Philip Brooks' Patent Infringement Updates

PriorSmart Launches Patent and IP News Aggregator

On August 1, 2009 PriorSmart launched a patent and intellectual property news aggregator.  The website includes active tweeting with 400 followers as of last week.

The news page includes:

1. USPTO Weekly stats
2. Patent Litigations
3. Top Patent Tweets
4. Patent Blogs

Let me know what you think about this service, by posting a comment below.

Judge's Opinion on Enhanced Damages, Prejudgment Interest and Costs in Krippelz v. Ford

In an update to my August 26, 2009 post on the Krippelz v. Ford, Judge James B. Zagel issued a November 18, 2009 Memorandum Opinion and Order in the Jacob Krippelz, Sr. v. Ford Motor Company case in the Eastern Division of the United States District Court, N.D. Illinois.

Judge Zagel writes:

I am awarding $11,685,957 in prejudgment interest, calculated using an interest rate of prime plus 1%, compounded quarterly, on the first day following the quarter during which the royalties were actually earned. 

• During the ten-year period of infringement, Ford's long-term and short-term borrowing rate has averaged between .7% and 1.47% above prime. Because of the large risk of non-repayment, the rate of prime plus one percent is appropriate here.
• Ford has failed to demonstrate the existence of any special circumstance warranting a deviation from the norm put forth by the Seventh Circuit, and as a result, the interest in this case must be compounded.
•  Because Ford offers no argument as to why annual compounding is more appropriate in this case than quarterly, the interest award to Krippelz will be compounded quarterly.
• Had Ford been making quarterly royalty payments to Krippelz, they would have been based on sales made during each quarter, calculated at quarters' ends, and then paid to Krippelz...For this reason, interest should be compounded at the end of each quarter.
• ...taxes should not be deducted from Krippelz's award of prejudgment interest.

I am granting Krippelz's motion for costs.

In Read Corp. v. Portec, Inc., 970 F.2d 816, 827 (Fed.Cir.1992), abrogated in part on other grounds by Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) (en banc), the Federal Circuit set forth the factors for consideration in determining whether a plaintiff should be awarded enhanced damages for a defendant's willful infringement. I will discuss each factor in turn.

1. Whether the infringer deliberately copied the ideas or design of another (...this factor weighs against Ford and in favor of enhanced damages.)
2. Whether the infringer, when he knew of the other's patent protection, investigated the scope of the patent and formed a good-faith belief that it was invalid or that it was not infringed (...enhanced damages)
3. The infringer's behavior as a party to the litigation (They do not necessitate the enhancement of damages.)
4. The defendant's size and financial condition (This factor is neutral.)
5. Closeness of the case (...in favor of enhancement.)
6. Duration of the defendant's misconduct (...in favor of enhancement.)
7. Remedial action by the defendant (...in favor of enhancement.)
8. Defendant's motivation for harm (...this factor is neutral.)
9. Whether the defendant attempted to conceal its misconduct (This factor is neutral.)

...of the nine Read factors, I have found that only five weigh in favor of enhancement, and the remaining are neutral. For this reason, I find doubled damages to be appropriate here. Because Ford's willfully infringing sales represent 91.38% of the total accused sales in this case, Krippelz is entitled to an additional $21,017,400, over and above the jury award of $23,000,000.

See the full opinion here.

Woodshedding Witnesses

The ABA's Section of Litigation presents a live audio webcast and teleconference on Tuesday, February 9, 2010:

This session will discuss how far is too far when it comes to coaching witnesses for deposition or trial. Some have called coaching witnesses the law's "dirty little secret" because everyone does it, but no one gets caught. The recent case of Ibarra v. Baker, which upheld sanctions against attorneys for their role in improperly coaching witnesses prior to depositions, highlights the fact that sometimes lawyers do get caught, and more importantly, that attorneys must follow the rules of ethics whether they are caught or not.

Join our expert faculty as they discuss the limits Ibarra and other sanctions cases place on attorneys when preparing their witnesses for deposition or trial and the ethical rules applicable to such preparation. Peripheral issues such as how the rules apply to clients versus non clients and limitations on discussions with clients and witnesses during the deposition process will also be explored.

