Philip Brooks' Patent Infringement Updates

Example of Special Master Assignment

By Order of the Court, Blank Law & Technology was appointed Special Master to interview both Plaintiffs and Defendants to determine whether Defendants’ destruction of file servers containing project data in a patent infringement case was willful and whether such destruction prejudiced Plaintiffs’ case.  Blank Law & Technology established willfulness through the recovery of instant messages concerning the destruction, and rebuilt the servers so that data could be retrieved, thus avoiding irreparable prejudice to plaintiffs. 

Approximate Cost = $250,000.  See more examples here.

IP Trial Strategy: Buying Tivo's Bull

The following is excerpted from a June 26, 2009 article by Zusha Elinson of The Recorder appearing at Law.com:

As the make-or-break patent trial between Tivo Inc. and EchoStar Corp. got under way in Marshall, Texas, Tivo's top brass had an idea: Let's buy a cow.

It was late March in 2006, and that meant it was time for Farm City Week in the home of America's most popular venue for patent litigation. Featuring the Harrison County Cattlemen's Ball and the 4-H Cake Show, the main event at Farm City Week is the livestock auction, where prize-winning steers, heifers, lambs, goats, broiler chickens and rabbits are sold by dedicated young farmers.

Samuel Baxter, perhaps the best-known lawyer in the Eastern District of Texas, was representing Tivo...Baxter bid on the Grand Champion Steer -- the most prized farm animal at the auction -- and bought it for what at the time was a record-breaking sum of around $10,000. The lucky steer-raiser was a high-school senior from Hallsville, who, like all the students selling animals, got to keep the money for herself to use for college. They named it Tivo.

Two weeks later, on April 13, the Marshall jury found EchoStar (now known as DISH Network) guilty of infringing Tivo's "time warp" patent, used in technology that lets viewers record, fast-forward and rewind TV shows. And it awarded Tivo $74 million in damages.

Did buying Tivo the animal help Tivo the company win -- perhaps steer the jury in the right direction?

Read the full article here.

Professional Liability Policy Excludes Patent Claims

Kenneth J. St. Onge writing today, June 25, 2009, for Insurance Journal:

A professional liability policy does not cover legal fees for patent infringement lawsuits brought by a competing company, a Pennsylvania appeals court has ruled.

The ruling comes in response to a suit brought by Transcore, a company that makes technology for electronic tolling on roadways, against its insurer, Caliber One Indemnity Co.

The suit stemmed from Caliber One's refusal to pay nearly $825,000 in legal fees spent by TransCore to defend itself in a patent lawsuit brought by a competitor, X-Cyte. X-Cyte alleged that TransCore, formerly known as Amtech, was violating X-Cyte's patent protections in a system it installed for high-speed tolling.

When notified of the case, Caliber declined to pay the legal fees. Transcore then hired its own lawyers and defended the action in court, ultimately winning the underlying lawsuit brought by X-Cyte.

TransCore then sued Caliber One, claiming the insurer -- part of PMA Capital Corp. -- improperly declined coverage.

...the Superior Court found that a professional liability policy is not designed for claims brought by third parties, such as contract or patent infringement claims. Professional liability, the court said, encompasses claims made by entities that have a professional relationship with the insured. By definition, the court ruled, competitors are not counted among that group.

Read the full article here.

IP Advocate Wins Two Communicator Awards of Distinction From International Academy of Visual Arts

Non-Profit Dedicated to Empowering Academic Researchers is Honored For Excellence in Education and Branding

ATLANTA (June 16, 2009) – IP Advocate (www.IPAdvocate.org) today announced it has won two awards from the International Academy of the Visual Arts, honoring the non-profit organization with “Communicator Awards of Distinction” in the categories of Education and Branding.     

IP Advocate.org was selected from more than 9,000 entries from companies and agencies around the world, making the Communicator Award the largest and most prestigious award of its kind. 

The Communicator Awards is the leading international awards program honoring creative excellence for communications professionals. The awards are judged by the International Academy of the Visual Arts (IAVA), an invitation-only body consisting of top-tier professionals from acclaimed media, communications, advertising, creative and marketing firms.

