IP Chat Channel – Licensing
Webinars are listed in chronological order with the most recent at the top of the page.
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Open Source Due Diligence in M&AWebinar Date: 08/04/2016
Open source software (OSS) can shorten product development cycles and is likely something you use every day. OSS, however, is not free, and compliance with open source software may be in terms of a patent or copyright license instead of a monetary payment. In fact, OSS costs in an acquisition or merger can impact the valuation of the target, delay, or even scuttle the deal.
This webinar will focus on exploring OSS issues during due diligence. This includes examining how OSS was used by the target of the acquisition and whether such use aligns with the acquirer’s business model. The discussion will include:
- Exploring how an acquisition target uses the open source;
- Determining possible impacts on a target’s intellectual property both in terms of copyright and patents;
- Determining possible impacts on the acquirer’s intellectual property; and
- Possible ways to mitigate open source use of the target when such use does not align with the acquirer’s business model.
The moderator and panelists are experts in OSS at major technology companies.
Moderator: Joseph D’Angelo, EMC Corporation
Victor Huang, eBay
Hanna Kim, Microsoft Corp.
Karla Padilla, Qualcomm, Inc.
After Brexit: European Patents and Design RightsWebinar Date: 07/14/2016
Last month’s vote by the United Kingdom to leave the European Union raises many uncertainties for owners of intellectual property in Europe. These two webinars will help owners of patents and trademarks to understand these uncertainties, to recognize their options, and to take needed steps. Patent owners, for instance, need to be clear on the independence of the European Patent Office from the EU and will want to understand the dynamics that will determine whether the long-gestating United Patent Court ever comes to life. Trademark owners doing business in the U.K. will want to start thinking about how to protect assets after European Community Designs (ECDs) and European Union Trademarks (EUTMs) no longer are valid there. Each of our panels includes an in-house attorney at a U.S. multinational and two law firm attorneys, one based in Munich and one in London.
Paul Coletti, Johnson & Johnson
John Conroy, Fish & Richardson
Rowan Freeland, Simmons & Simmons
European Trademarks, Designs and IP TransactionsWebinar Date: 07/13/2016
Last month’s vote by the United Kingdom to leave the European Union raises many uncertainties for owners of intellectual property in Europe. This webinar will help owners of trademarks to understand these uncertainties, to recognize their options, and to take needed steps. Trademark owners doing business in the U.K. will want to start thinking about how to protect assets after European Community Designs (ECDs) and European Union Trademarks (EUTMs) no longer are valid there. They also will want to review IP agreements for clauses defining territorial scope and draft future agreements with an eye to new possibilities, such as other countries leaving the EU. The panel includes an in-house attorney at a U.S. multinational and two law firm attorneys, one based in Munich and one in London.
Jonathan Day, Carpmaels & Ransford
Jake Feldman, Johnson & Johnson
Jan Zecher, Fish & Richardson
Readying a Patent Portfolio for SaleWebinar Date: 06/22/2016
Sale prices for patents are way down from a few years ago, but that hasn’t stopped sellers from putting patents on the market. Companies that are discouraged by their own licensing or litigation prospects are trying to find buyers who want those patents for reasons of their own. This webinar will focus on the legal and strategic considerations in readying a patent portfolio for sale. The patent market is much more liquid than it was ten years ago, yet experts say that many patent sellers still come to the table unprepared to answer important questions. Our panel features an in-house counsel at an active buyer of patents, and lawyers at two top IP strategy firms. They will discuss important aspects of readying a patent portfolio for sale, including:
- Chain of title issues;
- Patent and invention assignment language;
- Inventorship; and
- Terminal disclaimers.
They also will discuss strategy issues about how to best highlight the value of a portfolio, the inclusion of non-U.S. patents, the optimal size of a portfolio, and the use of brokers.
Themis Chryssostomides, Qualcomm, Inc.
Kent Richardson, Richardson Oliver Law Group
James Trueman, Ocean Tomo
Internet of Things: Standards, Licensing, or Litigation?Webinar Date: 06/16/2016
Sale prices for patents are way down from a few years ago, but that hasn’t stopped sellers from putting patents on the market. Companies that are discouraged by their own licensing or litigation prospects are trying to find buyers who want those patents for reasons of their own. This webinar will focus on the legal and strategic considerations in readying a patent portfolio for sale. The patent market is much more liquid than it was ten years ago, yet experts say that many patent sellers still come to the table unprepared to answer important questions. Our panel features an in-house counsel at a major buyer of patents, and lawyers at two top IP strategy firms. They will discuss important aspects of readying a patent portfolio for sale, including:
- Chain of title issues;
- Patent and invention assignment language;
- Inventorship; and
- Terminal disclaimers.
They also will discuss strategy issues about the inclusion of non-U.S. patents, the optimal size of a portfolio, the use of brokers, and bilateral licenses to the seller from the buyer.
Kenneth Korea, Samsung Eletronics
Philip Pedigo, Intel Corp.
Stephanie Sharron, Morrison & Foerster, LLP
You Lost the Arbitration: New Options for AppealsWebinar Date: 04/28/2016
Arbitration isn’t for sore losers: a swift route to finality is traditionally a key to arbitration’s allure and to its risks. Federal and state arbitration laws narrowly limit the grounds upon which a party may challenge an arbitration award (to the integrity of the process) so that errors in the application of law or in determinations of the facts are not included. Of course, non-prevailing parties do try to get a court to revoke an arbitration award. For instance, Sony recently asked a federal judge in the Northern District of California to vacate an arbitration award against it in a patent licensing dispute with Immersion, from whom it had taken a license after an earlier patent infringement battle.
In recent years, however, parties have the option of agreeing in advance to an appeal process within arbitration. Leading arbitration forums such the American Arbitration Association and JAMS have introduced an optional “appeal” contract clause. If both sides agree going in, a losing party in arbitration can call for the forum to assemble a new panel of arbitrators with the power to affirm or reverse the underlying arbitration decision, and its decision becomes the final decision in the case. This webinar will report the latest on how this provision has been used. Our panel includes a lawyer at the AAA, an arbitrator, and a litigator who has extensive experience representing clients in disputes ancillary to litigation.
Sasha Carbone, American Arbitration Association
William Needle, Ballard Spahr
Brian White, King & Spalding
Settling ANDA Litigation: Options and RisksWebinar Date: 03/23/2016
The recent First Circuit opinion in the In Re Loestrin reverse-payment litigation appears to have clarified that non-cash payments to a generic company from a branded pharmaceutical company can be targeted as anti-competitive under the U.S. Supreme Court 2013 decision in FTC v. Actavis. But many other antitrust-related issues about settling Hatch-Waxman litigation remain open, such as:
- How big must a reverse payment be to count as a “large and unjustified” under Actavis?
- Does the promise of “no authorized generic” amount to an unlawful reverse payment?
- May side deals that are profitable for the generic manufacturer and reflect commercially reasonable arm’s-length terms be freely entered into by settling parties
- What role will arguments about patent strength play if a reverse-payments antitrust case goes to trial?
Our panel, which will discuss these and other issues, features an attorney at the Federal Trade Commission, and two law firm litigators, one from each side of the innovator/generic divide.
Kevin Nelson, Duane Morris
Bruce Wexler, Paul Hastings
Antitrust in Asia: New IP Guidelines in China, Korea and JapanWebinar Date: 03/16/2016
For all the scrutiny the U.S. government has given to standard essential patents (SEPs) in recent years and to the commitment to license them under fair, reasonable and non-discriminatory (FRAND) terms, the U.S. Department of Justice has also taken care to express broad approval of patent standards. But in Asia, the governments of China, Korea, and Japan recently have taken a more punishing attitude toward SEPs. All three have either issued or have drafted new guidelines that create a competition law sanction for conduct involving SEPs, based on presumptive rules rather than the effects-based approach of the U.S.
Those same guidelines also blur the distinction between SEPs and valuable patents that are not in a standard, setting the stage for compulsory licensing of the latter. And in China, a draft guideline suggests that a dominant patent holder abuses its market position if it imposes a license that limits the licensee’s ability to challenge the validity of the patent. Our panelists include a founder of a Chinese law firm specializing in technology; a U.S. law firm expert on the intersection of antitrust and IP; and the director of a global antitrust institute who formerly served at the FTC. They will discuss the guidelines.