Faculty

• Teresa Rider Bult (moderator), Constangy, Brooks & Smith, LLP
• Daniel Small, Holland & Knight
• Dori Ann Hanswirth, Hogan & Hartson, LLP
• Kenneth M. Reiss, Northrop Grumman

More details and registration are available here.

The Flip Side of ‘Reverse Payments’

The following is excerpted from an article by Steven Seidenberg in the February 2010 issue of the ABA Journal:

For the second time in three years a case about “reverse payments” is before the 2nd U.S. Circuit Court of Appeals. And this time the New York City-based court may ignore its own binding precedent and do a sharp about-face on the issue.

The last time the 2nd Circuit considered the issue, in In re Tamoxifen Citrate Antitrust Litigation, a three-judge panel allowed a maker of a patented drug to settle an infringement suit by paying off the alleged infringer, which had sought to make a generic version.

Such payments—in stark contrast to ordinary settlement practice where the alleged wrongdoer compensates the patent holder—are common in disputes between patented-drug owners and makers of allegedly infringing generics. The supposed infringer is not merely getting off scot-free but is also getting extremely well-compensated by the supposedly injured party. Reverse pay settlements can run into hundreds of millions of dollars.

According to the Federal Trade Commission, consumer advocates and many antitrust experts, these payments violate antitrust law; critics say they are no more than patent holders buying off their competition.

Read the full article here.

Patent Trolls: Acacia is One Company Tech Giants Like to Avoid

The following is excerpted from a February 2, 2010 article by Susan J. Campbell, TMCnet Contributing Editor:

An intense look around any industry is likely to turn up companies that seem to operate on a different level. For the technology sector, that company is Acacia Research.

According to a recent Business Week report, this company has filed at least 337 patent-related lawsuits in the 18 years since its inception.
 
Just what does the company make? Nothing.

Acacia’s business plan consists of acquiring patents from inventors and seeking fees from companies that it claims infringe on those patents. The company has been quite successful in its pursuits, anticipating $68.8 million in sales this year, up from $34.8 million in 2006.

The company licenses technologies it does not design or distribute and is classified as a nonpracticing entity. A number of tech companies refer to Acacia as a somewhat less friendly term: patent trolls.

Read the full article here.  In related news by Robin Wauters of TechCrunch.com at The Washington Post on February 3, 2010:

Nice timing, Acacia Research Corporation. The mother of all patent trolls patent acquisition, development and licensing company, which was profiled in depth by BusinessWeek just two days ago, this morning announced that it has been awarded a total of $12.4 million in a patent infringement case against Yahoo.

Read the full article here.

AULR Federal Circuit Panel Discussion

Event Title:	A First Look at the 2009 Decisions of the United States Court of Appeals for the Federal Circuit
Date:	Feb 4, 2010
Time:	6:30PM - 8:00PM ET
Location:	Washington College of Law, American University  4801 Massachusetts Ave, NW - Room 603 Washington, DC 20016
Description:	To commemorate the 25th Anniversary of its Federal Circuit issue, the American University Law Review will host a panel of practitioners who will discuss their impressions of the Federal Circuit’s decisions in 2009. The panelists will offer their insights on significant cases and jurisprudential trends in the areas of patent, trademark, international trade, government contracts, and veterans claims law. The panelists for this program include: Patent: Joyce Craig, Finnegan LLP; Trademark: Rebeccah Gan, Washington College of Law ’01; Government Contracts: Dan Graham, Wiley Rein LLP; International Trade: Pat Fitch, Alston + Bird LLP (WCL ‘08), and Veterans Claims: Lee Perla, Jones Day.  Michael Carroll, Professor and Director of the Program on Information Justice and Intellectual Property (PIJIP), and Scott McCaleb, President of the Federal Circuit Bar Association, will moderate. In addition to on-site attendance, the FCBA will also broadcast the program live on February 4, 2010 as a part of its regular Horizons series.

