Fighting Patent Trolls: Tactical & Practical Trends in 2015 LIVE Webcast

Speaker Firms and Organization:
Herbert H. Finn
Shareholder
Greenberg Traurig, LLP
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Presented By:
March 11, 2015
1
Partner Firms:
Gregory J. Winsky, Esq
Of Counsel
Archer & Greiner P.C.
Bryan A. Kohm
Attorney
Fenwick & West LLP

March 11, 2015
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Partner Firms:
March 11, 2015
6
Archer & Greiner is a full service, regional law firm with a reputation for
providing the highest quality, result-driven legal services to corporate and
individual clients. One of the largest law firms in the Delaware Valley and
among the five largest in New Jersey, Archer & Greiner serves businesses
and individuals throughout the region and in an increasing number of other
states and jurisdictions. With a network of regional offices from Philadelphia
to New Jersey, the firm has more than 175 lawyers practicing in all major
legal disciplines including corporate, labor, commercial litigation, family, real
estate, and many more.
For more information, visit our website at www.archerlaw.com.
Greenberg Traurig is an international law firm with approximately 1750
attorneys and governmental affairs professionals in 36 commercial and
government centers across the United States and in Latin America, Europe,
the Middle East and Asia. Greenberg Traurig provides integrated, business-
focused legal services for clients ranging from Fortune 500 corporations to
innovative start-ups. The firm’s multidisciplinary teams include senior lawyers
who have served as chief legal officers at major multinational companies
and have spent years solving real-world problems in the business, political
and legal arenas. For additional information, please visit www.gtlaw.com.

Partner Firm:
March 11, 2015
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Fenwick & West provides comprehensive legal services to groundbreaking
technology and life sciences companies at every lifecycle stage. The firm’s
more than 300 lawyers craft innovative, cost-effective and practical solutions
for established and emerging companies on issues ranging from venture
capital, public offerings, joint ventures, M&A and strategic relationships, to
intellectual property, litigation and dispute resolution, taxation, antitrust, and
employment and labor law. For more than four decades, Fenwick has helped
some of the world's most recognized companies become and remain market
leaders.

Brief Speaker Bios:
Greg specializes in the practice of intellectual property law and technology-related matters. As General Counsel and Executive Vice
President, Business Development, of Franklin Electronic Publishers Inc., Greg served in many roles for a multinational consumer
electronics company based in New Jersey, including heading up business development and directing research and development
(R&D) in creating one of the world’s first handheld e-book readers. Greg focuses his practice today in a number of intellectual property
areas, mainly the negotiation of patent, trademark and copyright licenses and of business transactions involving intellectual property.
Greg's own inventions have been awarded four United States patents and are covered by a number of pending domestic and foreign
patent applications. Greg has been a registered patent attorney before the United States Patent and Trademark Office for thirty years
and prosecutes patent and trademark applications in the United States and manages the prosecution of applications in foreign
jurisdictions.
March 11, 2015
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Herbert H. Finn
Herbert H. Finn is a Shareholder in Greenberg Traurig’s IP & Technology Chicago Practice. He concentrates his practice on all
aspects of patent, trademark and copyright law, both within the United States and internationally, with a particular emphasis on patent
litigation before the District Courts of the United States, the U.S. Courts of Appeal for the Federal Circuit and the U.S. International
Trade Commission (ITC). He has litigated and tried cases in technology areas that include biomedical implants, catheters and lumens,
cell phones and other mobile devices, computer input devices, computer software and operating systems, digital camera technology,
Internet/networking technology, eye glasses, LCD technology, loss prevention equipment, mass transportation seating, novelty gaming
equipment, pallets and shipping packaging, product packaging, pull-tabs and seal cards, tablets and x-ray/imaging technology. In
addition to his vast trial experience, Herb has experience in obtaining and defending his clients' various intellectual property rights and
in the negotiating of all types of agreements related to intellectual property including acquisitions, licenses, non-competes and non-
disclosures