Gabriella Liu, Beijing IParagon Law Firm
Koren Wong-Irvin, George Mason University, Global Antitrust Institute
Lexmark: A Bulwark Against Exhaustion?Webinar Date: 03/03/2016
Covetous employees, foreign government hackers, erstwhile suppliers, or disloyal business partners: all can pose the threat of trade secret theft to corporations these days. This webinar will give best practices for secret holders when the alarm of a potential theft first sounds. In those stress-filled hours, a swift and well-focused response can save the day, while a bungled reflex might negatively impact the outcome of the entire episode.
Our panel includes two in-house counsel with first-hand experience in responding to trade-secret theft and a litigator who has seen the impact on plaintiffs of both good and bad first responses to trade secret theft. The panelists will outline:
- What questions to ask at the first hint of a problem;
- How to quickly gather and maintain crucial evidence both in-house and externally;
- Best practices for internal investigations and giving Upjohn warning to employees;
- How to contact new employers of suspected thieves or other possible bad actors;
- How to avoid an accusation of bringing a claim of trade secret theft in bad faith;
- Should we call in law enforcement? Calculating the trade-offs;
- First moves in litigation: Whether and how best to request a court for temporary restraining order or immediate injunctive relief.
Mark Patterson, Fordham University School of Law
Susan Van Keulen, O’Melveny & Myers
Damages on Extraterritorial Sales After Carnegie MellonWebinar Date: 02/24/2016
A final adjudication of the high-stakes patent litigation Carnegie Mellon v. Marvell could have helped resolve one of the biggest legal uncertainties in IP: whether and how reasonable royalties on domestic use of a patented technology can include extraterritorial sales as part of the royalty base. Litigation on this point often includes complicated fact patterns regarding, for instance, the path of foreign-manufactured components arriving in the U.S. through a long distribution channel. But those looking for answers, including whether a sale may have more than one location, must now look elsewhere — this month Marvell agreed to pay $750 million to CMU to settle all claims. Several ongoing cases incorporating these issues are still underway, however, including Western Geco (Schlumberger) v. Ion. Their results promise to have far-reaching consequences, not just for damages quantification, but also for where companies choose to conduct their R&D and sales support.
Savvy patent owners can already follow the path of recent case law to improve their chances in litigation and licensing. Our panelists will clarify the issues and give advice on new possibilities for royalty structures. Our panel includes a litigator who is involved in long series of cases involving foreign sales; a law professor who studies extraterritoriality; and a damages expert.
Blair Jacobs, Paul Hastings
Prof. Amy Lander, Drexel University, Thomas R. Kline School of Law
FRAND Damages: Comparing the Four Leading Cases, Including CSIROWebinar Date: 12/16/2015
This month the Federal Circuit issued its decision in CSIRO v. Cisco that agreed-in-part and disagreed-in-part with the district court’s damages award regarding a patent essential to a WiFi standard. Our panel will compare CSIRO with three key earlier opinions that give insight into proving and determining a reasonable royalty for a standard essential patent (SEP): the Federal Circuit’s earlier decision in Ericsson v. D-Link, the Ninth Circuit’s decision in Microsoft v. Motorola, and Judge Holderman’s Northern District of Illinois decision in In Re Innovatio IP Ventures.
Our panel includes a patent counsel at a company that owns valuable SEPs, a law firm litigator who has represented technology implementers against owners of SEPs, and a law school professor who authors a blog on patent damages. They will discuss where the opinions converge and the nuances in how they differ, and how courts are likely to view these issues in the future.
Prof. Thomas Cotter, University of Minnesota Law School
Mark Snyder, Qualcomm
Timothy Syrett, WilmerHale
Standards and FRAND: Recent Developments in the U.S. and EuropeWebinar Date: 10/13/2015
Our panel will analyze two important recent developments in the world of standards and FRAND and how they will shape events going forward:
- The Ninth Circuit affirmation of Judge Robards’ FRAND decision in Microsoft v. Motorola and the endorsement of his calculations of FRAND, and
- The European Union High Court ruling that for the first time provided guidance on what steps the owner of a FRAND-encumbered patent should take before seeking injunctive relief.
The panel will also discuss recent and pending developments at the U.S. International Trade Commission. Our panel, which encompasses a range of view on the issues, will also discuss such timely questions as whether global licensing of SEPs is a thing of the past, with country-by country licenses the new trend.
David Long, Kelley Drye & Warren LLP
Christopher Thomas, Hogan Lovells
Paul Zeineddin, Zeineddin PLLC
Advance Conflict Waivers: How to Avoid Unpleasant SurprisesWebinar Date: 09/22/2015
CLE Ethic credits will be applied for
Law firms asking current clients for written permission to be averse to them in future matters is a custom of recent vintage, but now takes place frequently. Corporations large and small grant such waivers because they want to work with a specific law firm lawyer or because they don’t foresee a real threat of a conflict. But when push comes to shove, these waivers don’t do much to lessen bad feelings between client and law firm, and their enforceability is tested in court repeatedly. For instance, in one recent case, a magistrate judge in the Western District of Pennsylvania enjoined a law firm from representing a company that had launched an unfriendly takeover bid for another of the firm’s clients, despite the existence of an advance waiver between the law firm and the target company.
Our panel, consisting of a law school professor who specializes in ethics in IP practice, an in-house counsel at a major multinational, and a law firm litigator, will examine the status of such waivers under law and ethical rules, the various types of advance waivers, and how courts have evaluated the text of the waiver and the surrounding facts in a number of decisions. The panelists will also offer tips for how to negotiate and draft advance waivers that can best serve the needs of both client and law firm.
Prof. Lisa Dolak, University of Syracuse School of Law
Jennifer Johnson, DuPont
Daniel Tabak, Cohen & Gresser
Antitrust Enforcement in ChinaWebinar Date: 05/07/2015
Just when multinational patent owners were starting to feel better about the odds of protecting their patents in China (thanks to the opening of specialized IP courts and other pro-patent policies), they have a new regulatory worry: the Chinese government’s beefed-up enforcement of the country’s Anti-Monopoly Law.
The loudest shot was the settlement in February between the Chinese National Development and Reform Commission (NDRC) and Qualcomm. The deal requires the U.S. telecommunications company to pay a $975 million fine and face significant limitations on its patent licensing activities. But Qualcomm is not alone in being fined or under investigation for antitrust in China, and any foreign business operating there will now be carefully considering its own IP enforcement and monetization strategies. Our panel will discuss the law and the three government agencies enforcing it: the NDRC, the Ministry of Commerce (MOFCOM) and the State Administration for Industry and Commerce (SAIC), which on April 7, 2015, issued its long-awaited Rules on abusing IP. Our panel will also draw lessons from recent Chinese enforcement actions involving foreign companies, discuss still open questions, and give tips on how to stay out of trouble.
Lei Mei, Mei & Mark LLP
Peter Wang, Jones Day
Koren Wong-Ervin, U.S. Federal Trade Commission
The Future of Standards: What's Next After the IEEE Shift?Webinar Date: 03/18/2015
Last month, after a vigorous debate between supporters and opponents, the Board of Directors of the Institute of Electrical and Electronics Engineers (IEEE) voted to approve a set of amendments to the organization’s patent policy. The changes largely relate to the commitment of IEEE members to license patents to users of IEEE standards on terms that are “fair, reasonable and nondiscriminatory” (FRAND), a commitment that has been the subject of much recent litigation. Because their business models lean heavily on patent royalty revenues, some standards users remain opposed to the changes.
Our panel will discuss a number of questions, including whether important patent contributors will make patents available to IEEE standard development in the future and how future royalty disputes over IEEE standards will play out.
Marc Sandy Block, IBM Corp.
David Long, Kelley Drye & Warren LLP
Earl Nied, Intel Corp.