Agenda: 5:30-6:30 – Reception

6:30-8:00 – Panel Discussion

Each panelist will speak for 15 minutes on 1-2 significant 2009 Federal Circuit cases in their subject area. The moderators will transition the discussion between each group.  The remaining 15 minutes will be reserved for questions.  The cases to be discussed are:

Patent: 

·   Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 576 F.3d 1348 (Fed. Cir. 2009), plus a general discussion of the Court’s recent trends in approaches to deciding cases

Trademark: 

·   In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009)

·   In re Sones, slip op. 2009-1140 (Fed. Cir. Dec. 23, 2009)

Government Contracts:

·   Axiom Resource Mgmt., Inc. v. United States, 564 F.3d 1374 (Fed. Cir. 2009)

·   Bell BCI Co. v. United States, 570 F.3d 1337 (Fed. Cir. 2009)

·   Daewoo Eng’g & Constr. Co., Ltd.  v. United States, 557 F.3d 1332 (Fed. Cir. 2009)

·   Tecom Inc. v. United States, 566 F.3d 1037 (Fed. Cir. 2009)

International Trade:

·   United States v. Inn Foods, 560 F.3d 1338 (Fed. Cir. 2009)

·   SKF USA, Inc. v. United States Customs and Border Patrol, 556 F.3d 1337 (Fed. Cir. 2009)

Veterans Claims:

·   Shinseki v. Sanders, 129 S.Ct. 1696 (2009), reversing Sanders v. Nicholson, 487 F.3d 881 (Fed. Cir. 2007)

·   Henderson v. Shinseki, 589 F.3d 1201 (Fed. Cir. 2009)

·   Reizenstein v. Shinseki, 583 F.3d 1331 (Fed. Cir. 2009)

Rambus Comments on ITC Ruling

The following is excerpted from remarks by Tom Lavelle, Senior Vice President and General Counsel for Rambus, during the Rambus, Inc. Q4 2009 earnings call on January 28, 2010 available in the transcript of the call at Seeking Alpha:

As we announced last Friday, in the case filed against NVIDIA and the other respondents using NVIDIA products, Administrative Law Judge Essex found three of the five patents we asserted valid, enforceable and infringed by NVIDIA. These three patents are known as the Part 1 patents.

On the other hand, the ALJ determined there was no violation regarding the other two patents we asserted in the case Ware patent as well. More on that in a minute. This is an unequivocal win for Rambus. Infringement of a single claim of one patent is all that is needed as the basis for the ITC to issue an exclusion order.

We have numerous claims in the three patents that the ALJ found to be valid, enforceable and infringed by NVIDIA. The next step in this process is for the parties to petition the full commission to review the initial decision. The target date for the Commission’s decision is May 24th of this year. After that there will be avenues of appeal available to both sides in the matter.

If the Commission agrees with the initial decision, we could see the signing of an executive order mid-year, which bars the importation of infringing NVIDIA products and of the other respondents' products which contain infringing NVIDIA products. That order would also require that NVIDIA and other domestic respondents cease and desist the sale of infringing products in the United States.

Our ultimate goal in pursuing this and the patent infringement action against NVIDIA is to get fair compensation for the use of our patented inventions in the past and to ensure that we protect our IP rights going forward including protection of our proprietary leadership products. Returning to the Ware patents, we do plan on appealing to the full commission with regard to their validity and infringement by NVIDIA’s accused products.

Access the full transcript here.

Gen-X Ideas on IP

The above-titled blog was launched by a group of almost 20 students from the IP and Technology Management department of the National Academy of Agricultural Research Management (NAARM) of the Indian Council of Agricultural Research on February 6, 2009.

The following topics are covered:

• Geographical Indication (9)
• National Innovation Foundation (NIF) (3)
• Patent Informatics (2)
• Technology Management (2)
• IP valuation (1)
• Technology Transfer (1)
• grass root innovations (1)

Take a look here.

Teva Receives Favorable Court Decision Regarding Generic Temodar(R)

The following is excerpted from a January 27, 2010 article at Medical News Today:

Teva Pharmaceutical Industries Ltd. (Nasdaq: TEVA) announced today that the U.S. District Court for the District of Delaware has issued a decision in its litigation over the Company's Abbreviated New Drug Application (ANDA) to market its generic version of Schering-Plough's brain tumor treatment Temodar® (temozolomide). The Court found that U.S. Patent No. 5,260,291 is not enforceable due to prosecution laches and inequitable conduct.

Teva's tentatively approved ANDA to market temozolomide is currently pending final approval at the U.S. Food and Drug Administration (FDA). As the first company to file the ANDA that contained a paragraph IV certification for Temodar®, Teva is eligible to receive 180-day Hatch-Waxman statutory exclusivity to market this product.

Annual sales of the brand product were approximately $369 million in the United States based on IMS sales data.

