D R | Vi P id t I t ll t l P t & Liti ti
Patent Trolls in 2014
Dana Rao | Vice-President, Intellectual Property & Litigati...
Who are we?
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 2
What are they?
A patent troll, also called a patent assertion entity (PAE), is a person or
company who enforces patent rig...
It’s growing
NPEs filed 58.7% of
lawsuits in 2012,
up from 24.6% in
2007
One study estimated $29B impact to economy – beyo...
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 5
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 6
What is fueling the industry?
Easy Money
Capital Investment
Vague patents
Rise of the Patent MarketplaceRise of the Patent...
What to do about patent trolls
FightManage your budget
AIA Tools Legislative Reform
Patent QualityPatent Quality
© 2014 Ad...
Manage your budget
Pre-negotiated price for six months
Alternate Fee Arrangements for Patent Litigation
“All you can eat” ...
AIA Tools
Inter Partes Review
500 petitions in FY13 (early FY14
indicates could double
Covered Business Method Review
• Ca...
Legislative reform
Provision Description BillProvision Description Bill
Fee Shifting Raises current fee shifting
standard ...
Fee Shifting
The court shall award, to a prevailing party, reasonable fees unless the
court finds that the position and co...
Software Patent Quality
101 is the wrong focus101 is the wrong focus
Why are claims not tied to the specification?
.Whoeve...
Software Patent Quality part II
Increase 112 analysis at examination
Require declarations of support in the specification
...
In conclusion...
Tactics:
Manage Budget; Fight; Use the AIA; Litigation Reform; Improve Patent
QualityQuality
!Join the Fi...
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Best Practices for Challenging Bad Patent Claims by Non-Practicing Entities - Presenation: Dana Rao, Adobe Systems, Inc. - IP Law Summit

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For more information: emailus@marcusevans.com

Dana Rao, who is the Vice President, Intellectual Property & Litigation at Adobe Systems, Inc. delivered her presentation at the marcus evans IP Law Summit held in Las Vegas NV, March 20-22, 2014.

Join the 2015 Summit along with top IP Law executives and service providers in an intimate environment for a focused discussion of key new drivers shaping the legal industry today.
For more information: emailus@marcusevans.com

Published in: Law, Technology
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Best Practices for Challenging Bad Patent Claims by Non-Practicing Entities - Presenation: Dana Rao, Adobe Systems, Inc. - IP Law Summit

  1. 1. D R | Vi P id t I t ll t l P t & Liti ti Patent Trolls in 2014 Dana Rao | Vice-President, Intellectual Property & Litigation © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential.
  2. 2. Who are we? © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 2
  3. 3. What are they? A patent troll, also called a patent assertion entity (PAE), is a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees, but does not manufacture products or A patent troll, also called a patent assertion entity (PAE), is a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees, but does not manufacture products or supply services based upon the patents in question, thus engaging in economic rent-seeking. supply services based upon the patents in question, thus engaging in economic rent-seeking. P t t A ti E titi S i l P t t Pl i tiffsPatent Aggregation Entities sSerial Patent Plaintiffs © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 3
  4. 4. It’s growing NPEs filed 58.7% of lawsuits in 2012, up from 24.6% in 2007 One study estimated $29B impact to economy – beyond techOne study estimated $29B impact to economy beyond tech For Adobe, represents 80% of our litigation budget Granted over 30 indemnification requests since 2012 © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 4 Over 55% of NPE litigation targets those making less than $10M in revenue
  5. 5. © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 5
  6. 6. © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 6
  7. 7. What is fueling the industry? Easy Money Capital Investment Vague patents Rise of the Patent MarketplaceRise of the Patent Marketplace © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 7
  8. 8. What to do about patent trolls FightManage your budget AIA Tools Legislative Reform Patent QualityPatent Quality © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 8
  9. 9. Manage your budget Pre-negotiated price for six months Alternate Fee Arrangements for Patent Litigation “All you can eat” for that time period No true up but can adjust for significantly changed circumstances Fix price for next six months to ensure both sides are getting benefit of bargainFix price for next six months to ensure both sides are getting benefit of bargain Requires trust relationship Side benefit: gets in house attorneys out of low value invoice review Consolidate Law Firms Allows you to take the cases to trial as Use JDG/shared counsel whenever possible © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 9 Allows you to take the cases to trial as necessary
  10. 10. AIA Tools Inter Partes Review 500 petitions in FY13 (early FY14 indicates could double Covered Business Method Review • Can be filed any time in the life of the patent (outside of PGR) Must be sued or charged with infringement Can be filed up to a year after a complaint is filed (outside PGR window) • Must be sued or charged with infringement • Limited to business method patents, but interpreted broadly • Can use any sort of prior art Can use printed publication or patent prior art If granted, will typically get you a • Only estopped for art that was actually raised. • Test for eligibility appears to be conflated with 101 stay You are estopped from raising any printed publication or patent prior art afterwards (raised or could have • 48 petitions in FY13 Post Grant Review • Can only be filed in the 9 months after a post AIA patent is grantedafterwards (raised or could have been raised) $23K filing fees; multiple petitions may be required, typical cost is post AIA patent is granted • Any ground of prior art • You are estopped for any art that was raised or could have been raised © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. may be required, typical cost is $600K-$800K 10
  11. 11. Legislative reform Provision Description BillProvision Description Bill Fee Shifting Raises current fee shifting standard to require court to shift fees unless substantially justified House Act; Cornyn/Hatch Senate y j Joinder/Bonding Attach fees to an interested party Hatch; House and Cornyn have a joinder provision Customer Stay Enables manufacturers to get Leahy, HouseCustomer Stay Enables manufacturers to get stays on behalf of customers Leahy, House Heightened Pleading Requires additional information in complaint Cornyn, House g Discovery Cost Shifting Requires either party to pay for discovery requested beyond core documents Cornyn, House Discovery Stay Stays all discovery other than Markman related until Markman Cornyn, House CBM Expansion Expands CBM program to include Schumer © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 11 software
  12. 12. Fee Shifting The court shall award, to a prevailing party, reasonable fees unless the court finds that the position and conduct of the nonprevailing party was reasonable justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 12
  13. 13. Software Patent Quality 101 is the wrong focus101 is the wrong focus Why are claims not tied to the specification? .Whoever discovers that a certain useful result will be produced, in any art,. p , y , machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains can by using the means he specifies without any addition to orappertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more. And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or byprinciples in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without i f i i th t t if h b t ti ll diff t f th © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 13 infringing the patent, if he uses means substantially different from those describedwww.patentprogress.com
  14. 14. Software Patent Quality part II Increase 112 analysis at examination Require declarations of support in the specification Declarations throughout prosecution Technical dictionaries Allow claims to be interpreted in light of specificationAllow claims to be interpreted in light of specification Crowdsource prior art Novelty/Non-obviousness is the proper tooly p p Does everyone really need all those patents? © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 14
  15. 15. In conclusion... Tactics: Manage Budget; Fight; Use the AIA; Litigation Reform; Improve Patent QualityQuality !Join the Fight! © 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 15

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