Paul Zeineddin, Zeineddin PLLC
Proving FRAND Damages: Ericsson v. D-LinkWebinar Date: 01/27/2015
Last month the Federal Circuit for the first time gave its views on what methodology to apply to determine a royalty rate for infringed patents subject to fair, reasonable and non-discriminatory (FRAND) commitments related to a standard. That opinion, Ericsson v. D-Link, rejected the Georgia-Pacific framework for FRAND-encumbered patents and covers a lot of ground, including guidance regarding the incremental value of the invention, apportionment issues for standard essential patents (SEPs), and jury instructions regarding patent hold-up and royalty stacking.Our panel of experts will discuss the opinion, and questions that remain open, such as:
- How can a patent owner be fairly compensated for committing an entire portfolio of patents to a standard if royalty rates are set only on the few patents named in a particular suit?
- How can focusing on the “smallest saleable unit” result in a fair result for an invention that reads on the entire product, where it is an important but not the sole driver of demand?
- The Federal Circuit agreed with the district court’s decision not to instruct the jury on patent hold-up or royalty stacking because there was no evidenced offer for either. What evidence will be necessary to show such harm in future cases?
Jorge Contreras, University of Utah, College of Law
Anne Layne-Farrar, Charles River Associates
Richard Stark, Cravath, Swaine & Moore LLP
Patent Damages: How to Build A Case NowWebinar Date: 10/30/2014
The last five years have seen remarkable changes in the law and practice of patent damages, with the Federal Circuit decision in VirnetX v. Apple last month the most recent decision restricting the allowable methods for calculating infringement damages. Cumulatively, the appellate court’s rulings stress the need for a much more careful analysis of how damages are tied to the infringing feature, while also demolishing old rules and establishing new ones on how to establish a reasonable royalty.
Plaintiffs who want to be sure they can obtain a remedy that will outweigh the hassle and expense of litigation need to incorporate the Federal Circuit’s guidance into strategies early in the case. Our panel will give advice on how to be savvy and realistic about damages at each stage of litigation including: the decision to bring suit; damages discovery and fact development; what kind of experts and/or surveys are needed and when; how best to use expert depositions; and options for challenging experts. The panelists will also give advice to defendants on how to challenge the plaintiff’s case.
Hon. Paul Singh Grewal, Magistrate Judge, U.S. District Court, Northern District of California
John Jarosz, Analysis Group
Gary Hoffman, Gary Hoffman IP Consulting
Global Developments in Standards and FRANDWebinar Date: 08/25/2014
With key information technologies at stake, the possible abuse of standard essential patents (SEPs) is not just a U.S. issue. Investigations, litigation, and draft rules involving SEPs are springing up around the globe. This webinar will focus on recent developments in Asia and Europe, and compare them with the latest in the United States. Our panel includes an official of the U.S. Federal Trade Commission, a standards expert at a U.S. technology company, and a competition-law expert based in Brussels. They will analyze and compare:
- The U.S. FTC Consent Decrees in Bosch and Motorola/Google
- The European Commission’s two antitrust decisions this spring in Samsung and Motorola/Google which essentially create a “safe harbor” for willing licensees of FRAND-encumbered SEPs to avoid an injunction and address the circumstances under which a SEP holder may seek injunctive relief.
- Recent developments in China including the Guangdong High People’s Court decisions in Huawei v. InterDigital, the decision of the Ministry of Finance (MOFCOM) in Microsoft-Nokia, the settlement of the National Development and Reform Commission (NRDC) with Interdigital, and new draft rules on FRAND from the State Administration for Industry and Commerce (SAIC).
- Developments in other countries, including the decision of the Korean Fair Trade Commission in Apple, and the Competition Commission of India’s Investigative Orders in Ericsson.
- Earl Nied, Intel Corp.
- Christopher Thomas, Hogan Lovells
- Koren Wong-Ervin, U.S. Federal Trade Commission
What Every IP Attorney Should Know About Open Source SoftwareWebinar Date: 07/31/2014
Hosted by IPO’s Open Source Committee
Moderator: Kenneth Corsello, IBM Corp.
If software is eating the world, then open source software has swallowed a big bite. Many products sold today – from gene sequencers to electric trains to stand alone software applications – contain open source software as part of or as a complement to that product. While product developers find open source to be a very valuable tool, it comes with some legal strings attached and should be used properly. Unfortunately, many business and IP professionals are unfamiliar with the legal issues and compliance requirements that open source licenses impose. As a result, many businesses do not have in place a review process to ensure compliance with the open license and to advise the business team on the legal impact of using a particular open source software package. Tune in to this webinar to learn the basics of open source from an IP law perspective.
- What are “open source software” and “open source licenses”?
- What are examples of conditions set by open source licenses and what is their relationship with IP law?
- What happens if you use or distribute code without complying with an open source license?
- How do you manage the risks associated with open source code?
Our panel includes in-house practitioners who advise their clients on open source issues on a regular basis. Among the issues they will discuss are:
- Victor Huang, Illumina
- Joseph D’Angelo, EMC Corp.
- Elaine Lee, Hewlett-Packard Co.
The Internet of Things (loT): IP Challenges in a Connected WorldWebinar Date: 04/30/2014
Last month brought another signal of the promise of an Internet of Things (IoT), when AT&T, Cisco, GE, IBM and Intel announced the formation of the Industrial Internet Consortium (IIC), an open membership group that hopes to identify common architectures to connect smart devices, machines, people, processes and data. This comes after Google’s $3.2 billion acquisition earlier this year of Nest, a pioneer in energy-saving connected thermostats, and General Electric’s prediction that the IoT market over the next 20 years could add as much as $15 trillion to global GDP, roughly the size of today’s U.S. economy.
This large industrial shift will raise important issues involving intellectual property. Our panel includes IP lawyers from two of the founding corporate members of the IIC and a law firm professor who is an expert on standards and is counsel to the Internet Engineering Task Force. They have identified questions that are likely to command attention in the future from IP lawyers involved in the IoT:
- Who owns the data? The IoT envisions refrigerators that know when a household is running low on milk and automatically order more. To whom does that information about that process belong: the consumer, the refrigerator manufacturer, the food retailer, or someone else?
- How will standards operate in the IoT? Many small groups are popping up to set standards on specific aspects of protocols involved in the IoT. Will they consolidate? And will standard-setting bodies involved in the IoT learn lessons from the disputes that have roiled the telecom space regarding standard-essential patents and “fair, reasonable, and non-discriminatory” (FRAND) licensing terms?
- How is the patent landscape in IoT shaping up so far?
What changes in patent law could mold the IoT? The U.S. Supreme Court is already considering this term in a case of considerable importance to the IoT, Limelight v. Akamai . In question is a Federal Circuit opinion that changed the standard for inducing infringement by overruling the long-standing precedent that induced infringement requires all the infringing steps be performed by one party.
- Marc Sandy Block, IBM Corp.
- Jorge Contreras, American University Washington College of Law
- Scott Gilfillan, Intel Corp.
Export Controls on IP: Understanding and Managing the RiskWebinar Date: 04/09/2014
A U.S.-based inventor puts drawings or test results in an envelope and mails it to Germany. The same inventor walks across his lab and hands the data to a visiting scientist from China. Each of these is a technology export. So is allowing a foreign national or person in a non-U.S. jurisdiction to retrieve the information from a company or third-party server.
Most U.S. patent lawyers know about the USPTO’s Licensing and Review Office, which administers the Patent Secrecy Act and grants applicants a license to file patents abroad. But if that is all a patent lawyer knows about export controls, it exposes his or her clients to significant risk. Technology exports are also ruled by two other sets of export control regulations: the International Traffic in Arms Regulations (ITAR) and the Export Administration Regulations (EAR). Penalties that the Commerce Department administers under EAR (which cover “dual use” items), tend to be lower than those assessed by the State Department which administers ITAR (which cover defense/military items). But even EAR penalty exposure can be stiff, with statutory maximum civil penalties “the greater of $250,000 or twice the value of the transaction, per violation.” Then there’s the reputational damage associated with having a corporate name tied to violations of national security-related laws; the disruption and cost of dealing with an investigation; and the possibility of Commerce imposing a “denial of export privileges” and cutting off foreign sales.
Our panel includes the chief IP counsel of a major multinational technology company, and two law firm experts on export controls. They will;
- give an overview of the export-control challenge facing corporate owners of IP
- describe the regulatory regimes and the line between controlled and not-controlled information
- focus on corporate environments (in addition to R&D) where export rules could come into play, such as mergers & acquisitions, cloud computing, and patent searching
- outline key components of creating and monitoring a corporate compliance effort
- discuss what it means to clean up past transgressions through a “voluntary disclosure” to federal authorities.
