Joint Infringement After Golden Hour: A Wake-Up Call

The Federal Circuit decision earlier this month in Golden Hour v. emsCharts is a wake-up call to patent owners and attorneys regarding the issue of joint infringement. In earlier decisions in 2007 and 2008, the Federal Circuit held that two or more entities can avoid liability for infringement so long as (1) each entity is responsible for practicing only a subset of the claimed process and (2) no single entity exercises “control or direction” over the entire process. But even so, this most recent decision in favor of the defendants caught some experts by surprise. For one thing, the appellate court extended its doctrine to a system claim, not just a method claim as in the earlier cases. And in this case, the joint actions of the two defendants included a strategic partnership, a joint distribution agreement, and packaging together for sale the two products that together came under Golden Hour's patent.

This webinar will review the developing law in this issue, and will explore the questions that may arise in future litigation. For instance, what will it take to show that one entity is “the mastermind” in joint infringement? The panel will also explore the options available to holders of already-issued patents, and give tips for drafting patent claims that involve just one entity, recognizing that divided patent claims may leave the patentee with no remedy at all. Our panel includes the attorney who successfully represented emsCharts at the district court and the Federal Circuit, another leading patent litigator, and an in-house counsel with experience in joint infringement issues.

Speakers:

• Morgan Chu, Irell & Manella LLP
• Joseph C. Kirincich, Pitney Bowes Inc.
• Eric H. Weisblatt, Wiley Rein LLP

Thursday, September 16, 2:00pm ET 

Patent Reissues: Recent Rulings and Open Questions

A number of important appellate rulings over the past several years have raised the risks for patent holders that certain claims in existing patents could be found invalid in litigation. For instance, the Bilski decision motivates patent owners to make sure their invention cannot be characterized as an “abstract idea.” Patent holders in biotech may want to protect their patents against Myriad-type attacks by tying claims on DNA sequences to other technology. And the continuing impact of KSR makes some patent owners want to narrow their patents to make them less vulnerable to charges of obviousness.

This webinar will be a primer and review of the reissue process at the USPTO by which patent owners can correct one or more defects in a patent. Topics include what kind of defect can be corrected by reissue and for how long after the original patent grant; how to best broaden or narrow claims; and the risks inherent in the reissue process. The panelists will also consider the December 2009 precedential opinion by the Board of Patent Appeals and Interferences in Tanaka that held that a reissue cannot be used to add a dependent claim “simply as a hedge against possible invalidity of the original claims.”

Our panel includes a USPTO expert on the reissue process, and both an in-house and law firm attorney who are experienced in its intricacies.

Speakers:

• Kenneth Schor, US Patent and Trademark Office
• Steven Henry, Wolf Greenfield  
• David Arthur, Xerox Corp.

Apportioning Risk in Sales and Licenses: Warranties, Limitations of Liability and Indemnification

Speakers:

• Terry Garnett, Paul, Hastings, Janofsky & Walker LLP
• Allen Baum, Brinks Hofer Gilson & Lione
• Krish Gupta, EMC Corp.

False Marking Update

Speakers:

• Prof. Elizabeth Winston, The Catholic University of America
• Jason White, Howrey LLP
• Buckmaster De Wolf, General Electric Co.

Working with IP Law Firms in China – The Legal Profession Landscape

Speakers:

• Tong Wu, Merchant & Gould
• Kevin Luo, Microsoft Corp.
• David Shen, Eli Lilly and Co.