Lords Hodge and Burrows’ joint opinion (particularly at 45 and 51) envisages a counterfactual in the sense of what would have happened absent the wrong. 

You might say Proceeds of Crime is a special case, but it is perhaps an interesting counterpoint.

Rick



 
“You say that attribution “isn’t a counterfactual question.” But it is under the SCC approach in Nova v Dow, when there is an NIA. If there is an NIA the profit to be disgorged is the difference between the actual profit and the profit that would have been made using the NIA. That is a counterfactual question. Do you think it is wrong to use the counterfactual when there is an NIA?”

 

It isn’t a counterfactual in the same sense, no. It isn’t what would have happened absent the wrong. We’re trying to ascertain is to what extent the profits made are attributable to the IP right and to what extent to other inputs. Although I think the court’s approach works here, I don’t think it will work in other cases.

 

For example

 

 

P1 holds the patent for a method of spinning washing that extracts all moisture from clothing. P2 holds the patent for a method for a machine effectively washing using half as much detergent. D holds the patent for a method of silently spinning washing. D employs all three innovations in producing his new Washo machines for sale in the Canadian market, violating P1 and P2’s patents. The machines prove remarkably successful, resulting in net profits of $100 million. Without any one of the three innovations incorporated, the machines would have been heavily loss making.

 

Counterfactually, the net profits of $100 million would not have been made but for the infringement of P1’s patent. However, that sum is not solely attributable to P1’s patent. That is determined by the degree of contribution P1’s patent made to the overall profits compared to the other inputs.

 

R