- Daniel Staudt, Siemens Corp.
- Scott Flicker, Paul Hastings LLP
- Robert Torresen, Sidley Austin LLP
Mediation in Patent Disputes: Best Practices, Worst PracticesWebinar Date: 01/30/2014
The CEOs of Apple and Samsung will meet soon to discuss settlement of their expensive and protracted patent disputes, consenting to a mediation suggested by Judge Lucy Koh of the U.S. Court for the Northern District of California. The two sides have agreed on a mediator and will sit down together by February 19. At that meeting, each CEO will be accompanied by three or four in-house counsel, but no outside counsel will be allowed.
Will mediation work in this particular situation? Some onlookers have expressed skepticism. But others have a more optimistic view of the potential for mediation in patent litigation in general. Mediation continues to be underutilized in patent disputes, according to the International Institute for Conflict Prevention and Resolution. Aided by a blue-chip task force of IP lawyers, that organization recently issued a report that identifies best practices and attempts to identify and overcome the barriers to the effective use of mediation in patent litigation.
Our panel will use that report’s conclusions and their own varied experiences to discuss best ways to proceed in the mediation of patent disputes. Topics will include:
- The decision to try mediation
- Timing – early, before/after Markman, just before trial, etc
- Choosing a mediator
- Information exchange between parties
- Who attends
- Process, including pre-mediation conferences and preparation, opening statements, private caucuses, and nailing down a deal
- Alan Albright, Bracewell Giuliani LLP
- R. Tulloss Delk, IBM Corp.
- Harrie Samaras,ADR and Law Office of Harrie Samaras
Patent Peace in Open Source?Webinar Date: 12/19/2013
Free and open source software (FOSS) licenses aim to foster non-aggression among patent owners whose patents read on technology licensed under the FOSS license. The most important clauses include the outbound license (where each contributor grants other licensees a royalty-free patent license to all of its contributions to the source code or object code under the FOSS license) and the patent retaliation clause (which states that if a company initiates patent litigation against a FOSS contributor using software patents, then its own FOSS license terminates.)
This webinar will focus on the fastest growing FOSS license, Apache 2.0. Open source projects using the Apache license are key to the growth of cloud computing, and include many of the most dynamic areas in software, including Hadoop, an open source project that is the bedrock of much of Big Data, and OpenStack, which has become widespread in data center management.
But experts say that the patent terms in Apache licenses amount to a ticking time bomb and that they are likely to be litigated in the future. Our panel will examine patent clauses in FOSS licenses, and in Apache in particular. They will also consider, among other things, what a corporation should consider in joining an open source project and the role of supplemental IP mechanisms to support FOSS such as pledges and cross-licenses.
- Carolyn Adler, Hewlett-Packard Co.
- Keith Bergelt, Open Invention Network LLC
- Theodore McCullough, EMC Corporation
Downstream Dilemma: Can Licensors Sidestep Patent Exhaustion?Webinar Date: 12/04/2013
Ever since the Supreme Court addressed the non-statutory doctrine of patent exhaustion in its 2008 Quanta decision, patent owners have tried to figure out how to still earn licensing income from companies at more than one rung of a distribution or manufacturing ladder. Not much encouragement can be found in the two recent Federal Circuit decisions. In Keurig v. Sturm Foods, the Federal Circuit upheld a district court’s decision that Keurig’s patent rights were exhausted by the sale of its coffee brewing machines, and so not infringed by the defendant’s sale of replacement coffee cartridges. (The winning side’s attorney is one of our panelists.) In Lifescan Scotland v. Shasta, the court again ruled for the defendant, finding that LifeScan’s patent on glucose meters was exhausted once the product was distributed to customers and that Shasta did not infringe by selling its own strips for use with LifeScan’s meter.
Despite this trend, our panel will discuss what might prove to be winning strategies for patent owners using both patent prosecution and licensing and litigation. One possible way to avoid exhaustion, for instance, could be to put in a separate patent the claims that might be enforced downstream. In litigation, could a patent owner settle with downstream users first, and thereby not lose the opportunity to work his way up to the manufacturer?
- Allen Arntsen, Foley & Lardner LLP
- Charan Sandhu, Weil Gotshal & Manges LLP
- Andrew Wojnicki, IBM Corp.
SEPs: What Makes a Patent "Essential" to a Standard?Webinar Date: 09/19/2013
Litigation earlier this year focused on whether owners of infringed Standard-Essential Patents (SEPs) can win an injunction or an ITC exclusion order, and how to calculate a “fair, reasonable, non-discriminatory (FRAND)” royalty. But a July decision by Northern District of Illinois U.S. District Court Judge James Holderman, in Innovatio v. Cisco, is the first to determine what actually makes a patent essential to a standard. That determination is sure to be litigated increasingly as distinctions between the rights of owners of SEPs versus the rights of owners of other patents continue to be defined by courts and others.
Our panel of experts will:
- Discuss the notion of “essentiality” within the broad context of standards, standard-setting organizations, and patent pools
- Analyze and assess Judge Holderman’s ruling, including his determinations that defendants bear the burden of proof and that a RAND obligation applies separately for each individual claim within a patent, not an entire patent
- Debate the future path of litigation on essentiality and what this means for companies who both participate in and implement standards
- Jorge Contreras, American University, Washington College of Law
- Earl Nied, Intel Corp.
- Robert Sachs, Fenwick & West
Licensing Self-Replicating Technologies after MonsantoWebinar Date: 08/20/2013
The U.S. Supreme Court’s unanimous decision this year in Monsanto v. Bowman put to rest the idea that the patent doctrine of exhaustion could be applied to many situations involving self-replicating technologies. But it also highlights the continued importance of the license contracts that biotech patent holders use to retain control over their inventions. Those licenses raise the legal issue of the limits of post-sale restrictions on patented products. This webinar will explore in this context the tension between the U.S. Supreme Court’s Quanta decision, which bolstered the exhaustion doctrine, and Federal Circuit jurisprudence since Mallinckrodt, which has authorized complex licenses that allow patentees to accomplish their business objectives without exhausting their patent rights.
Many biomedical self-replicating inventions do fall comfortably within the scope of the Monsanto opinion. For example, the maintaining of an initial cell culture in the hands of the licensee-purchaser, although it also involves replication, should be easily distinguished from distribution of the culture to unauthorized third parties. But other technologies may not present quite so simple an analysis. DNA vectors, for instance, can be used for a variety of purposes, not all of which require replication.
Our panelists will discuss the relevant case law and explore how patent owners of self-replicating biological inventions can legitimately craft their license provisions to draw a line between authorized and infringing activity.
- Christopher Jeffers, Womble, Carlyle, Sandridge & Rice, LLP
- Konstantina Katcheves, Lonza Group
- Erich Veitenheimer, Cooley LLP
Multi-Defendant Patent Litigation under the AIA: Looking Ahead to TrialWebinar Date: 08/06/2013
Like a train that has just set out on a newly-laid track, patent litigation so far under the AIA has visited only the first few stops on the line. Plaintiffs can often no longer file one complaint targeting multiple defendants, but the impact of that anti-joinder provision has been dulled so far because similar individual suits brought by one plaintiff have been consolidated by courts for pre-trial matters.
There are still many stops on the route of litigation that have yet to be visited. This webinar will consider the case management issues that plaintiffs, defendants and judges will face as post-AIA cases move through discovery, Markman hearings, dispositive motions, pre-trial conference, trial, appeal and post-grant proceedings. For instance, will judges force the defendants to coordinate motion practice, or will plaintiffs have to face ten different summary judgment motions to dismiss? Because infringement trials will not be consolidated under the AIA, plaintiffs have difficult choices ahead. Will they want to put the validity of the patent at risk in ten different trials? Or will the judge allow one coordinated trial for validity? What are the pros & cons of one defendant joining another defendant’s petition for inter partes review?