“A communications award is especially meaningful to us, because communication is the central theme for what we’re trying to accomplish,” said Dr. Renee Kaswan, founder of IP Advocate, former research professor at the University of Georgia and inventor of the billion-dollar drug Restasis®.  “We want to give voice to the community of academic researchers – the very people who find cures for diseases and invent new technologies for us to explore, but who all-too-often are overlooked during the process of getting their discoveries from the lab to the people who need them.  We’re thrilled with this honor.”

IAVA is the second organization to officially honor IP Advocate.  Earlier this month IP Advocate announced it won the Interactive Media Award for Outstanding Achievement in Advocacy

IP Advocate is dedicated to helping academic researchers preserve their rights in their work and to cultivating an online community that focuses on safeguarding the interests of faculty inventors.  IPAdvocate.org is led by executive director, Rhaz Zeisler – a recognized industry innovator of multi-channel interactive new media and digital branding.

Already one of the most comprehensive IP resources available, IPAdvocate.org provides a storehouse of authoritative information on laws and litigation related to intellectual property issues, case studies that represent both cautionary tales and examples of commercialization done right, and an interactive forum where researchers and others can share information with each other and discuss laws, ethics, best practices, public policy on academic technology transfer and more.

A Litigator's Guide to Expert Witnesses

An American Bar Association bookstore best seller by Cecil C. Kuhne III:

Whether you are an experienced litigator or just starting your practice, you won't want to head to court or to a deposition without this book.

The admission of expert witness testimony remains one of the most contentious, critical, and interesting aspects of the modern-day litigation process. This book examines the role of the expert witness, focusing on taking depositions, expert qualifications, admissibility of testimony, attorney-client privilege, Daubert, rules of discovery and evidence, selecting and presenting experts, and direct examination of experts. It covers:

    * An overview of expert testimony
    * The legal framework
    * Supreme Court Decisions
    * Rules of discovery
    * Rules of evidence
    * Selecting experts
    * Presenting experts
    * Objecting to experts
    * Deposition of experts
    * Direct examination of experts
    * Cross-examination of experts
    * And more!

Purchase the book here.

Eastern District of Texas Venue Update

The American Bar Association's Section of Intellectual Property Law is hosting the above-titled teleconference and live audio webcast on May 15, 2009.

In light of recent orders and appeals from orders on motions to transfer venue from the Eastern District of Texas, many litigants are considering and even filing their own motions to transfer to other districts nationwide. The program will evaluate the latest legal precedents, discuss the developing standards for motions to transfer, and preview the venue provisions contained in the patent reform legislation pending in Congress.

Faculty

• Todd E. Landis, Akin Gump Strauss Hauer & Feld, LLP

• Susan McGahan (Moderator), AT&T

• Fred I. Williams, Akin Gump Strauss Hauer & Feld, LLP

More information and registration are available here.

Insurer Off Hook for Fees in Patent Suit

The following is excerpted from a May 4, 2009 article by Gina Passarella at The Legal Intelligencer:

An insurance company does not have to cover more than $800,000 in legal fees racked up by a client defending a patent infringement suit because the action was brought by a vendor, not a customer, and did not fall under the professional liability coverage of the policy, the Pennsylvania Superior Court has ruled.

The ruling in Transcore v. Caliber One Indemnity Co. is a win the for the insurance company that was appealing a Philadelphia judge's ruling requiring the company to cover the legal fees.

The court, in an opinion by Judge Richard B. Klein, said there were two aspects of Caliber One's policy for Transcore and its subsidiary, Amtech, that prevented coverage. Because the patent infringement action was brought by another vendor with no relationship to Amtech, and not a customer, it was not a "professional liability" action under the terms of the policy.

Read the full article here.

Online Resources to Evaluate Experts' Credentials and Prior Statements

The above-titled article by Michael Brennan, David Dilenschneider, Myles Levin, and Jim Robinson appears in the 2009 Annual Review from the ABA Section of Litigation's Committee on Expert Witnesses.

In a recent Vioxx lawsuit, the judge overturned a defense verdict and ordered a new trial because he found out that the defense expert had misrepresented his credentials by testifying that he was currently certified in internal medicine and cardiovascular disease when, in fact, those certifications had recently lapsed. Importantly, a relatively easy search through certification information available from the American Board of Medical Specialties would have revealed the lack of current certification to defense counsel.

