IP Litigation: Pre-Filing Considerations
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IP Litigation: Pre-Filing Considerations



Pre-Filing Considerations in Intellectual Property, presentation at Annual Meeting, State Bar of California, San Diego Sept. 2009

Pre-Filing Considerations in Intellectual Property, presentation at Annual Meeting, State Bar of California, San Diego Sept. 2009



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IP Litigation: Pre-Filing Considerations IP Litigation: Pre-Filing Considerations Presentation Transcript

  • Pre-Filing Considerations In Intellectual Property Litigation State Bar of California Annual Meeting September 12, 2009 – San Diego SPEAKERS: Craig Holden, Esq. MGA Entertainment, Inc. Scott Hansen, Esq. Fulwider Patton LLP
  • Overview of Internet Pre-Filing Issues and Considerations
    • Common Types of IP-Related Internet Claims
    • What Type of Site/Activity Is Involved?
    • Who Is Responsible For The Site/Content?
    • Personal Jurisdiction?
    • Pre-Filing Evidence Issues
    • Statutes to Keep In Mind
  • Common Types of IP-Related Internet Claims
    • Copyright
    • Trademark/Unfair Competition
    • Right of Publicity
    • Trade Secret
    • Counterfeiting
    • Patent
  • What Type of Site/Activity Is Involved?
    • “ Pure" Business Commerce Site
    • Search Engine
    • Individual Site
      • E.g ., “Fan" Site
    • User Generated Content
      • Host/Operator of the Site
      • Users on/of the Site
    • Affiliates/Traffic Drivers
      • Email Can Deliver Users Here
  • Who Is Responsible For The Site / Content?
    • Sometimes obvious
    • “ WhoIs.net”-type search (for domains)
    • Other “public sources”
    • Social Networking
    • Blogs
    • Chats
    • Follow the money
  • Who Is Responsible For The Site / Content?, Cont.
    • Pre-Naming Formal Discovery
      • Potential DMCA subpoena (Copyright)
        • Subpoena issued to ISP under DMCA provisions
        • But can be limited. E.g, RIAA v. Verizon Internet Svs., 351 F.3d 1229 (C.A.D.C. 2003) (quashing subpoena where ISP was only a transitory network)
      • Doe Pleading, Expedited Discovery Under FRCP 26
        • E.g., Arista Records v. John Does 1-19, --F. Supp. 2d --, 2008 WL 1851772 (D.D.C. April 2008) (where plaintiffs showed prima facie copyright infringement and good cause that third-party discovery was needed to identify defendants, early discovery permitted)
  • Personal Jurisdiction --Website Issue
    • “ Interactive” v. “Passive”
    • “ A passive website and domain name alone do not satisfy the . . . effects test . . . .” Pebble Beach Co. v. Caddy , 453 F.3d 1151, 1160 (9th Cir. 2006)
    • Anticipate post-filing jurisdictional battle and discovery
  • Pre-Filing Evidence Issues
    • Get What’s There Now
      • Printing
      • “ Film" the Action
    • Consider What Was There
      • Caching and Archive.org (Internet Archive)
        • Healthcare Advocates v. Harding, Earley , 497 F. Supp. 2d 627 (E.D. Pa. 2007) (discussing manner in which archive.org operates)
    • Admissible?
      • Lorraine v. Markel Am. Ins. , 241 F.R.D. 534, 553 (D.Md. 2007) (“Internet Archive is a relatively new source for archiving websites. Nevertheless, Plaintiff has presented no evidence that the Internet Archive is unreliable or biased.”)
  • Pre-Filing Evidence Issues, Cont.
    • What are users of the site saying?
      • May reflect knowledge or obvious problems on the site
    • What are others saying about the site?
      • Off-site blogs
      • Chats
  • Pre-Filing Evidence Issues, Cont.
    • How will it ultimately be packaged to the Court?
      • Keep track of how material is collected
      • Be mindful of admissibility issues
      • Internet material gets voluminous very fast
        • Court/Judge technically savvy?
        • Rules on electronic submissions?
  • Some Statutes To Keep In Mind
    • Digital Millennium Copyright Act (“DMCA”) 17 U.S.C. §512
      • In copyright actions, establishes “safe harbors” for certain types of Internet activities that qualify.
        • Transitory network communications
        • System caching
      • Information at direction of users
        • Only if no actual knowledge of infringement, nor
        • Awareness of facts/circumstances from which activity is apparent
      • Information location tools
    • What is the DMCA stated position and policy of the site at issue?
  • Some Statutes To Keep In Mind, Cont.
    • Communications Decency Act (“CDA”) 47 U.S.C. §230
      • “ No provider or user of an interactive computer service shall be treated as the publisher or speaker of any information provided by another information content provider.”
      • “ The term ‘interactive computer service’ means any . . . provider that provides or enables computer access by multiple users to a computer server . . . .”
  • Some Statutes To Keep In Mind, Cont.
    • “ Nothing in this section shall be construed to limit or expand any law pertaining to intellectual property." Section 230(e)(2)
      • “ In the absence of a definition from Congress, we construe the term ‘intellectual property’ to mean ‘federal intellectual property.'" Perfect 10, Inc. v. CCBillLLC , 488 F.3d 1102, 1119 (9th Cir. 2007) (CDA immunity does not apply to federal IP claims, and therefore 9 th Cir. concluded there’s immunity for all state-law claims as they are not considered federal IP claims).