Intellectual Property Contingency Consortium

I received an inquiry recently from a reader that was concerned about whether he was covering all of his legal options, but hesitant to retain an attorney.  I offered to provide him with the names of a few attorneys that handle patent infringement matters on contingency, but then yesterday I came across another possible resource.

The Intellectual Property Contingency Consortium is a group of law firms and licensing companies that assists clients - corporations and individuals - in the enforcement of patent, trademark, and copyright rights on a contingency basis.

From the West Coast to the East Coast, members of the Consortium can enforce your valuable intellectual property rights. The Consortium can scale attorney staffing up or down depending on the size of your litigation. The technical expertise of the Consortium members extends over a wide spectrum - from consumer goods to high technology.

If you would like a Consortium Law Firm Member to evaluate your case for possible representation, please email us at info@ipcontingency.com with a chronology of the events of your case, together with any relevant documents in pdf or Word format.

You should not consider a Consortium Law Firm Member to be representing you unless and until both you and the Consortium Law Firm(s) execute a written retention agreement for services.

They also offer links to companies that offer the following services:

• Damage Experts
• Liability Experts
• Prior Art Searchers
• Help in Identifying Potential Licensees & Infringers
• Litigation Tools for Winning Information

Access the Consortium and resource links here.  If you have worked with one of the Consortium law firms, please include a comment below that summarizes your experience.

What If Sequenom's Down Syndrome Test Doesn't Exist?

The following is excerpted from a January 25, 2010 blog post by Jim Edwards at BNET Pharma:

What if Sequenom (SQNM)’s Down Syndrome test doesn’t exist in any meaningful form? That is the question raised by a lawsuit filed against the company by Xenomics, which licensed a patent for the test to Sequenom and now wants its property — and a bunch of money — back.

Back story: In September 2009, Sequenom revealed the data for its non-invasive Down Syndrome test was “inadequately substantiated.” The CEO and six other execs were kicked out. The company is currently under investigation by the SEC and the FBI. One of the departing execs was sued for alleged insider trading prior to the release of bad news. Sequenom was No. 2 among BNET’s Worst Drug Companies of 2009. Sequenom has since started from scratch. The company told investors on its Q3 2009 conference call that it had just begun the process: “we are currently collecting samples, which will only be ultimately used when we have an assay that is ready for such studies.”

Xenomics’ suit strongly hints that it believes Sequenom now cannot possibly develop such a test, and may never have been able to in the first place. The complaint claims that “Defendant maintained the charade that it had valid testing procedures,” calls Sequenom’s representations about the test “fraudulent,” and uses the term “non-existence” to describe it

Read the full blog post and access a link to the complaint here.

Estimating Damages of Patent Infringement Seminar

Incremental Advantage will host the above-titled conference in Washington, DC and via webinar:

Patent damages are outlined in the 35 USC § 284 statute and state that a patent holder is entitled to at least a reasonable royalty as damages. This code also defines the compensatory nature of patent damages and allows for any damages necessary to adequately compensate the patent holder. The compensatory damages can include lost profits, price erosion, harm to company’s reputation, harm to company’s relationships with its customers and suppliers, and so on (besides a reasonable royalty).

This course is designed to address the issues that arise in the determination of reasonable royalty damages. We start with the basics of how to determine a reasonable royalty including:

> The Georgia-Pacific factors

• Rates for other similar patents
• Nature and scope of license
• Commercial relationships
• Duration of patent and term of license
• Extent of infringer use of invention
• Other

> Cost of next best alternatives

> Milestone payments

This course will also discuss how to determine the lost sales and associated lost profits using incremental costs approach. It will look into methods used to assess price erosion and other economic harms to the patent holder. Note, patent damages do not allow for disgorgement of the infringer’s profit unless it is a design patent.

This course will be held on:

1. Washington DC - January 28, 2010
2. Webinar - January 28, 2010
3. Webinar - March 23, 2010

Click here for more information, schedule of dates and times and to register!

Licensing Executives Society (USA & Canada) Celebrates 45 Years of Leadership

The Licensing Executives Society (USA & Canada) Inc., is celebrating 45 years of leadership in the business of intellectual property (IP) and licensing with the kick-off of a multi-faceted membership awareness campaign designed to recruit new members and encourage membership renewal through exciting programs and incentives. 