Brief Speaker Bio:
Bryan A. Kohm
Bryan A. Kohm practices intellectual property litigation, with a focus on representing high technology and life science companies in
patent infringement and trade secret misappropriation disputes. Bryan has experience in a wide variety of venues throughout the
country, including federal and state courts, the International Trade Commission, and the Court of Appeals for the Federal Circuit.
Bryan has broad experience combating patent trolls on behalf of private and public companies, from pre-funding startups to Fortune
100 companies.
Northern California Super Lawyers has recognized Bryan as a "Rising Star" in the area of IP Litigation in 2013 and 2014.
March 11, 2015
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► For more information about the speakers, you can visit: http://theknowledgegroup.org/event_name/fighting-patent-trolls-tactical-practical-trends-in-2015-live-webcast/

In a two hour live webcast, a panel of thought leaders and practitioners assembled by The Knowledge
Group will review and discuss significant developments in Tactical and Practical Trends for Fighting Patent
Trolls in 2015.
Key topics include:
• Patent Troll Methods
• Patent Transparency and Improvements Act Status
• Identifying Patent Trolls
• Attacking Patent Trolls Assertions
• Litigating Patent Troll Cases
• State Solutions Example: Louisiana
• Injunctive Relief
• Monetary Remedies
• Recent Trends
March 11, 2015
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Featured Speakers:
March 11, 2015
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SEGMENT 1:
Of Counsel
SEGMENT 2:
Herbert H. Finn
Shareholder
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

Introduction
Greg specializes in the practice of intellectual property law and technology-related matters. As General Counsel and
Executive Vice President, Business Development, of Franklin Electronic Publishers Inc., Greg served in many roles for a
multinational consumer electronics company based in New Jersey, including heading up business development and
directing research and development (R&D) in creating one of the world’s first handheld e-book readers. Greg focuses his
practice today in a number of intellectual property areas, mainly the negotiation of patent, trademark and copyright licenses
and of business transactions involving intellectual property. Greg's own inventions have been awarded four United States
patents and are covered by a number of pending domestic and foreign patent applications. Greg has been a registered
patent attorney before the United States Patent and Trademark Office for thirty years and prosecutes patent and trademark
applications in the United States and manages the prosecution of applications in foreign jurisdictions.
Greg earned his law degree cum laude from the University of Pennsylvania Law School, serving as an Associate Editor of
the Law Review. He earned a Bachelor of Science in Engineering degree with honors in Electrical Engineering from
Princeton University, gaining admission to a number of engineering honor societies, including Eta Kappa Nhu and Tau Beta
Pi. Prior to law school, Greg served as a naval officer in the United States Naval Nuclear Power Program.
March 11, 2015
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SEGMENT 1:
Of Counsel

Defending Claims of Patent Assertion Entities (“PAE’s”)
March 11, 2015
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SEGMENT 1:
Of Counsel

The View from the General Counsel’s Chair:
March 11, 2015
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SEGMENT 1:
Of Counsel

Questions from the General Counsel’s Chair:
Threshold issues:
1. Which state law applies?
2. Are we indemnified?
3. Are “goods” under the UCC accused?
4. Is a method claim invoked?
5. Public company or privately held?
6. Are accused products covered by a EULA?
March 11, 2015
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SEGMENT 1:
Of Counsel

States of Confusion?
March 11, 2015
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SEGMENT 1:
Of Counsel
Alabama
Georgia
Idaho
Illinois
Louisiana
Maine
Maryland
Missouri
New Hampshire
North Carolina
Oklahoma
Oregon
South Dakota
Tennessee
Utah
Vermont
Virginia
Wisconsin
AND…

Vermont Act 44
A target of conduct involving assertions of patent infringement, or a person aggrieved by a violation of this
chapter or by a violation of rules adopted under this chapter, may bring an action in Superior Court. A
court may award the following remedies to a plaintiff who prevails in an action brought pursuant to this
subsection:
1) equitable relief;
2) damages;
3) costs and fees, including reasonable attorney’s fees; and
4) exemplary damages in an amount equal to $50,000.00 or three times the total of damages,
costs, and fees, whichever is greater.
March 11, 2015
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SEGMENT 1:
Of Counsel