      • “ [I]nline with the First Circuit’s dictum in Universal, this court disagrees with the Ninth Circuit’s decision in Perfect 10 that [Section] 230(e)(2) exempts only federal intellectual property laws from the operation of [Section] 230. Consistent with its text, §230(e)(2) applies simply to ‘any law pertaining to intellectual property,' not just federal law." Doe v. Friendfinder , 540 F. Supp. 2d 288, 302 (D.N.H. 2008 ( March ))
  • For More Details…
    • Go to www.ipsection.org
    • From there, go to webpage of IP Litigation Standing Committee
  • Why Investigate Before Filing?
    • Rule 11, Attorney Fees/Costs, etc.
  • Why Investigate Before Filing?
    • Increase Chances for Success
  • Why Investigate Before Filing?
    • Makes Litigation More Efficient
  • Why Investigate Before Filing?
    • Increase Chance of Early Settlement
  • Why Investigate Before Filing?
    • Conserve Money, Reduce Unnecessary Costs
  • Why Investigate Before Filing?
    • Reduce Stress and Uncertainty
  • Why Investigate Before Filing?
    • Find Show Stoppers in Advance
  • Why Investigate Before Filing?
    • See the Case Through Eyes of Defendant
  • Types of IP Litigation
    • Patent
    • Trademark
    • Copyright
    • Trade Secret
    • Internet-Related
    • Right of Publicity/Privacy
  • Great Materials/Checklists
    • Go to www.ipsection.org
      • Click on Litigation Standing Committee webpage
    • Detailed presentation materials by:
      • Alan P. Block, Esq. (Patent)
      • Jane Shay Wald, Esq. (Trademark)
      • Sean Morris, Esq. (Internet-Related)
      • Kate Spelman, Esq. (Copyright)
      • Randy Kay, Esq. (Trade Secret)
      • Future Programs (PI’s, Right of Publicity)
  • IP Section Webpage
  • IP Litigation Standing Committee Webpage
  • Patent Litigation
  • Patent Litigation
    • Expensive
      • $500K-$1.5million through discovery
    • Patents are:
      • Complex technical documents
      • Sometimes very valuable
      • Hard to understand
        • “… whereas said frictionless coupling is interposed in a proximal spacial relationship with respect to said gear box…”
  • Some Pre-Filing Considerations
    • Is it worth it?
    • Which patents?
    • Who to sue?
    • Where to sue?
    • Pre-Filing Investigation
    • Checklist
  • Is it Worth It?
    • Award in patent case
      • Damages; or
      • Reasonable Royalty; and/or
      • Injunction
    • Estimate your damages
    • What is “reasonable royalty” in your industry?
    • Worth of case (1 approach) =
    • % Chance of Winning x Range of Possible Recovery
  • Which Patents?
    • What is in your portfolio?
      • Are multiple patents being infringed?
        • How many to include?
      • Are there continuation patent applications pending?
      • Is a broadening reissue a possibility in this case?
  • Which Patents? (continued)
    • Are you practicing your patents?
      • Reasonable royalty v. lost profits
      • No guarantee of injunction
      • Consider ITC (must have domestic business)
    • Make sure your products are marked
      • Or, give early notice of infringement
  • Where to Sue?
    • Local Patent Rules?
      • N.D. California Local Patent Rules
        • S.D. California
        • E.D. Texas
        • Some Judges
      • C.D. California: No Local Patent Rules
  • Pre-Filing Investigation
    • Good to know problems in advance
    • Rule 11 and Section 285 of patent act require an inquiry that is reasonable under the circumstances
    • Understand limitations of your patent
    • Get a good sense of whether the patent is valid
  • Pre-Filing Investigation
    • What do the claims mean?
      • What would an accused infringer say?
    • Review the file history for limiting statements or anything else that’s unusual
    • Consider prior art problems
    • Can accused infringer design around the patent?
    • Consider hiring consulting expert
  • Possible Defenses
    • Prior Art
    • Enablement
    • Written description
    • Indefiniteness
    • Best mode
    • Inventorship
    • Ownership
    • Inequitable Conduct (any prior art not submitted to the Patent Office?)
  • Pre-Filing Investigation
    • Infringer’s Activities
      • Try to obtain samples of accused product
        • At least ask for one and an explanation why there is no infringement
      • Try to reverse engineer the accused product
      • Don’t make guesses about the product when you could have known more detail
  • Pre-Filing Investigation
    • Prepare a claim chart
      • Compare patent claims w/accused product
      • Be ready to justify your case to the court and accused infringer early on !
    • Conduct infringement study BEFORE lawsuit is filed
      • Rule 11 not satisfied by post-filing investigation
    • See, “Some Pre-Filing Considerations in Patent Litigation”
      • Alan P. Block, Esq., Hennigan Bennett & Dorman LLP
      • Powerpoint /Checklist available at www.ipsection.org
        • Go to Litigation Standing Committee Webpage
  • Conclusion
  • Conclusion
    • Watch IP Litigation Committee webpage @ www.ipsection.org for more pre-filing checklists (Preliminary Injunction, Right of Publicity, Design Patent)