Evaluating an Expert’s Credentials

A thorough researcher must double check an expert’s credentials rather than simply relying on information related in an expert’s disclosure. Studies indicate that falsifying credentials on a resume is not a rare occurrence. For instance, ResumeDoctor.com recently conducted a study of more than 1,000 resumes over a six-month period and discovered that more than 40 percent of them contained at least one significant inaccuracy relating to dates of employment, job titles, or education, and that more than 12 percent contained two or more errors.

The authors discuss a numerous sources and techniques to evaluate an expert's credentials.  Read the article here (membership required) or a more detailed version of the article here.

Auction-License-Litigate - Which Maximizes Value?

A reader contacted me a few months ago seeking my opinion on Ocean Tomo's live auctions.  I have not worked with Ocean Tomo, as my clients have always tried to seek licenses directly with companies and failing that litigating.

I attempted some research at the time to see if anyone has written on the value proposition offered by going with Ocean Tomo, or an equivalent, as compared to more traditional routes.  I found nothing at that time, but received a repeat query from the same reader today and found the following post from R. David Donoghue of the Chicago IP Litigation blog:

The Chicago Tribune ran an interesting article by Ann Meyer yesterday [link available at Chicago IP Litigation blog] discussing companies monetizing IP, specifically patents and dormant trademarks, not just through the more traditional means of litigation and licensing, but also through sales of the IP.  While there are numerous brokers who help sell IP, the article focused on Chicago-based Ocean Tomo's patent auctions.  It is not very surprising that in a down economy companies are looking to their IP as a significant source of value.  Nor is it surprising that companies would seek to avoid the upfront costs of both licensing and litigation in favor of a more immediate sale for IP the company is not using.  Of course, the continued health of the patent, trademark and copyright dockets in the Northern District of Illinois and across the country prove that companies continue to monetize their IP and protect market space from competitors through more traditional means as well.

Ms. Meyer describes a successful sale of patents through Ocean Tomo by Island Software, but does not actually provide a detailed analysis of the alternatives.  I believe having the opportunity to see the final bid prices for patent licenses that failed to close on Ocean Tomo and moved on to private license or litigation and compare the final proceeds (net of additional expenses) to the patent owner would go a long way to helping assess the auction value proposition.

Has anyone performed this type of analysis or know of more in depth analyses of Ocean Tomo or other IP auctions/brokers?  If so, please comment here.  See also, this previous post.

Daubert Motions: Keys To Offering & Defending Expert Opinions

National Constitution Center is hosting the above titled audio conference on February 18, 2009.  The speaker for the program is Clifton Hutchinson, a partner in the Dallas office of at K&L Gates, where he specializes in complex litigation and scientific expert issues, and is a frequent speaker and author on expert evidence and Daubert challenges.

The seminal case of Daubert, and a series of subsequent cases and revisions to Federal Rules of evidence have remade the law pertaining to expert testimony. But how and when do you effectively bring a challenge post-Daubert? How should you respond to a challenge of admissibility? Join us for a 60-minute audio conference where you and your colleagues will discover:

• An "expert" defined: Laws governing admissibility of testimony
• How to draft a Daubert motion: Keys to challenge expert witness testimony
• Strategies for protecting your expert from a Daubert challenge
• Expert disclosure: How to use Rules 26(f) and 26(a) to your advantage
• Key factors to consider when selecting an expert

PROGRAM HIGHLIGHTS

Tips For Effectively Presenting Daubert Motions

• Keys to expose opposing experts' lack of specialized knowledge
• Using the expert's deposition to set up your Daubert challenge
• Strategies you can use to attack the experts' theory
• Daubert factors: Evaluating the reliability of evidence

Challenging Daubert Motion: What Matters Most

• When should you challenge expert testimony?
• How to apply gatekeeping to technical & non-scientific experts
• Testing of the expert's theory: Emerging case law
• Key differences between general & specific causation

Tactics For Successfully Defending A Challenge

• Methods of circumventing Daubert: Lay witness testimony & more
• Tactics for selecting and preparing your experts for deposition
• The Daubert hearing: Practical considerations
• The use of non-testifying experts as a disclosure shield

More information and registration details are available here.