Patent Law Practice Center

Strategies For the New Patent Law Frontier

In the current economy, more and more companies are seeking to monetize their patent portfolios.  If your involved in the utilization of patents as business assets, you know that understanding patent transactions has never been more important. Earlier this week, I had an opportunity to attend PLI’s Advanced Patent Licensing 2011 via webcast (available soon on demand) where an impressive group of experts offered an abundance of advice on patent licensing. I found Mark S. Holmes’, CEO at PatentBridge and Co-Chair of the program, segment where he offered practice tips for patent licensing particularly useful.  Here is an excerpt from his presentation materials:

What is a “Suitable” Confidentiality Agreement?

-Includes basic terms such as that anything said or written as part of the negotiations would not be disclosed to third parties

-Could a potential licensee file pleadings sufficient to establish a declaratory judgment without disclosing the confidential information? (more…)

PLI’s Advanced Patent Licensing 2011: Current Developments and Best Practices

In the current economy, more and more companies are seeking to monetize their patent portfolios.  If your involved in the utilization of patents as business assets, you know that understanding patent transactions has never been more important.  I recently received this outline from Joseph Yang, Partner at PatentEsque Law Group and Co-Chair of PLI’s Advanced Patent Licensing 2011 (scheduled for October 24, 2011 in San Francisco and via live webcast) that explores the law of patent licensing and the business of licensing.

Here is an excerpt from the outline:

In any “patent” or “technology” licensing effort, it is critical to understand the interplay between the business and legal aspects of the transaction.  The legal team must build a legal structure that is consistent with the requirements of the law, while the business team must have a deal structure that meets the grantee’s business needs.  Unfortunately, there is often a inadvertent chasm between the two sides — the lawyer has little experience in business, and vice versa. (more…)

Join Us For Patent Litigation 2011 on September 19-20

Rapid changes in patent law require practitioners, whether plaintiff’s or defendant’s counsel, to be up-to-date on the current state of the law and to develop successful litigation strategies and tactics. Whether you are plaintiff’s or defendant’s counsel, attend this annual program to ensure that you are up-to-date on the current state of the law and on how to develop successful litigation strategies and tactics.  Join us for PLI’s Patent Litigation 2011 on September 19-20 in San Francisco (also available via live webcast or on October 13-14 in Chicago & on November 14-15 in New York) where faculty of outside and in-house lawyers who have earned national reputations in patent litigation by trying a wide variety of bench and jury patent trials,  will provide comprehensive coverage of every phase of a patent lawsuit. Through lecture and demonstration, you will be able to hone your patent litigation skills in just two days!

Here’s what you will learn:

• An expanded opening session focusing on the impact of new case law on patent litigation, including recent Supreme Court and Federal Circuit decisions
• An in-depth exploration of issues of joint/multiple infringement
• Growing trends in ITC practice
• Why is patent litigation so expensive? An analysis of the expense of patent litigation and strategies to effectively manage these costs
• Strategy and tactics in concurrent reexamination proceedings
• Fact and fiction in jury trials: what gets through to the jurors?
• Current trends in patent damages in the post-Uniloc environment

Click here for more information on Patent Litigation 2011!

 

Upcoming Audio Briefings On Recent Supreme Court Decisions

The Supreme Court  has decided three cases this past month that could have a big effect on patent law.  To help you understand the significance of these decisions and their implications, PLI is offering three timely and topical One-Hour Audio Briefings.

1. June 24th – Global-Tech v. SEB: Supreme Court Holds knowledge Requirement Satisfied by Willful Blindness for Patent Infringement:  On May 31, 2011, the U.S. Supreme Court handed down its decision in Global-Tech Appliances, Inc. v. SEB S.A. In an 8–1 decision, with Justice Alito writing for the Court, the Court concluded that induced infringement requires knowledge that the induced acts constitute patent infringement, not just knowledge that it was encouraging certain acts which just happened to infringe a patent. Examining the statutory language and tracing pre–adoption case law, the Court further concluded that a defendant’s deliberate indifference to a known risk that a patent exists would not be sufficient to demonstrate knowledge, which was the Federal Circuit’s view below, but that “willful blindness,” well–established in the criminal law context, is enough to satisfy the knowledge element. Although it announced a different standard, the Court concluded that the evidence in this case easily satisfied that standard. For such a doctrine to apply, a defendant must subjectively believe that there is a high probability that a fact exists, and must take deliberate actions to avoid learning of that fact. In dissent, Justice Kennedy argued that the Court took a step too far in concluding that willful blindness is a form of knowledge, and would have required actual knowledge.  This briefing will be conducted by Peter J. Brann, a partner in the law firm of Brann & Isaacson, whose practice focuses on intellectual property litigation, R. Ted Cruz of Morgan, Lewis & Bockius LLP and counsel of record for SEB, and William Dunnegan of Dunnegan LLC and counsel of record for Global-Tech Appliances. (more…)

Fundamentals of Patent Prosecution Highlights: Claim Drafting & Preparation of Patent Application

Another great presentation I sat in on today at Fundamentals of Patent Prosecution 2011 was an Introduction to Patent Drafting. The speaker was Willian Frommer of Frommer Lawrence & Haug .  Here are the highlights from the discussion:

 Frommer suggested that whenever possible, the attorney should interview the inventor to obtain a detailed understanding of the invention and that an attorney’s role is to learn of a specific embodiment of the invention, but also to predict possible alternative embodiments and implementations that may be brought to market. He offered two practice tips: 1) Courts will sometimes limit a claim to a preferred embodiment or even invalidate claims that are broader than the disclosed embodiments.  The more embodiments, the better.  Try to anticipate competing products that may affect your client’s market and 2) The inventor is often the best source for alternative embodiments. (more…)