Intellectual Property Infringement Economic Damages Expert in Hawaii

By Christopher Skerritt, M.Ed., MBA, Chief of Economic Services · Published

KW Economics prepares economic damages analyses for intellectual property infringement cases involving Hawaii: the measure each patent, trademark, copyright, and trade secret claim carries, the sales, cost, and license records that drive it, and a report built for the federal courts, which alone hear patent and copyright claims, and for the Hawaii courts that hear claims under Hawaii law. Plaintiff and defense.

An intellectual property infringement claim measures what the unauthorized use of a patent, trademark, copyright, or trade secret cost the owner or gained the user, under the measure each statute provides, apportioned to the protected right and built from both sides' sales, cost, and license records. Read the full intellectual property infringement analysis guide.

Hawaii courts and expert standards

In the federal district courts, which hear patent and copyright infringement claims between private parties, damages testimony is tested under the federal rules of evidence: whether the expert is qualified, whether the testimony rests on sufficient facts or data, and whether reliable methods were reliably applied to the facts of the case, with the proponent showing each is more likely than not. Claims heard in Hawaii's own courts are tested under the standard those courts apply. Hawaii courts ask whether an expert opinion is relevant and reliable and whether it will help the jury, treating the reliability factors the federal courts use as helpful rather than required and not insisting on general acceptance; the witness is qualified by training and experience. An intellectual property damages report meets each of these inquiries by tying every royalty input, apportionment step, and sales figure to the record or to another expert's stated opinion.

Where these cases are heard

Highest court: Hawaii Supreme Court. Federal venues: D. Haw. Court system: courts.state.hi.us.

Damages framework

Patent, copyright, and trademark damages are set by federal statute: a reasonable royalty at least, and lost profits where they are proven, for a patent, with recovery limited to six years before suit and, for unmarked products, to the period after notice; the defendant's profits, the owner's actual damages, and the costs of the action for a trademark; and actual damages and the infringer's profits for a copyright, or statutory damages the owner elects instead where the work was registered in time, before the infringement began or within three months after first publication. Those measures do not change with the state, though the regional circuit's decisions govern how the copyright and trademark measures are applied. A trade secret claim can be brought under the federal statute, and most states, the District of Columbia, Puerto Rico, and the U.S. Virgin Islands have also enacted a version of the Uniform Trade Secrets Act; Hawaii's own law can govern the contract and license claims, whether they are brought with an infringement claim or on their own, and counsel confirms which trade secret law applies and the measures it allows.

How the analysis is built

The same four steps apply to an intellectual property infringement case involving Hawaii; the statute behind each claim, set out above, decides which measures enter the total.

  1. Identify the rights asserted, the accused products, and the recoverable period, applying the limitation, notice, and protection periods each claim carries.
  2. Build the royalty base and the infringing sales from the accused party's sales, pricing, and cost records, and apportion them to the patented feature, the protected work or mark, or the trade secret.
  3. Measure each available remedy: the reasonable royalty from comparable licenses, the profit the right made possible, and the user's alternatives; lost profits from the market and the owner's capacity; and the infringer's profits with its costs tested.
  4. Remove any overlap between the measures, add prejudgment interest on the basis the court adopts, and show how the result moves under the opposing base, licenses, and alternatives.

Attorney guides for intellectual property infringement cases

Services for intellectual property infringement cases in Hawaii

Other case types in Hawaii

Frequently asked: intellectual property infringement cases in Hawaii

Which courts hear an intellectual property infringement case involving Hawaii?

Patent and copyright claims arise under federal law that only the federal courts may hear: a case filed in Hawaii is heard in the United States District Court for the District of Hawaii, a case involving a business based in Hawaii may be filed in another district where venue lies, and a claim against the United States goes to the Court of Federal Claims; trademark and trade secret claims can be filed in federal court or in Hawaii's own courts. An appeal in a case with a claim or compulsory counterclaim under the patent laws goes to the United States Court of Appeals for the Federal Circuit, and an appeal in any other case from the district court to the United States Court of Appeals for the Ninth Circuit. Claims under Hawaii law, such as trade secret misappropriation, unfair competition, and disputes over royalties owed under a license, are usually heard with the infringement claim in federal court when they are joined with a patent or copyright claim, and can be heard there on their own where the parties' diverse citizenship brings them within federal jurisdiction; otherwise they are heard in the Circuit Court (General jurisdiction; larger civil cases, felonies, family court division), with final appeals to the Hawaii Supreme Court.

Which damages rules apply to an intellectual property claim involving Hawaii?

Patent, copyright, and trademark damages are set by federal statute: a reasonable royalty at least, and lost profits where they are proven, for a patent, with recovery limited to six years before suit and, for unmarked products, to the period after notice; the defendant's profits, the owner's actual damages, and the costs of the action for a trademark; and actual damages and the infringer's profits for a copyright, or statutory damages the owner elects instead where the work was registered in time, before the infringement began or within three months after first publication. Those measures do not change with the state, though the regional circuit's decisions govern how the copyright and trademark measures are applied. A trade secret claim can be brought under the federal statute, and most states, the District of Columbia, Puerto Rico, and the U.S. Virgin Islands have also enacted a version of the Uniform Trade Secrets Act; Hawaii's own law can govern the contract and license claims, whether they are brought with an infringement claim or on their own, and counsel confirms which trade secret law applies and the measures it allows. In the federal district courts, which hear patent and copyright infringement claims between private parties, damages testimony is tested under the federal rules of evidence: whether the expert is qualified, whether the testimony rests on sufficient facts or data, and whether reliable methods were reliably applied to the facts of the case, with the proponent showing each is more likely than not. Claims heard in Hawaii's own courts are tested under the standard those courts apply. Hawaii courts ask whether an expert opinion is relevant and reliable and whether it will help the jury, treating the reliability factors the federal courts use as helpful rather than required and not insisting on general acceptance; the witness is qualified by training and experience. An intellectual property damages report meets each of these inquiries by tying every royalty input, apportionment step, and sales figure to the record or to another expert's stated opinion.

More questions about intellectual property infringement analysis

References

Request a consultation on intellectual property infringement cases in Hawaii or call (201) 343-0700. Plaintiff and defense counsel.