Philip Brooks' Patent Infringement Updates

Patents Obviousness Over Same Prior Art Raised During Ex Parte Reexamination

The following is excerpted from a March 4, 2010 Harness Dickey news item regarding Media Technologies Licensing, LLC. v. Upper Deck Co., 2009-1022(Fed. Cir. Mar. 1, 2010):

A divided Federal Circuit panel affirmed summary judgment that claims in Media Tech’s two patents to trading cards with attached items or fragments of memorabilia were obvious over prior art that had been considered in reexamination proceedings: a Marilyn Monroe trading card with diamond, hotel stationary with piece of sheet one of the Beatles slept on, a holy card of a Capuchin friar with attached piece of his clothing, and a James Dean greeting card with jeans material.  (In an interesting decision on petition to dismiss the reexamination because the unique cards with attached objects were not “printed publications,” the PTO held there was a “colorable argument” that they were so that the reexamination could proceed; the patent owner would be able to raise the issue again on appeal. The decision noted evidence showed public availability and accessibility.  Reexamination certificates were issued without an appeal being taken.)  The panel found the claims obvious as an expert opinion showed sports card designers adopted ideas from other card genres, with no mention of the PTO’s decision to issue reexamination certificates after considering the same prior art. 

Access the full news item and a link to the Federal Circuit's opinion here.  A 90-minute Strafford CLE webinar/teleconference titled, "Obviousness Standard for Patents Post-KSR" will take place on April 14, 2010.

Supreme Court Reversal Rates: Evaluating the Federal Courts of Appeals

The ABA's Section of Intellectual Property Law is hosting the above-titled teleconference on March 18, 2010:

The January/February 2010 issue of Landslide® magazine presented an empirical study of the U.S. Supreme Court’s dispositions of cases from the 13 U.S. Courts of Appeals. The author of the study, Roy E. Hofer, of Brinks Hofer Gilson & Lione, found that the reversal rate (83 percent) for the Federal Circuit was higher than any other circuit court’s, including the so-called “rogue” Ninth Circuit.

In this Landslide Teleconference Series program, Moderator Denise W. DeFranco will solicit the reaction of Chief Judge Paul R. Michel of the U.S. Court of Appeals for the Federal Circuit. Nationally recognized Supreme Court practitioner Carter G. Phillips, of Sidley Austin LLP, will also share his views as to whether the Federal Circuit has replaced the Ninth as the “rogue” circuit.

FACULTY

• Denise W. DeFranco (Moderator), Finnegan, Henderson, Farabow, Garrett & Dunner LLP
• Chief Judge Paul R. Michel, U.S. Court of Appeals for the Federal Circuit
• Carter G. Phillips, Sidley Austin LLP

More details and registration are available 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.

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)

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!”

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.

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).

The State of Patent Damages Law After Lucent v. Gateway

On December 16, 2009, the Section of Intellectual Property Law of the ABA presents the above-titled Teleconference & Live Audio Webcast.

The Federal Circuit's recent decision in Lucent Technologies Inc. v. Gateway Inc. has put the patent damages reform debate in a new light.

In a decision by Chief Judge Michel, the Court vacated a half-billion dollar award against Microsoft, and used that opportunity to opine on the "entire market value" rule, as well as comment upon criticisms in Congress and elsewhere about the Court's prior precedent in this area.

This program will discuss the Lucent v. Gateway and other recent important decisions on patent damages from the perspective of both lawyer and expert. Our panel will analyze the current state of the law and where it might be (and should be) headed particularly in light of these decisions and proposed patent reform legislation.

Faculty

• Brendan Gardiner (Moderator), Caterpillar Inc.
• Gary Griswold, 3M Innovative Properties Company
• Kathleen (Kathi) Kedrowski, Navigant Consulting

More details and registration are available here.

Intellectual Property Issues in Business Transactions 2010

Practising Law Institute is hosting the above-titled seminar on January 21 - 22, 2010 at the PLI New York Center-New York, NY (with a follow-up seminar/live webcast on February 23 - 24, 2010 in San Francisco). The series is chaired by Steven I. Weisburd of Dickstein Shapiro and co-chaired by Eric A. Prager of K&L Gates.

Why You Should Attend

This program gives attendees the tools they need to assess intellectual property as a strategic asset, to consider opportunities to monetize it, and to structure business transactions so as to match business goals and avoid costly missteps.  Topics to be covered will include IP portfolio review and management, licensing, valuation, and enforcement.  The expert faculty will also review joint development, bankruptcy, tax and due diligence issues.  And as a special feature this year, we have added two panels covering the topics of due diligence and licensing from the perspectives of experts who will share their extensive experiences in the information technology, biotech and media/entertainment industries.

What You Will Learn

• How to identify the intellectual property a business should own
• How to monetize intellectual property assets
• Tips for licensing in and licensing out intellectual property
• How and when to enter strategic alliances and engage joint venture partners
• Key due diligence issues for buyers and sellers of intellectual property
• How to administer and finance an effective enforcement program
• Ethics issues arising in transactions related to intellectual property

More details and registration are available here.