DEFENSIVE ACTIONS
Aggressive:
1. Declaratory Judgment Action?
2. State Court Actions?
3. Patent Trial and Appeal Board (“PTAB”) Actions:
a. Inter Partes Review?
b. Post Grant Review?
c. Covered Business Method Review?
To
March 11, 2015
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SEGMENT 1:
Of Counsel

DEFENSIVE MANEUVERS
Passive Aggressive:
4. Counterclaim?
a. Intentional Interference with Business Relationship?
b. Breach of contract? See Bowers v. Baystate, 320 F.3d 1317 (Fed. Cir. 2003)
5. Find a Joint Defense Group?
6. Settle?
a. What is the calculus?
b. Cross License as consideration?
c. Release of counterclaims?
To
March 11, 2015
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SEGMENT 1:
Of Counsel

DEFENSIVE ENNUI
Passive:
7. Ask for claim chart (at least)?
8. Ask for the information required by applicable state law?
9. Simply ignore?
March 11, 2015
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SEGMENT 1:
Of Counsel

Go Ask Alice
March 11, 2015
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SEGMENT 1:
Of Counsel
“We hold that the claims at issue are drawn to the abstract idea of intermediated settlement, and that
merely requiring generic computer implementation fails to transform that abstract idea into a patent-
eligible invention.” (Emphasis supplied.)
Alice Corp v. CLS Bank
134 S. Ct. 2347 (2014)
Patent Eligibility under Section 101:

US Patent 5,970,749 Claim 33
A method of exchanging obligations as between parties, each party holding a credit record and a debit
record with an exchange institution, the credit records and debit records for exchange of predetermined
obligations, the method comprising the steps of:
(a) creating a shadow credit record and a shadow debit record for each stakeholder party to be held
independently by a supervisory institution from the exchange institutions;
(b) obtaining from each exchange institution a start-of-day balance for each shadow credit record and
shadow debit record;
(c) for every transaction resulting in an exchange obligation, the supervisory institution adjusting each
respective party’s shadow credit record or shadow debit record, allowing only these transactions that
do not result in the value of the shadow debit record being less than the value of the shadow credit
record at any time, each said adjustment taking place in chronological order, and
(d) at the end-of-day, the supervisory institution instructing on[e] of the exchange institutions to exchange
credits or debits to the credit record and debit record of the respective parties in accordance with the
adjustments of the said permitted transactions, the credits and debits being irrevocable, time invariant
obligations placed on the exchange institutions.
March 11, 2015
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SEGMENT 1:
Of Counsel

Guidance for Alice: Ex. 1: Wonderland
A computer-implemented method for protecting a computer from an electronic communication containing malicious code,
comprising executing on a processor the steps of:
• receiving an electronic communication containing malicious code in a computer with a memory having a boot sector, a
quarantine sector and a non-quarantine sector;
• storing the communication in the quarantine sector of the memory of the computer, wherein the quarantine sector is
isolated from the boot and the non-quarantine sector in the computer memory, where code in the quarantine sector is
prevented from performing write actions on other memory sectors;
• extracting, via file parsing, the malicious code from the electronic communication to create a sanitized electronic
communication, wherein the extracting comprises
• scanning the communication for an identified beginning malicious code marker, flagging each scanned byte between
the beginning marker and a successive end malicious code marker, continuing scanning until no further beginning
malicious code marker is found, and creating a new data file by sequentially copying all non-flagged data bytes into a
new file that forms a sanitized communication file;
• transferring the sanitized electronic communication to the non-quarantine sector of the memory; and
• deleting all data remaining in the quarantine sector.
March 11, 2015
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SEGMENT 1:
Of Counsel

Guidance for Alice: Ex. 2: Through a looking glass, darkly
A method of generating a device profile that describes properties of a device in a digital image
reproduction system for capturing, transforming or rendering an image, said method comprising:
• generating first data for describing a device dependent transformation of color information
content of the image to a device independent color space through use of measured chromatic
stimuli and device response characteristic functions;
• generating second data for describing a device dependent transformation of spatial information
content of the image in said device independent color space through use of spatial stimuli and
device response characteristic functions;
• and combining said first and second data into the device profile.
March 11, 2015
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SEGMENT 1:
Of Counsel