- Cedric DeLaCruz, The Hartford
- Hon. Roderick McKelvie, Covington & Burling
- Ronald Schutz, Robins, Kaplan, Miller & Ciresi
RAND Determined? Judge Robart’s Decision in Microsoft v. MotorolaWebinar Date: 05/09/2013
On April 25, Judge James Robart of the Western District of Washington issued the non-confidential version of his Findings of Fact and Conclusions of Law in Microsoft v. Motorola. This marks the first time that a U.S. court has made a detailed determination of reasonable and nondiscriminatory (“RAND”) licensing terms for a standard-essential patent (SEP) portfolio license that the SEP owner committed to license on RAND terms. The final impact of the opinion is hard to predict – it’s even unclear where the appeal will be heard, at the U.S. Court of Appeals for the Ninth Circuit or at the U.S. Court of Appeals for the Federal Circuit. The opinion presents a legal framework for resolving RAND disputes, provides rulings on the value of SEP’s where a RAND commitment exists, and also has implications for patent prosecution practice.
Starting with the traditional 15 factors outlined in Georgia-Pacific for setting a reasonable royalty, Judge Robart modified nine and discarded three to fit the context of SEP’s and RAND licensing. His analysis concludes, among many other things, that SEP’s should be valued in light of the contribution of the patented technology to the capabilities of the standard, and the contribution of those technical capabilities to the licensee and its products. Our panelists will describe, analyze, and assess the opinion. The panel includes a patent litigator, an economist, and an in-house counsel specializing in standard setting.
- William Coats, Greenberg Traurig, LLP
- Dr. Alan Cox, NERA Economic Consulting
- Marc Sandy Block, IBM Corp.
3-D Printing: IP Challenges AheadWebinar Date: 03/25/2013
3D printing has burst into the public consciousness. Creating an object by layering thin layers of material, one on top of the other – “printing” in three dimensions – promises to deliver big gains in manufacturing efficiency with far less waste. It also has the potential to unleash creativity, allowing, for instance, the far more rapid and inexpensive creation of prototypes.But as the potential of 3D printing becomes more apparent, so does its potential to disrupt existing business models and legal frameworks. The looming analogy: the effect of the video recorder and digital files on the music, film and other media industries, still reeling from the impact of copying and low-cost distribution.The turbulent cultural and political history of the “copyright wars” to date is also sure to influence the evolution of 3D printing.This webinar will examine the challenges 3D printing poses to owners of IP, including patents, copyright, and trademarks.The panel includes an in-house patent counsel at a major international equipment company, a copyright attorney with specialized knowledge of open source software, and a public interest lawyer specializing in digital rights. Among the topics they will consider:
- How much patent infringement will take place thanks to 3D printing, and what efforts will patent owners take to enforce their patents as a result?
- Will 3D industry players, such as printer manufacturers, makers of scanners, and printing services, be found liable for inducement of infringement?
- How does copyright intersect with 3D printing and to what extent does the Digital Millennium Copyright Act apply?
- How will 3D printing affect the value of trademarks?
- John Cheek, Caterpillar Inc.
- Mark Radcliffe, DLA Piper
- Michael Weinberg, Public Knowledge
FRAND: What is the Magic Number?Webinar Date: 03/14/2013
The FRAND acronym has a meaning that is notoriously vague. Standard setting organizations (SSOs) use it as a way to require that patents included in a standard be licensed by the patent owner for “fair, reasonable, and non-discriminatory” terms, but without naming numbers or even how FRAND should be determined.
However, thanks to recent court decisions and actions by government agencies, district courts and arbitrators are likely to be asked to make specific FRAND determinations with increasing frequency. For instance, the recent Google-FTC Consent Order says that Google can seek an injunction against an infringer only when the potential licensee refuses to pay FRAND rate as determined by a court or neutral third party or when the licensee does not agree to arbitration or to seek a FRAND determination from a U.S. court. Though not binding on other companies, the order is likely to be influential in guiding behavior of both companies and judges.
Our panel – consisting of an economist, an official from an SSO, and a patent/antitrust litigator – will discuss the likely scope and direction of these FRAND-determination proceedings. Among the topics:
The strength and weaknesses of ex ante licensing agreements (i.e., made before the patent became a part of the standard) as a guidepost to ex post royalties –when such licenses exist.
The use of meeting notes and other documents from the SSO to determine whether there were good alternatives to the patent in question at the time it was adopted as part of a standard.
How the argument about the correct FRAND will be similar and different from current patent damages cases.
- Ray Alderman, VITA Standards Organization
- Jay Jurata, Orrick, Herrington & Sutcliffe, LLP
- Anne Layne-Farrar, Charles River Associates
Standard Essential Patents: Implications of the FTC-Google Consent DecreeWebinar Date: 03/05/2013
In January there were two important developments at the intersection of patent litigation and standard essential patents (SEPs). First, the Federal Trade Commission released the details of a consent decree with Google regarding the use of injunctions against infringers of SEPs. Then a few days later, the Department of Justice and the USPTO issued an unusual joint policy statement on the same topic. Patent owners and companies whose products may include inventions covered by SEPs are of course interested in what these statements mean for future regulatory action and litigation.Our panel includes a law professor who specializes in issues surrounding standard setting organizations, an experienced patent litigator and the FTC lawyer who managed the investigation of Google. They will discuss:
- What is the legal basis for the FTC’s jurisdiction in this matter?
- What does the consent decree mean for other companies?
- Do the principles articulated in the decree apply equally to U.S. district courts and the Federal Circuit, the ITC, and foreign courts?
- What will be the role of arbitrators or courts in resolving conflicts over SEPs?
- Will resolution reached in this consent decree result in more or less injunctions regarding SEPs?
Jorge Contreras, American University Washington College of Law
David Long, Dow Lohnes
Nicholas Widnell, Federal Trade Commission
Bowman v. Monsanto: The U.S. Supreme Court HearingWebinar Date: 02/22/2013
On Tuesday February 19, the Justices of the U.S. Supreme Court heard oral argument in Bowman v. Monsanto, the important case about the first-sale doctrine and self-replicating technologies. The litigation dates back to 2007, when Monsanto, inventor of a highly-successful pesticide-resistant soybean plant, sued Indiana farmer Vernon Bowman for patent infringement. A customer of Monsanto, Bowman had planted commodity seeds purchased from a grain elevator, most of which wound up being Monsanto’s variety, and then saved seeds from that generation for replanting. Bowman argued that Monsanto’s patent rights to the seeds he purchased from the grain elevator and their progeny were exhausted.
The Federal Circuit disagreed, and the Supreme Court is considering “Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?”
The Justices seemed to heavily favor Monsanto’s arguments. They questioned whether the facts actually posed a question of patent exhaustion at all because that doctrine “never permits you to make another item from that item you bought,” in the words of Justice Sotomayor. Chief Justice Roberts set the tenor with his first question: “Why in the world would anybody spend any money to try to improve the seed if as soon as they sold the first one anybody could grow more and have as many of those seeds as they want?
Our panel will discuss the details of the probable outcome of the case and other questions including whether the court could eviscerate the first-sale doctrine for biological inventions and what other consequences might follow. Panelists include a leading biotech patent lawyer; a law professor specializing in IP who co-authored a brief in favor of Bowman; and a top U.S. Supreme Court trial advocate who authored briefs in Quanta and Bowman.
- Prof. Shubha Ghosh, University of Wisconsin Law School
- Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
- Andrew Pincus, Mayer Brown LLP
Admissibility of Settlements & Negotiations in Patent Litigation: Update & StrategyWebinar Date: 01/31/2013
A California magistrate judge’s recent ruling that Apple must reveal the terms of its new patent settlement with HTC in its ongoing litigation with Samsung brings attention once again to the issue of privilege in licensing and settlement agreements and negotiations.
In April the Federal Circuit, in In re MSTG, resolved a question of first impression, holding that “settlement negotiations related to reasonable royalties and damages calculations are not protected by a settlement negotiation privilege.” This followed the court’s 2010 finding in ResQNet that the “most reliable” comparable licenses may sometimes arise out of litigation. Our panelists will discuss the continuing influence of these two decisions on:
- How litigants conduct licensing and settlement discussions;
- Whether they choose to hold discussions in the context of mediation where privilege may hold;
- What limits can appropriately be placed on discovery of settlement negotiations;
- The extent to which evidence of settlement negotiations would be admissible under Rule 408;
- The use of experts in litigation, because disclosure of information on settlement negotiations to experts is now more likely to open up discovery; and
- Risks that litigators may run due to the discoverability of negotiations.
