More Related Content More from Knobbe Martens - Intellectual Property Law (20) Is “Freedom to Operate” Mission Impossible? | OCTANe Event1. Is “Freedom to Operate” February 21, 2013
Mission Impossible? Irvine, CA
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2. “FREEDOM TO OPERATE”
Can you make, use and sell your invention
without being sued for patent infringement?
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3. INFRINGEMENT VS. PATENABILITY
PATENT RIGHT TO EXCLUDE (§ 271)
PATENT RIGHT TO PRACTICE
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4. INFRINGEMENT VS. PATENABILITY
#1 #2 #3
Can Exclude #2 & #3 Can Exclude #3 Can Exclude Others
Can Practice Cannot Practice Cannot Practice
Can Practice Cannot Practice
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5. Is “Freedom to Operate” Mission Impossible?
IP5 Statistics Report, 2011 at 48
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7. MARK J. KERTZ , Esq.
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8. AMY C. CHUN, Esq.
PRACTICE
Software / EE
Counseling & Litigation
BACKGROUND
Clerked for CD-CA
Software Engineer
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9. WHEN DOES THIS COME UP?
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10. How do you
convince
investors you
have “freedom
to operate”?
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11. HIGH LEVEL STRATEGY
Do advance work?
Impact of litigation on a company
Investor expectation
Risk mitigation strategies
Expired IP / "off the shelf" technology
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12. NUTS AND BOLTS
Which features do you study?
Analysis limited to US Patents?
Pending Applications
Patents with broad disclosure, narrow claims?
What about on-going litigation?
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13. ADDRESSING A PROBLEM REFERENCE
• Non-infringement
• Design Around
• Invalidity
• Licensing/Acquisition
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14. POST-ANALYSIS
• Monitoring
• Tracking Design
Changes
• Review Technical
Materials
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15. LAUNCH PAD EVALUATION
A. No searching or evaluation of 3rd party IP
MORE RISK
done; OR company has been sued or
threatened or knows of significant
infringement risk
B. Some informal searching done, but no legal
analysis performed
LESS RISK
C. Some formal searching done, legal analysis
performed - results mixed to positive
D. Extensive searching done - no significant 3rd
party IP found creating risk
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