In honor of its 45^th Anniversary, LES is offering members who join before March 31, 2010 a $45 discount on their first year’s dues, a $25 gift card and complimentary attendance at a local LES chapter event. Join now by downloading the membership application at www.lesusacanada.org/45anniversary and emailing to membership@les.org or faxing to 703.836.3107. (Enter promo code LESPR45).

LES is the leading association for professionals involved in the transfer, use, development, manufacture and marketing of IP.  It’s unique among professional group because it draws IP leaders from an array of business backgrounds and from across industry sectors. This diversity provides members with highly valuable business connections and world-class professional development opportunities.

“LES is a welcoming community that empowers, connects and celebrates IP professionals,” said Paul Roberts, Vice President for LES Membership. “Whether you’re a veteran or brand new to the field, LES has the reach, global perspective and resources to provide the tools IP professionals need to survive and thrive in today’s competitive marketplace.”

In addition to the advantages provided by its diverse membership in terms of deal making, information sharing and problem solving, LES offers its members unparalleled professional education programs, including the LES Professional Development Series (PDS), and the Certified Licensing Professional Program (CLP).

 Through LES, members not only develop lifelong professional and personal relationships, but also build valuable professional networks through LES meetings and Industry Sector Groups, local chapter events, online social media networks and global membership directory. They also receive first-class publications and resources, such as les Nouvelles, the leading international technology transfer and licensing journal of LES International, eNews bulletins, Viewpoints bi-monthly newsletter and original benchmark industry data on deal terms, royalty rates and other aspects of IP business.

 In 2010, LES members will enjoy an expanded lineup of new programs designed to further enhance their LES experience.

• Linking Entrepreneurship and Technology Commercialization: IP for Entrepreneurs & Universities: In keeping with its 2010 theme of “Deals, Deals & More Deals,” the LES (USA & Canada) Spring Meeting will focus on deals in the entrepreneurial and university spaces, known to be hotbeds for innovation and technology advancement. The meeting will be held in Boston, MA, May 18-21.
• Around the World with LES: A global series of networking and educational events to be held On April 26^th spanning five continents, in conjunction with WIPO’s World IP Day.
• LES Monthly Webinar Series: In addition to the eNews and expanded use of social networking vehicles to keep members informed, LES will also host monthly webinars for members who want to learn more about IP issues and mechanics in the convenience of their offices. Internal negotiations are often as difficult as negotiating with parties across the table. This will be the focus of February’s webinar, Internal Negotiations: “We have met the enemy and they are us!”

Microsoft Sues TiVo To Try To Defend Customer AT&T

The following is excerpted from a January 20, 2010 article by Roger Cheng of Dow Jones Newswires published at CNNMoney.com:

Microsoft Corp. (MSFT) is suing TiVo Inc. (TIVO) as part of a broader attempt to provide legal cover for customer AT&T Inc. (T).

Microsoft filed a suit late Tuesday against TiVo in a San Francisco federal court, claiming that the Alviso, Calif., maker of digital video recorders illegally uses technology related to purchasing and delivering video and the ability to display programming information. Both are seen as an attempt to counter an earlier suit filed by TiVo against AT&T, which uses Microsoft's technology in its television service. Microsoft on Friday requested to intervene in the case on AT&T's behalf.

The latest legal salvo comes a few months after TiVo launched its own strike against AT&T and Verizon Communications Inc. (VZ), alleging that their video services illegally use its TV "time-warping" technology in their digital video recorders. AT&T's DVRs are built off of Microsoft's Mediaroom software.

TiVo hasn't been shy about using the courtroom to protect its intellectual property. The company also has a long-running dispute with Dish Networks Corp. ( DISH) and sister company Echostar Corp. (SATS) over the same DVR technology. The company has agreements with most of the cable companies and DirecTV Group Inc. ( DTV).

TiVo Chief Executive Tom Rogers said earlier this month at an investor conference that he expects a decision in the near term in the long-running dispute between his company and Dish and Echostar.

Read the full article here.

Data.gov Continues to Grow

As a follow-up to my July 7, 2009 post on the federal government's launch of the Data.gov website, J. Nicholas Hoover writes in the December 21, 2009 print issue of InformationWeek that the "site has grown from just 47 data sets when introduced in May to more than 115,000 today. And the recently launched federal IT Dashboard--a display of IT project status that corporations would do well to mimic--has not only given the public visibility into the performance of Uncle Sam's big-ticket IT projects, but put agency CIOs on notice that execution matters."

