 18 years that the money remaining on the Bonilla deal is really small change at this point, remarkable more for its strangeness and symbolism than its monetary significance. 

Bobby Bonilla has done well with his contract (assuming he did not sell or assign it!), but if interest rates had risen he would have been singing a different tune. The real advantage to this sort of a long term deal exemplified by Bonilla's is a) the tax savings, and b) the enforced savings and the knowledge that he will have over $1M coming to him for the next 17 years.