We sat down with Intellectual Property practice leader John Bone to discuss what goes into being an expert, how he approaches his work, and his overall experience.

April 11, 2018

John Bone - Intellectual Property and Damages Expert

John Bone Infographic

Education

M.B.A., University of Chicago
B.B.A., University of Michigan

Focus Industries

Technology, Media, and Telecommunications, Healthcare and Life Sciences, Diversified Industrials

Awards/Accolades

Recognized as a world-leading economic expert by Intellectual Asset Management (IAM) Magazine Patent 1000 in 2015, 2016, and 2017.

Courts Testified In

Federal, State, U.S. Bankruptcy, American Arbitration Association

Most Recent Trial

Samson Lift Technologies LLC, v. Jerr-Dan Corp and Oshkosh Corp.

Other Notable Cases

On behalf of the plaintiffs in Ericsson, Inc., et al. v. D-Link Corporation, et al., U.S. District Court for the Eastern District of Texas, Tyler Division.

Q&A With John

What types of matters have you worked on?

I have served as an expert witness or consultant in an array of matters, including intellectual property disputes, commercial contract disputes, franchisor/franchisee disputes, and forensic investigations.

In which areas of intellectual property disputes do you have particular expertise?

My areas of particular expertise include damages for patent infringement, the determination of royalty rates for fair, reasonable, and nondiscriminatory (FRAND)-encumbered Standard Essential Patents (SEPs), and damages for trade secret misappropriation, among others.

Why the focus on intellectual property?

Intellectual property is a fascinating area of law. Assessing damages in connection with intellectual property disputes is highly complex and requires a high degree of sophistication and creativity. My work has led me to become well-acquainted with relevant case law and rulings issued by various courts. My team and I leverage that knowledge to prepare sound damages opinions that can withstand challenges by opposing counsel. Case law concerning damages in patent cases, in particular, has evolved significantly over the years, and my team and I remain informed of what courts require.

What makes you particularly qualified as a damages expert in complex commercial cases?

I am well-versed in complex accounting, financial, economic, and statistical concepts that I can use to address the myriad issues that may arise in the context of a complex commercial case based on: 1) my 30 years of experience evaluating economic damages in a variety of complex commercial contexts; 2) my testimony experience, having provided sworn testimony on 80 occasions; 3) my undergraduate studies in accounting and finance at the University of Michigan and my graduate studies in finance and statistics at the University of Chicago Booth School of Business; and 4) the advanced training I have received throughout my career.

What have you learned over your career?

Having testified in over a dozen jury trials (including in IP-heavy venues, such as the Eastern District of Texas, the District of Delaware, the Eastern District of Virginia, and the Northern District of Illinois), I have developed an appreciation for the importance of presenting complex information in a simple and a compelling manner.

What was one of your more notable cases?

I testified as one of the damages experts in the Ericsson v. D-Link case, the first case involving the determination of a FRAND rate for SEPs tried to a jury. I am one of the few experts that is keenly aware of the issues involved in determining royalty rates in a FRAND context. In Ericsson, the jury adopted my royalty rate in reaching their damages award. The case has since been widely cited, and I have been retained on numerous other FRAND-related matters, allowing me to build particular experience and credibility in this area.

What resources can you bring to bear on a matter?

I have a large, diversified team of professionals (including CPAs, CFFs, CFEs, MBAs, economists, and a former patent agent) with varying degrees of experience in evaluating damages. I can involve them, as needed, to assist me in my work. My team and I are known for our ability to take on some of the most complex assignments and provide work product sophisticated enough to withstand scrutiny, yet intuitive enough to explain to juries. Our work routinely involves large and complex data sets that we develop into sophisticated databases and financial analyses that inform and support our ultimate damages opinions.

Are there particular industries where you have experience?

I have experience across a broad range of industries. Industries where I have especially deep experience include biotech, consumer products, computer software, industrial equipment, medical devices, and wireless communications. While I have specific experience in these industries, the methodologies and techniques that I have employed in evaluating damages in these industries are very often compatible with other industries, too. The largely industryagnostic nature of my methods means that they are applicable to cases involving just about any company and, also, that I can point to a consistent record on damages issues that further enhances the credibility of my work.