Our panel includes the litigator who represented MSTG against AT&T, another patent litigator also highly experienced in representing plaintiffs and defendants, and an in-house counsel supervising litigation at a multinational technology company.
- Richard Birnholz, Irell & Manella LLP
- Christopher Lee, Niro, Haller, & Niro
- Frank Nuzzi, Siemens Corp.
Material Transfer Agreements: Best Practices & PitfallsWebinar Date: 11/29/2012
A Material Transfer Agreement (MTA) governs the transfer of tangible research materials between two organizations, and defines the rights of the provider and the recipient. The woes that can result from an ineffective MTA are highlighted by the recent petition for certiorari to the U.S. Supreme Court in Bard v. Gore, a long-running infringement dispute that started when Gore provided Bard with a material to see if it could become a blood graft. In her dissent to the Federal Circuit opinion, Judge Pauline Newman describes what can happen without a good MTA: “…A person who performs the requested test of a material that is provided to him for testing for a specified use, can then, when the test is successful, patent the material he was provided, for the use for which it was tested.”
Our panel will focus both on best practices in MTAs and avoiding pitfalls. Their discussion will include contract negotiations and provisions regarding:
- Confidential information to make sure the recipient does not suffer contamination of its own IP
- The permitted uses of the materials in experiments
- IP issues, including who will own the IP created by experiments, and agreements regarding research publication and patent applications
- Liability protection for the provider
- Termination, including the return or destruction of the material
- Issues unique to agreements with universities and other institutions receiving federal funding
Our panel includes a university technology transfer specialist, a biotech transaction lawyer, and an in-house counsel for an energy company.
- David Giannantonio, Emory University Office of Technology Transfer
- Charles Hoyng, Latham & Watkins LLP
- Michael Kolman, BP America, Inc.
Covenants Not to Sue: The Latest DevelopmentsWebinar Date: 08/09/2012
“Covenants not to sue” have become an increasingly common feature in the resolution of patent disputes. A recent ruling by the Second Circuit Court of Appeals is likely to have important consequences for the drafting of such no-challenge agreements and may also raise questions about techniques that some licensors have used to rein in challenges of licensed patents in the wake of the Supreme Court’s 2007 opinion in MedImmune.
In its July 10 opinion in Rates Technology v. Speakeasy, the Second Circuit determined that enforcement of no-challenge clauses should take place only after the parties had engaged in formal litigation and, thus, discovery as to the patents-in-suit, and not merely in a settlement. It embraced an expansive view of the 1969 Supreme Court decision Lear v. Adkins in which the Court said that if licensees “are muzzled, the public may continually be required to pay tribute to would-be monopolists without need or justification.”
After the Second Circuit decision, some no-challenge clauses in past settlement agreements may be void or unenforceable. The decision also leaves open questions for licensing agreements moving forward, such as:
- In what circumstances are no-challenge clauses, after some litigation between parties has occurred, likely to be upheld by future courts?
- What level of discovery is necessary to justify enforcement of a no-challenge clause?
Nothing from the Second Circuit’s ruling seems to prevent parties from entering into other kinds of prelitigation licensing agreements designed to thwart future litigation, for instance by providing incentives to a licensee not to challenge a licensor-patent’s validity.
- Edward A. Cavazos, Bracewell & Giuliani LLP
- Phyllis T. Turner-Brim, Intellectual Ventures
- Mark Weinstein, Cooley LLP
Means-plus-Function Claims: Strategies for Patent Owners and Alleged InfringersWebinar Date: 07/11/2012
Means-plus-function claims have long had legal problems, but three recent Federal Circuit Opinions, Noah Systems v. Intuit, Ergo Licensing v. CareFusion, and Mettler-Toledo v. B-Tek Scales raise more questions about how the thousands of software and other patents with means-plus-function claims can be successfully enforced. Section 112, paragraph 6 of the Patent Act specifically permits expressing a claim element as a means for performing a function, and the claim is construed to cover any corresponding structures disclosed in the specification. If the applicant fails to adequately disclose those corresponding structures, the claims will be unpatentable as indefinite under Patent Act section 112, paragraph 2. This webinar will analyze the three cases, and give the latest thinking on the benefits and risks of means-plus-function claims, both in patent prosecution and litigation.
Our panel will focus on grey areas where ongoing or future litigation outcome is likely to vary according to the judge or panel. For instance, disputes may increasingly arise over whether certain terms in a patent are indeed means-plus-function claims, with the result having an important impact on the ultimate issue of infringement as well as validity. Defendants are likely to argue in many cases that claims with language such as “instructions for”, “device for’’ and “module for” are means-plus-function claims. The panel will also give advice for licensing negotiations, with arguments for the licensor on why the licensing candidate needs to take a license to a patent including a means-plus-function claim and arguments for the target on why the scope of “equivalents” of a means-plus-function element means it doesn’t infringe.
Our panel includes two active patent litigators – one of which represented the successful defendant in one of the Federal Circuit cases – and an in-house counsel at a major technology company.
- Cortney Alexander, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
- Jerome Drabiak, Xerox Corp.
- Michael Sacksteder, Fenwick & West LLP
Standards and FRAND: Hot Issues in Antitrust and PatentsWebinar Date: 06/21/2012
Unanswered questions about the rights and responsibilities of owners of standard-essential patents have long simmered, but they were of concern mostly just to experts. In the past year, acquirers have bought several huge patent portfolios that include standard-essential patents and heated litigation regarding standard-essential patents in telecommunications has boiled over in many venues globally. As a result, courts and regulators feel new urgency to bring some clarity to the conflicting pull of antitrust law and IP law in this area.
Our panel includes a U.S. patent litigator with experience in antitrust matters, a European patent attorney who is closely involved with European and German government competition policy, and the former General Counsel of the American National Standards Institute (ANSI) who currently works in standards for Microsoft. They will discuss the latest events and issues, including:
Do owners of standard-essential patents have the right to win an injunction against infringers?
- Are there other constraints in their rights that owners of standard-essential patents must accept?
- Is a royalty FRAND (fair, reasonable, non-discriminatory) if it is uses the final end product as the rate base?
- Is it FRAND to seek access to non-essential patents in exchange for access to standard-essential ones?
- Is an earlier FRAND commitment binding on the purchaser of a patent?
The panelists will discuss recent attempts to have standard-setting organizations address more of these questions themselves, and will reference current litigation and government actions, including the U.S. Federal Trade Commission’s recent expression of concern to the ITC. The FTC wants the ITC to refrain from imposing exclusion orders on products found to infringe patents that are necessary to comply with industry standards.
- Heinz Goddar, Boehmert & Boehmert
- Amy Marasco, Microsoft
- Robert Taylor, Arnold & Porter
Proving Damages in Patent Litigation: How to Clear the Rising HurdleWebinar Date: 05/31/2012
In a series of decisions over the past few years, the Federal Circuit has insisted on closer scrutiny of the damages assessed against patent infringers and on tying those damages more closely to the contribution of the patent at issue. Now that the Federal Circuit has taken a pause on this issue, the ball is in the court of U.S. district court judges, as they try to apply the principles articulated by recent appellate decisions to the varied set of facts presented to them by each case.
Our panelists will analyze recent lower court decisions and discuss:
- How can plaintiffs still make a case for damages to be assessed against the entire market value of a product?
- What role can consumer surveys play in strengthening a claim for damages?
- Have any new rules-of-thumb emerged to replace the 25 percent rule as a baseline for “reasonable royalties”?
- How are courts deciding which prior patent licenses can be relied as a good point of comparison for the patent at issue?
Our panel includes a patent litigator, an in-house counsel at a technology company who is experienced in both litigation and licensing, and a damages expert.
- Bruce Burton, Stout Risius Ross
- Joseph Kirincich, Avaya
- Scott Miller, Connolly Bove Lodge & Hutz LLP
Licensing Trade SecretsWebinar Date: 05/17/2012
Licensing of patents continues to grow as a major source of income for many patent owners, both practicing and non-practicing.
