2013 01 09 gguls pat lit - introduction (class 1)
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January 9, 2012
GOLDEN GATE UNIVERSITYSCHOOL OF LAW:
PATENT LITIGATION
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Beck:
(408)938-7900jbeck@beckross.com
Morrill: (415) 823-8214
morrilladr@gmail.com
Mitchell: (415) 766-3514
brian.mitchell@mcolawoffices.com
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Provide an overview of a patent case
for: Civil litigators involved in patent litigation
Patent prosecutors providing litigation support
Patent prosecutors involved in post-grant review ofan issued patent
Focus is on strategy and tactics
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Inventor discloses the invention
Public benefits from that disclosure Public in return gives inventor a patentgrant for a limited period of time
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Patents are obtained from a
government agency But it is not like a trip to the DMV
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Courts will often show a 17 minute
video An Introduction to the Patent Systemfrom the Federal Judicial Center Available from the Centers web site or YouTube Comes with a sample patent
Who will like this video better thepatent owner or accused infringer?
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Largest revision of patent laws in 60 years
Final changes become effective in March Modified first to file system (but it will be
years before new case law evolves.
PTO post grant review revised
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Exotic and non intuitive governing law
Can be extremely expensive Specialized procedural rules
Often technical, hard to explain
subject matter
No intrinsic morality
Hard to evaluate Can be bitter and acrimonious
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Claims/claim construction
Prior art and obviousness Doctrine of Equivalents Willful infringement
Inequitable conduct Damages Burden of proof/evidentiary rules
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Less than $1million at risk: $650,000
$1-$25 million at risk: $2,500,000 Over $25 million at risk: $5,000,000
AIPLA 2011 Economic Survey, Appendix A,Median Costs
[P]erhaps the most profitable kind oflitigation other than plaintiffscontingency-fee cases. Peter Zeughauser
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Special pretrial rules for patent cases Rules vary district by district Infringement contentions, invalidity contentions,
claim construction
Claim construction required in each case Reviewed de novoby the Federal Circuit
PTO procedures Post Grant Review Reexamination
International Trade Commission - analternate forum
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Juries (and Judges) may not
understand the technology Extensive use of analogies
Technical expert testimony is essential
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Protective cover for laptop computer
U.S. Patent No. 7,643,274 Ear Tip
U.S. Patent No. 7,681,577
Exercise Kit and Method of UsingSame U.S. Patent No. 6,258,014
Helically Grooved Foam Football U.S. Patent No. RE33449
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Often boring cases
Complicated issues Few heroes/villains
So what can be the themes?
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They stole/copied my invention
Goodness of invention
Patent approved by government (the ribbon) David v. Goliath
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Im the realinnovator
I am the realowner of the patent
Patentee didnt keep bargain no full disclosure Patentee cant compete in the market
Patentee is trying to suppress a better product
David v. Goliath
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Words, not facts, at issue
Unpredictable court rulings Befuddled juries (and judges)
De novoFederal Circuit review
Plaintiffs case gets worse from day 1
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These patent cases
involve moreacrimony than anyother category of
cases which I have,including an actualfistfight in adeposition.Anonymous DistrictCourt Judge
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First, determine what your client
wants Second, determine if you can deliverwhat the client wants
Analyze remedies at the beginningof the case Third, determine how much it will cost(and tell your client)
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Planning Goals Deadlines Costs
Organization Staffing Roles Communication
Trial Binder Actual or virtual?
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Formed in 1982
Non-regional (jurisdiction notgeographical)
Hears appeals from patentcases including non-patent issues
Historically considered pro-patent
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2011 Pilot program for 14 districts Northern, Central and Southern Districts of California and
District of Nevada among others
Non-specialist judges may declinepatent cases, which will then be
assigned to specialists Northern District: Ware, Whyte, White, Koh and Davila
Good or bad idea?
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Does the law of the Regional Circuit or
the Federal Circuit apply? The rule:
Issues not unique to patents
Use Regional Circuit law Issues unique to patents
Use Federal Circuit law
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What were the facts and the issue? Biodex moved for a directed verdict at the close
of testimonyJury verdict for Loredan Biodex did not renew motion or make a JNOV
(JMOL) motion after verdict Was Biodex required to renew its motion for
directed verdict or make a JNOV motion to obtainappellate review of sufficiency of evidence?
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Whose law applied? Federal Circuit law applied
Why? Because of need for uniformity, rather than
different District Court procedures
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Patents are issued to individualinventors One or more
Patents are transferred by assignment One or more
Patent rights are granted by license License = Agreement not to sue
Can be multiple licenses on the same patent
Exclusive or nonexclusive license Geographic limitations on license
Line of business limitations on license
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Who can sue?
Sole owner, co-owners, or exclusive licenseeof patent
Why?
Who can be sued? Direct infringers, inducers of infringement, or
contributory infringers may be sued
Officers, affiliates, customers, etc.
Exporters and importers
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Ortho sued as exclusive licensee ofAmgen
Amgen license exclusive in certainfields except against Amgen
License granted Ortho right to sue incertain circumstances Held:
Non-exclusive license Grant of right to sue insufficient for standing
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How do you distinguish an exclusivefrom an non-exclusive license? Territorial limitations Reserved rights and exclusions Temporal limitations
Termination rights How do you join an unwillingpatentee?
When is a patentee indispensable? Pre-assignment damages
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Poly-America obtained a judgment for$7M lost profits and $5 M reasonableroyalty from GSE Poly-America owned the patents
The sales were made by Poly-Flex, a
sister company Poly-Flex was a non exclusive licensee
Reversed as to lost profits A patent owner cannot recover the lost profits of
its licensees However . . .
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Affirmed as to reasonable royalty A patent owner does not have to have sales to
recover a reasonable royalty
Should Poly-Flex have joined in thesuit? Only an exclusive licensee may recover damages
Poly-America, LP v. GSE Lining Technology, 383 F.3d1303 (Fed. Cir. 2004)
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Lear hired Adkins to develop an improvedgyroscope
Adkins promptly developed an improvedlow cost method of building gyroscopes
Lear agreed to pay royalties in two written
licenses Lear refused to pay royalties based on
patent invalidity arguments
CA Supremes: A licensee is estoppedtodeny the validity of the licensors patent
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What was the Federal Issue involved?
Federal law governs U.S. patents California was enforcing a license
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A patent license maychallenge the
validity of the licensed patent Why?
There is a public policy against monopolies, andpatents are an exception
It is good to get invalid patents off the books Who has more incentive to challenge patent
validity than one who is paying royalties?
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Adkinss license to Lear included the
period prior to issuance of his patent Could Lear challenge its obligation topay royalties during this period, where
no ideas existed? A matter of state law, consistent withthe Federal policy
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Diamonds employee-Dr. Welter-developed aswine vaccine
He assigned all rights in patent application toDiamond
He then left and started Ambico, also making
swine vaccine Sued for patent infringement He defended by asserting patent invalidity
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Can Dr. Welter claim that his own patent isinvalid? Or is he precluded by assignor estoppel?
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Held: A patentee generally may notchallengethe validity of the patent which he hasassigned
Why different than Lear v. Adkins?1. Unfair and unjust;
2. Implicit representation that patent has value; and3. Dr. Welter executed an inventors oath
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The rule is not automatic, but requires aweighing of the equities
If the claims are different than those whichDr. Welter approved, perhaps he canchallenge them
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Q: How infectious is the estoppel?
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