Mr. Hoover continues:

Data.gov, the government's public-facing data portal, has its conceptual roots in a data repository Kundra built as CTO of Washington, D.C., and the model has now been emulated by other local, state, and even national governments. The site has been one of the highest-profile IT efforts of the Obama presidency, though it, too, is in the early stages. So far, Data.gov contains mostly "geodata" on political boundaries--voting districts, for example--a mere drop in the bucket of government information.

Kundra's push to expand the amount and types of data on Data.gov requires overcoming ingrained practices. He says resistance to change in federal agencies and departments may be the biggest obstacle he faces in delivering on the president's IT-related priorities. "One of the most difficult parts is velocity, the speed at which we need to get things done versus the organic friction that exists," he says.

"He's built this infrastructure with the IT Dashboard and Data.gov. Now he needs to make them good and have solid execution," says Clay Johnston, director of Sunlight Labs for the Sunlight Foundation, a non-profit think tank pursuing open government initiatives.

Read the full article here.

25th Annual Intellectual Property Law Conference

The ABA Section of Intellectual Property Law in cooperation with the ABA Section of Science & Technology Law and the ABA Forum on the Entertainment & Sports Industries will host the 25th Annual Intellectual Property Law Conference on April 7 - 10, 2010 in Arlington, Virginia.

Pick up an entire year’s worth of CLE credits during the 2 ½ days of quality IP programming on the issues critical to your practice. Some program highlights include:

•The future of patent reform
•ITC IP mediation project
•Google books settlement
•Defending depositions in trademark cases
•Duty of disclosure to USPTO
•Patent damages
•Opinion of counsel
•Legal aspects of social media marketing
•Biosimilars
•Venue transfer & forum selection
•Interfacing with clients

The conference will also feature ample opportunities to network with your IP colleagues, whether at our Young Lawyers Welcome Reception, Corporate Counsel Reception, Women’s Networking Dinner, or the popular reception at the Dolley Madison House at the U.S. Court of Appeals for the Federal Circuit. In addition, a very special 25th Anniversary Gala Dinner with entertainment and dancing is planned to fete a quarter century of this preeminent conference.

The program will feature:

• Hon. Paul R. Michel, Chief Judge, U.S. Court of Appeals for the Federal Circuit
• Hon. Michael R. Fleming, Chief Administrative Patent Judge, Board of Patent Appeals and Interferences, U.S. Patent and Trademark Office
• Hon. Paul J. Luckern, Chief Administrative Law Judge, U.S. International Trade Commission
• Robert L. Stoll, Commissioner for Patents, U.S. Patent and Trademark Office
• Matthew Bryan, Director, Office of the PCT, World Intellectual Property Organization
• Maria Pallente, Associate Register for Policy & International Affairs, U.S. Copyright Office
• David L. Marcus, Chief Patent Counsel, Comcast Corp.
• Jennifer Granick, Civil Liberties Director, Electronic Frontier Foundation
• Randy Milch, General Counsel, Verizon Communications
• Elizabeth Dickinson, Associate Chief Counsel for Drugs, Food and Drug Administration
• Philip S. Johnson, Johnson & Johnson
• Fabricio Vayra, Time Warner

A brochure and registration details are available here.

Motorola and VTech Resolve Patent Litigation

The following is excerpted from a January 15, 2010 Motorola press release:

Motorola, Inc. (NYSE: MOT), VTech Communications, Inc. and VTech Telecommunications, Ltd. today announced that they have entered into a Settlement and License Agreement that will end their pending patent litigation in the Eastern District of Texas. 

“We are pleased to have reached an amicable resolution with VTech,” said Kirk Dailey, vice president of intellectual property, Motorola. Although the terms of the settlement are confidential, VTech’s license and consideration is consistent with our intellectual property licensing program, which is licensed extensively throughout the telecommunications industry. "Our strong research and development and industry-leading intellectual property portfolio are critical to our business, and we will aggressively protect that value on behalf of our customers, employees, partners and shareholders.” 

The lawsuit related to six Motorola patents asserted against VTech.