The time may be ripe for more companies to consider monetizing their trade secrets. It is well known that trade secret protection lasts as long as the information remains secret, and royalties from the license of a trade secret can also last a very long time, with some historic trade secret licenses yielding income to the licensor for over a hundred years.
This webinar will explore fine points of licensing trade secrets in manufacturing, technology, data, and software. Topics covered include:
- Drafting confidentiality, non-disclosure, non-use, and residual knowledge provisions;
- Structuring a license to include patent rights and know-how;
- Licensing trade secrets in the life sciences, including issues involving biological materials; and
- Valuing and pricing trade secret licenses.
Our panel includes the head of IP for a major multinational automotive company, a transaction specialist in the life sciences, and an expert in the financial valuation of intangible assets.
- William Coughlin, Ford Global Technologies LLC
- Matt Moyers, Ocean Tomo
- Amy Toro, Covington & Burling LLP
Legal Aspects of the "Make or Buy" DecisionWebinar Date: 04/11/2012
Companies have more options than ever before as they decide between investing in the development of a certain technological capability internally, licensing-in technology, or buying a patent or patents to obtain the freedom to operate.
To be effective, this decision-making process brings together representatives from R&D, strategic planning, business units and the legal department. The panelists of this webinar will discuss what IP lawyers both in-house and at law firms should bring to the table in these discussions. For instance, lawyers need to be ready to discuss whether a company’s existing or planned product lines infringe or are likely to infringe the claims of a patent under consideration, and also how a patent under consideration will hold up under the scrutiny of potential licensees. Lawyers should also be part of a discussion early on whether the purchaser just wants to use the patent for defensive purposes, or whether it will use it offensively in licensing and/or litigation.
Our panel includes a leading IP strategist, a law firm attorney who specializes in patent and licensing deals, and an in-house lawyer at a high-tech start-up who previously was head of IP for a major manufacturing company.
- Suzanne Harrison, Percipience LLC
- Eric Oliver, Richardson & Oliver LLP
- Jim O’Shaughnessy, HarQen
IP Issues in M&A Transaction AgreementsWebinar Date: 03/01/2012
This webinar will consider important lessons in structuring the IP clauses of transaction agreements and related ancillary agreements for deals involving the purchase and sale of corporate stock and assets.
Our panel of experts will address:
- Negotiating and drafting representations and warranties and indemnification provisions related to the seller’s IP.
- The nuances of cross-licensing and post-closing transitional services agreements.
- Issues regarding post-closing integration of acquired IP into the acquirer’s existing portfolio.
- Paul Broude, Foley & Lardner, LLP
- David Klein, Paul Hastings, LLP
- Cynthia-Clare Martey, Caterpillar Inc.
Multidefendant Patent Cases After the AIA: Extinct or Not?Webinar Date: 11/08/2011
When Klausner Technologies filed a patent infringement suit in the Eastern District of Texas in late October, naming 30 high-tech companies as defendants, it might have seemed like business as usual. And indeed it would have been, had the suit been filed a month earlier, before the enactment of the America Invents Act. However, the new law severely restricts the circumstances under which patent defendants can be joined in the same suit, and some experts say that, on the face of it at least, the Klausner complaint doesn’t meet those criteria.
Our panel of experts will examine what strategies plaintiffs might use to pass muster at joining defendants under the new law, including using theories of indirect infringement, joint infringement, and relying on the defendants’ participation in a standard. It will also take a close look at how multi-district litigation will play out in patent infringement cases under the new law.
Other AIA changes to patent litigation will also be considered, including the elimination of the “best mode” defense and expansion of the jurisdiction of the Federal Circuit. The panelists will also give their views on how the expansion of post-grant proceedings at the USPTO will impact the volume and nature of patent litigation in the future.
• Chad Everingham, Akin Gump Strauss Hauer & Feld LLP
• David Healey, Fish & Richardson, PC
• Stephen Susman, Susman Godfrey LLP
The Domestic Industry Requirement at the ITCWebinar Date: 05/11/2011
It has been 22 years since Congress broadened the domestic industry requirement of §337 to include not just manufacturing in the U.S, but also “exploitation, including engineering, research and development, or licensing” of the IP in question. Not until recently, however, has the Commission really had to focus on these issues. Not surprisingly, the ITC has become a debate forum between those who believe that “exploitation” should have the broadest possible meaning, particularly in the context of litigation activities, and those who argue for a more narrow construction.
A series of recent decisions reveals some confusion. Our panel of experts will consider the following:
• Certain Coaxial Cable Connectors that addressed when litigation expenses can satisfy the economic prong of domestic industry
• Certain Printing and Imaging Devices which raises questions about when repair and services activities can satisfy the requirement
• Certain Video Game Systems and Controllers, which, like Certain Printing and Imaging Devices, addresses the timing of activities used to measure domestic industry
• Certain Stringed Musical Instruments in which an individual inventor failed to establish domestic industry
• Certain Multimedia Display and Navigation Devices, a pending case in which the ITC has asked the public for comments on how it should attribute total expenses in licensing a portfolio toward the exploitation of one asserted patent
• Brian Busey, Morrison & Foerster, LLP
• Peter Roossien, Freescale Semiconductor
• Tom Schaumberg, Adduci, Mastriani & Schaumberg, LLP
Licensing: The Impact of Recent Decisions on StandingWebinar Date: 03/09/2011
In an important decision regarding the standing to sue under a patent license, the Federal Circuit in late December clarified the meaning of “exclusive licensee” in WiAV v. Motorola. In reversing a district court, the court ruled for the plaintiff, holding that “a licensee is an exclusive licensee of a patent if it holds any of the exclusionary rights that accompany a patent.”
This follows an earlier Federal Circuit decision last year, Alfred E. Mann Foundation v. Cochlear, in which the issue on appeal was whether the license agreement transferred sufficient rights to an exclusive licensee to make it the owner of the patents, leaving the licensor without the standing to sue. In its opinion, the Federal Circuit discussed a number of factors for consideration in making such a determination, including exclusivity, reversion of rights after breach, the right to receive a portion of recovery, the right to supervise and control licensee’s activities, the obligation of licensor to pay patent maintenance fees, limitations on the right to sublicense and the license’s duration. Ultimately the Court ruled that “the nature and scope of the exclusive licensee’s purported right to bring suit, together with the nature and scope of any right to sue purportedly retained by the licensor, is the most important consideration.”
This panel brings together a specialist in IP transactions, an IP litigator, and an in-house counsel with extensive experience in business development and licensing. They will consider the impact of these two decisions on both licensors and licensees, in both the negotiation of new agreements and in litigation.
• Greg Feulner, DuPont
• Adam Ruttenberg, Cooley LLP
• E. Robert Yoches, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Government Contracts Boot Camp: What IP Attorneys Need to KnowWebinar Date: 12/16/2010
The rules governing the generation, use, and control of IP when dealing with the federal government present risks and opportunities to companies that can be very different from the risks and opportunities found in the commercial environment. In fact, experts speak of a “fifth category” of IP (beyond patents, trade secrets, copyright and trademarks) when dealing with the federal government: Rights in “Technical Data” and “Computer Software”.
This webinar is a primer and update on IP issues in government contracts for the experienced IP attorney and executive. Our panel of specialists will discuss how rights in technical data and computer software are determined and allocated, and how to spot “red flags” in solicitations and subcontract agreements. They will provide strategies to maximize the protection of the contractor’s private rights. Current developments will also be touched on, such as the Department of Defense’s recently proposed rules which would amend regulations related to patents, data and copyrights.
- W. Jay Devecchio, Jenner & Block
- Douglas Lashmit, IBM Corp.
- Nicole Owren-Wiest, Wiley Rein
Licensing In Innovation: Working With Independent Inventors And Small CompaniesWebinar Date: 12/09/2010
Eager to jumpstart innovation and outthink competitors, corporations are casting a wider net for business ideas and technology. For instance, GE just named the first winners in a contest to identify promising ideas regarding smart grids. According to a recent article in Bloomberg Businessweek, Cisco Systems, Netflix, and PepsiCo have also launched competitions to encourage outsiders to submit inventive ideas, while P&G, Starbucks, Dell, and others use their websites to encourage inventors, entrepreneurs and customers to suggest new products.
