The rise of efficient infringement, a problem for universities

Recent overhauls to America’s patent laws have forced universities and other patent owners into a corner when asserting their rights. Last October, The New York Times reported on the rise of “efficient infringement” which has increased in the wake of the 2011 America Invents Act. Tools created by that legislation to challenge patent validity, such as through the Patent Trial and Appeal Board (PTAB), allow major companies with huge amounts of financial and legal resources to ignore reasonable licensing inquiries and to shift the burden onto the patent owner by challenging the patent’s validity.

Many say that hostility toward patents in the courts has reached new heights, with numerous cutting-edge innovations dealing with software, biotechnology, medical diagnostics and personalized medicine all being routinely found patent ineligible. Rather than take patent licenses, or even engage in negotiations, many companies have calculated that they are better served by ignoring patent rights and openly infringing. These efficient infringers dare universities and other patent owners to sue.

As the New York Times article notes, however, there has been a troubling pattern of associating universities with so-called “patent trolls”on the basis that, like other non-practicing entities (NPEs), universities don’t manufacture products but license their technologies to others. But universities are not patent trolls. In fact, the primary goal of the university is to make sure that as much research done at the university is commercialized as possible.


When “Patent Trolls” ARE Innovators

The term “patent troll” conjures up all kinds of images and ideas, but what is a patent troll?  Unfortunately, there is really no universally accepted definition of what a patent troll is, although if you are getting sued for patent infringement by a non-practicing entity, you probably think you are being sued by a patent troll.

My view has long been that companies that complain about patent trolls don’t really want them to go away. Patent trolls are extremely valuable to these big tech companies because they are an identifiable and unsympathetic villain, even if they cannot really be defined in any satisfying way. The image of a patent troll can be paraded about Capitol Hill whenever patent reform is being pushed, or even in front of the Supreme Court, which increasingly seems to be interested in taking them into consideration when reaching decisions, despite them not being involved in the case.

I personally hate the term patent troll, which may come as a shock to many because I use it all the time. I use it to attempt to crystalize the issue, because the term “patent troll” has over time become synonymous with “non-practicing entity,” and not all non-practicing entities are bad. In fact, many are good actors that diligently work against long odds to research and develop new technologies, treatments, drugs and therapies we all want.


Defending Bayh-Dole Under Attack


By: Gene Quinn (

On February 28, 2013, I spoke at the annual meeting of the Association of University Technology Managers (AUTM), which was held in San Antonio, Texas. I spoke there about what universities can do to fend off the challenges to Bayh-Dole. As crazy as it seems, there are those who are advocating a change to what has been described by The Economist as the most successful piece of domestic legislation since the end of World War II.

Prior to the enactment of Bayh-Dole in 1980, it was virtually impossible to license University technology. In fact, a grand total of zero… that is 0… drugs developed with university funding from the federal government had been commercialized. Now, the pharmaceutical industry is enormously involved with universities and university research and dozens upon dozens of drugs have been commercialized. University basic science is the very foundation of many of the most exciting drugs, which provide tremendous cures and life-saving treatments. So dialing back the clock to when government-funded research was locked up so tight that it didn’t do anyone any good is simply ridiculous.


Do You Have The Right To Sue: Understanding Contract Provisions In The Context Of Litigation

Written by Michael Davitz, Partner at Axinn, Veltrop & Harkrider and Practice Center Contributor, and his associates Josephine Liu and Tara Rahemba.

A patent grants the patentee the right to exclude others from making, using, selling, offering to sell or importing the patented invention into the United States.  35 U.S.C. § 271(a).  It follows that when this right to exclude is violated by an infringer, the “patentee” has the right to bring a “civil action for infringement of [its] patent,” i.e., standing to sue for patent infringement.  35 U.S.C.  § 281.

Recently, the identity of the “patentee” as defined, has been called into question.  The Federal Circuit has made it clear that nuances in the provisions and language used in patent licensing and assignment agreements can be critical in determining whether or not an inventor, licensee or assignee has standing to sue another party for patent infringement.  Slight imperfections or even subtle deviations from what was actually intended or desired by the parties can have a profound impact on their right to sue over the patent.  It is therefore imperative that practitioners are knowledgeable about the effects particular language and provisions have on a standing determination in order to ensure that their clients, whether individual inventors or corporations, licensors or licensees, preserve their right to sue for patent infringement. (more…)

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…)