4th Annual Patent Law Institute

PLI’s 4th Annual Patent Law Institute is designed to cover the practice impact of recent developments on all three sub-groups in the patent law community: patent prosecutors, patent litigators, and patent strategic & transactional lawyers. The two-day schedule includes 6 one-hour plenary sessions of broad interest to patent lawyers and a separate breakout track for prosecution, litigation and strategic & transactional practices. Each track features 6 one-hour breakout sessions focused on each of the 3 patent practice sub-groups. In just two days, you will learn the important developments and best practices in each area. And earn Ethics credit, too! You can design the Institute schedule that best meets your individual practice needs. Do not miss this unique opportunity to sharpen your practice skills and to network with federal judges, USPTO officials, in-house counsel and outside lawyers.

What You Will Learn

Plenary sessions include:

• Director Kappos’ Keynote Address and what is upcoming in the USPTO
• Understand the practice impact of recent Supreme Court and Federal Circuit decisions
• Learn the latest on the pending Bilski case from a panel of experts
• Master the changes at the USPTO and how to manage client expectations
• Corporate counsel divulge the patent issues that keep them awake at night
• A distinguished panel of federal judges share their perspective on critical patent litigation issues
• Earn one hour of ethics credit

Plus, customize your Institute by choosing from 18 breakout sessions!

Prosecution breakout track: PTO law, rule and practice changes update; what new patent reform to expect this year from the Administration and Congress; PTO chemical and biotech PTO trends; practice tips for modern prosecution.

Litigation breakout track: best practices in the management of patent litigation; how to use ADR effectively; international patent enforcement; Federal Circuit practice tips; forum selection facts and figures.

Strategic & Transactional breakout track: inter partes reexaminations; patent exhaustion after Quanta; strategic consideration concerning Section 112 invalidity; the continuing importance of Opinions of Counsel.

The Institute will be in New York City on March 1-2, 2010 and San Francisco on March 22-23, 2010 (also via live webcast).

Patent Pending

The following is excerpted from an article by Rachel M. Zahorsky that appeared in the January 2010 print issue of the ABA Journal:

A plan to help some federal judges wade deeper into the pool of patent cases is awaiting U.S. Senate approval—just like it has for two congressional sessions.

H.R. 628 was reintroduced by Rep. Darrell Issa, R-Calif., and Rep. Adam Schiff, D-Calif., in January 2009, and the House has passed it twice. It now sits in the Senate Judiciary Committee, where it has been since March.

The bill would authorize $5 million annually to establish a 10-year pilot program in at least five U.S. district courts that deal with the largest number of patent cases.

Read the full article and reader comments here.

See also an article titled, "Should The United States Designate Specialist Patent Trial Judges? An Empirical Analysis of H.R. 628 In Light of the English Experience and the Work of Professor Moore" by Donna M. Gitter in the May 15, 2009 issue of The Columbia Science and Technology Law Review. "This Article concludes that designation of specialist patent trial judges among the federal district court judiciary is likely to reduce the high appellate claim construction reversal rate, based upon an empirical analysis of the appellate claim construction reversal rate in England, which has specialized patent tribunals."

Visualizing Patent Statistics by Means of Social Network Analysis Tools

The above-titled article by Christian Sternitzke, Adam Bartkowski, and Reinhard Schramm appeared in World Patent Information (Volume 30, Issue 2, June 2008, pages 115–131).  The following is an excerpt from this article:

In recent years, developments in the field of social network analysis brought up several software tools that facilitate visualization, analysis and interpretation of cooperation and citation data, explaining the relationship between technology fields (IPC classes), patent applicants, inventors, patent documents, etc. The tools furthermore allow the combination of several other types of analysis presented in an earlier paper and enhance their visualization. The present paper, in contrast, highlights some types of network analysis of patent data which extend methodologies currently deployed in practice. First, these types of network analysis allow the identification of important players in technology fields or corporations. Second, the connections among the players can be used for competitor analysis or for identifying partners for joint development projects. Third, the methodologies also allows the identification of key patents, and fourth, rivalry between players in the technology field.

Citation networks of patent documents highlight not only frequently cited patent families but also those citing other patent families extensively. In our example, the latter case relates to a patent family by Rohm. This patent family is technologically very broad, citing more than 80 patent families within the network. Nichia, who was frequently cited by this patent family, sued Rohm for infringement.

Read the complete article here.