But IP professionals know that such outreach has its dangers, and that relationships between individual inventors and entrepreneurial small companies, on the one hand, and large corporations, on the other, can be a challenge for both sides. IP professionals at large companies need to ensure that their companies have no liability for using internally-generated discoveries that submitters might claim is their IP. And lawyers who counsel inventors have to educate them on the realities of licensing and tone down often-outsize expectations.
Our panel of experts include an in-house counsel at P&G, a leader in open innovation which has licensed more than 1,000 ideas from outsiders, a law firm attorney with experience working both with individual inventors and in-house, and the principal of a firm that acts as an intermediary between inventors and large companies.
- Kim Zerby, P&G
- John T. Funk, Evergreen Innovation Partners
- Earl LaFontaine, Brooks Kushman P.C.
R&D Collaborations: With Competitors, Vendors, Customers And OthersWebinar Date: 12/02/2010
Companies increasingly recognize that cooperation with other companies may be the most efficient way to solve technological problems and increase the value of their own R&D. But only a foolhardy company would embrace this new openness without considering the risks.
This webinar will consider a company’s overarching concerns entering an R&D collaboration, including maximizing the IP produced in the venture, allocating ownership and rights, and protecting background IP. It will examine how those goals may be influenced by the kind of IP produced: product designs, manufacturing processes or software.
Specific provisions in a collaboration contract will be examined in detail. Topics include:
• the advantages and disadvantages of joint ownership of the collaboration’s IP
• concerns regarding joint ownership of IP by companies in different countries
• special issues regarding trade secrets
• control and obligations regarding patent prosecution and copyright registration
• IP enforcement.
• licensing rights among the collaborators.
Our expert panelists have negotiated many such deals and will give sophisticated advice on judging alternatives and avoiding pitfalls.
- Kenneth Seddon, Numonyx B.V.
- Jennifer Wuamett, Freescale Semiconductor, Inc.
- Ron Ben-Yehuda, Gibson, Dunn & Crutcher
How to Get the Most Out of a Royalty Audit – What IP Lawyers and Executives Need to KnowWebinar Date: 11/19/2010
In the current economic environment, companies need to squeeze every dollar of revenue they can out of their IP. And the work isn’t over for a licensor company once a licensee agrees to pay a royalty to use a given trademark or technology. The licensor also needs to be sure that the licensee is honest, accurate, and paying what it should. This webinar will spell out best practices for royalty audit provisions in licensing agreements and for actual audits, keeping in mind the goal of not needlessly aggravating the licensee.
• Sidney P. Blum, Green, Hasson and Janks
• Michael Labbee, Intel Corp.
• Jeff Leedom, PriceWaterhouseCoopers
• Ryan Pilgram, Qualcomm, Inc.
Whole-Genome Sequencing v. Gene PatentsWebinar Date: 11/03/2010
A whole nascent industry of life-science companies is focusing on the aim of pushing the cost of sequencing an entire human genome down to $1,000 per individual. Yet widely-available sequencing of the whole genome is already being seen as a threat to companies that have their IP tied up in patents involving single genes.
A newly announced free software-based test, published by Steven Salzberg of the University of Maryland’s Center for Bioinformatics & Computational Biology, brings that tension into particularly sharp relief. The test compares genomic sequence data against a set of known mutations in the BRCA genes.
The new software poses a broad important legal question: when sequencing all or a portion of an individual’s genome, are individual gene patents infringed upon by either the company providing the sequence, a company selling software to analyze the sequence, or the individual purchasing or requesting it? Who will be the direct infringer, and is someone liable for indirect infringement?
The answer probably rests on the specifics of the gene patents. That’s why it’s important for companies with bets on either side, ie, gene patents or whole-genome sequencing – and there are some with bets on both sides – to be thinking about the issues in sophisticated ways. And biotech litigators will certainly need to be informed about the dimensions of possible suits.
• Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
• Ned Israelsen, Knobbe Martens Olson & Bear, LLP
• Ken Chahine, University of Utah
Apportioning Risk in Sales & Licenses: Warranties, Limitations of Liability and IndemnificationWebinar Date: 09/23/2010
Companies that buy or license technology from others didn’t used to have to worry much about being sued for patent infringement on that technology — the patent holder would take its dispute up directly with the other supplier, because the buyer or licensor was also likely the patent holder’s own customer or potential customer. But that equation has changed. For instance, when Rembrandt Technologies wanted to enforce its patents involving digital TV, the patent holding company sued a group of cable systems operators including Cablevision and Time Warner, but not the manufacturers whose components allegedly infringed the patents.
This situation has heightened the tensions between suppliers and buyers/licensors. In May, for instance, Sprint Nextel sued its suppliers Sanyo, Kyocera and Palm in the U.S. Court for the District of New Jersey, claiming that they are obligated to pay Sprint’s defense costs and potential liabilities in an infringement case brought against it by Digital Technology Licensing.
This panel of experts will give sophisticated advice on these situations, including how to draft agreements that eliminate ambiguity and properly allocate risk, strategy on how to enforce indemnities through litigation if necessary, and how to deal with lurking problems in existing patent and license portfolios.
• Allen Baum, Brinks Hofer Gilson & Lione
• Terry Garnett, Paul, Hastings, Janofsky & Walker LLP
• Krish Gupta, EMC Corp.
Licensing Rates in Settlement Negotiations: Private No Longer?Webinar Date: 06/09/2010
In its February decision in ResQNet.com v. Lansa, the Federal Circuit emphasized that “the trial court must carefully tie proof of damages to the claimed invention’s footprint in the market place.” The decision referred to the possibility that litigation settlements may be the best evidence of a patent’s actual value. The court’s invitation was neither explicit nor without several caveats that continue to reflect a reticence to base a damage award on a prior settlement. Nonetheless, at least two district courts in the following month – Tyco Healthcare v. E-Z-EM, and DataTreasury v. Wells Fargo, both in the Eastern District of Texas – have permitted discovery of settlement negotiations as well as information on the admitted settlements at trial. This could be a big change for IP owners and patent litigators. This webinar will discuss the implications, the ways in which plaintiffs and defendants gather information on royalty rates, and whether the Federal Circuit will weigh in again on what should be considered in a reasonable royalty analysis.
• Nicholas Groombridge, Weil, Gotshal & Manges, LLP
• Ray Niro, Niro, Haller & Niro, Ltd.
• Barry Estrin, DuPont
The Gene Uncertainty: What to Do After MyriadWebinar Date: 05/25/2010
This webinar will not focus on the correctness of U.S. District Court Judge Sweet’s decision this spring in Assoc. for Molecular Pathology v. USPTO. The court found that claims to isolated DNA and methods of use for diagnosis do not qualify as patentable subject matter. Instead this webinar will offer advice to biotech companies, universities, other researchers — and their outside counsel — on how to deal with several years of uncertainty as the Myriad case likely winds its way to the U.S. Supreme Court. This expert panel will offer patent prosecution strategies and assess the alternative of trade secret protection. They will also address: How is the case already impacting industry royalty negotiations and rates? How much protection will Myriad and other companies have from their remaining claims to stand up to infringers?
• Kevin Noonan, McDonnell Boehnen Hulbert & Berghoff LLP
• Ken Chahine, University of Utah, S.J. Quinny College of Law, BioLaw Project
• Ned A. Israelsen, Knobbe Martens Olson & Bear, LLP
Recent Decisions in Licensing: The Importance of Who, What, Where, and WhenWebinar Date: 03/11/2010
A handful of recent significant appellate decisions underline the key importance of careful drafting in license agreements, particularly when it comes to delineating exactly who the parties are, what’s being licensed and the implications of future business events. These decisions include Imation Corp v. Koninklijke Philips and TransCore v. ETC at the Federal Circuit, Warf v. Xenon at the 7th Circuit Court of Appeals, and Cincom Systems v. Novelis at the 6th Circuit Court of Appeals. This panel of experts will draw out the practical ramifications of these decisions for licensing agreements and litigation.
• Barton E. Showalter, Baker Botts LLP
• Paul Devinsky, McDermott Will & Emery LLP
• Lisa K. Jorgenson, STMicroelectronics, Inc.