Intellectual Property Group Patent Litigation 101 Strategies For Every In House Lawyer

Transcription

1 Intellectual Property Group Patent Litigation 101 Strategies For Every In House Lawyer Stephen M. Hankins Schiff Hardin Intellectual Property Group Leader San Francisco, CA

2 Patent Infringement Basics What is a patent? What to do when you get an offer to license a patent? What to do when you get sued for patent infringement? How to budget the costs of patent litigation 2

3 3 Can you really get a patent on that?

4 Can you really get a patent on that? 1. Stretcher-sized turntable to help baby out by centrifugal force 2. Artificial rubber uterus in which to place newborn so that it has familiar surroundings for first moments after birth 3. Sound proof helmet for mother during delivery to filter her screams so as not to disturb the baby 4

5 Can you really get a patent on that? 1. Stretcher-sized turntable to help baby out by centrifugal force 5

6 Can you really get a patent on that? 1. Software program that automatically pixilates XXX parts of pornographic pictures so that religious people can safely look at them 2. Software program that automatically senses when a cat is walking on keyboard and disables computer 3. Software program for shy people that automatically generates provocative messages for chat rooms 6

7 Can you really get a patent on that? 1. Software program that automatically pixilates XXX parts of pornographic pictures so that religious people can safely look at them 2. Software program that automatically senses when a cat is walking on keyboard and disables computer 3. Software program for shy people that automatically generates provocative messages for chat rooms 7

8 Patent Claims The claims of a patent, located at the end of the patent, define the right to exclude 8

9 Patent Infringement Basics What is a patent What to do when you get an offer to license a patent What to do when you get sued for patent infringement Costs of patent litigation 9

10 Offer To License / Cease And Desist Your client receives a communication from a patent owner stating that the client may wish to have patent counsel examine whether a non-exclusive license is required for U.S. Patent X,XXX,XXX 10

11 Best Practices In Responding Internal investigation accused product lines, non-infringement arguments, non-infringing alternatives Counsel advice proper notice, indemnity rights, opinion? Litigation strategy forum, plaintiff, declaratory judgment? 11

12 12 What s my exposure?

13 What s my exposure? Injunctive relief - irreparable harm Reasonable royalty hypothetical negotiation Lost profits but for standard? 13

14 What s my exposure? Apple, Samsung gear up for fight on triple damages, injunction, and attorneys fees Damages may be enhanced up to 3x on finding of willful infringement Attorneys fees recoverable if case found exceptional 14

15 Patent Infringement Basics What is a patent What to do when you get an offer to license a patent What to do when you get sued for patent infringement Costs of patent litigation 15

16 Venue Where The Complaint Is Filed Certain districts are known to favor the patentee (e.g., EDTX) or the defendant (e.g., NDCA) Currently, there needs to be a better reason for venue than allegedly infringing activity occurring there 16

17 Who is the plaintiff and where is the Many of the largest damages awards go to non-practicing entities forum? Many of these awards have been reduced or overturned on appeal PWC, 2011 Patent Litigation Study 17

18 Patent Infringement Basics What is a patent What to do when you get an offer to license a patent What to do when you get sued for patent infringement Costs of patent litigation 18

19 Costs Of Patent Litigation AIPLA, 2011 Economic Survey Patent litigations are among the costliest Much of the cost 50% or more stems from discovery Align law firm and client interests 19

20 Time to trial Local rules? Average Time To Trial PWC, 2011 Patent Litigation Study 20

21 The Patent Litigation Team Steve Hankins San Francisco Kelly Morron New York Alison Maddeford San Francisco Bill Cassin Chicago Brian Siff New York Sal Patel Chicago Jason Harp Chicago Shelley Merkin Chicago Stacie Hartman Chicago Chris Ohly Washington Gina Bassi New York Jim Hanft New York George Yu San Francisco Henry Behnen New York 21