March 11, 2015
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SEGMENT 1:
Of Counsel

H.R.9 The Innovation Act
“Though I believe that the court has taken several positive steps in the right direction, their decisions can't
take the place of a clear, updated and modernized statute. In fact, many of the provisions in the Innovation
Act do not necessarily lend themselves to being solved by case law, but by actual law: Congressional
legislation.”
- Rep. Bob Goodlatte, R-Va., Chairman, House Judiciary Committee
March 11, 2015
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SEGMENT 1:
Of Counsel

H.R.9
Eight categories of Substantive and Procedural Changes to our Patent System Calculated to
Combat PAE’s:
March 11, 2015
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SEGMENT 1:
Of Counsel

H.R.9
1. Changes to Pleading Rules
2. Fee Shifting
3. Plaintiff Transparency
4. Stay of Litigation against Customers (including End Users)
March 11, 2015
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SEGMENT 1:
Of Counsel

H.R.9
5. Changes to Discovery Rules
6. Covered Business Method Patent Review
7. Joinder of Interested Parties
8. Demand Letter Reforms at the Federal level (see supra, States of Confusion)
March 11, 2015
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SEGMENT 1:
Of Counsel

DISCLAIMER: This presentation is for general information purposes only and does not constitute legal advice. This
presentation may not be used as or relied upon as a substitute for legal advice regarding any specific matter. Advice
should be sought from a qualified attorney licensed to practice in the jurisdiction in which the matter obtains.
March 11, 2015
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SEGMENT 1:
Of Counsel

March 11, 2015
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Introduction
Herbert H. Finn is a Shareholder in Greenberg Traurig’s IP & Technology Chicago Practice. He concentrates his practice on
all aspects of patent, trademark and copyright law, both within the United States and internationally, with a particular
emphasis on patent litigation before the District Courts of the United States, the U.S. Courts of Appeal for the Federal Circuit
and the U.S. International Trade Commission (ITC). He has litigated and tried cases in technology areas that include
biomedical implants, catheters and lumens, cell phones and other mobile devices, computer input devices, computer
software and operating systems, digital camera technology, Internet/networking technology, eye glasses, LCD technology,
loss prevention equipment, mass transportation seating, novelty gaming equipment, pallets and shipping packaging, product
packaging, pull-tabs and seal cards, tablets and x-ray/imaging technology. In addition to his vast trial experience, Herb has
experience in obtaining and defending his clients' various intellectual property rights and in the negotiating of all types of
agreements related to intellectual property including acquisitions, licenses, non-competes and non-disclosures
March 11, 2015
36
SEGMENT 2:
Herbert H. Finn
Shareholder

Practical Considerations During Litigation
What Bridges Trolls Try To Protect
But You Still Need To Cross
March 11, 2015
37
SEGMENT 2:
Herbert H. Finn
Shareholder

> Ownership Bridge
> Electronic Discovery (ESI) Bridge
> Privilege/Work Product Bridge
> Prior License/Exhaustion Bridge
March 11, 2015
38
SEGMENT 2:
Herbert H. Finn
Shareholder

Ownership Bridge
> Standing Issues:
– What rights were given away/retained
– Receive periodic reports
– Right to collect royalties
– Right to approve strategy/actions
– Right to settle
> Chain of Title/Corporate History:
– Dates of Formation
– Exchange of Consideration
March 11, 2015
39
SEGMENT 2:
Herbert H. Finn
Shareholder

Ownership Bridge
> Financiers/Investors:
– Right of control
 Necessary Party
 Real party in Interest
– Budgetary concerns
– Potential considerations under proposed legislation
 Loser Pays Situation
 Adequately funded
– Source of discovery and reports
March 11, 2015
40
SEGMENT 2:
Herbert H. Finn
Shareholder

Electronic Discovery (ESI) Bridge
> Organization of Storage
– No paper
– Documents
– Email
> Proportionality
– Email
– Custodians
– Not necessarily goose/gander situation
> Record Meet and Confers
March 11, 2015
41
SEGMENT 2:
Herbert H. Finn
Shareholder

Privileged/Work Product Bridge
> Benefits of Privilege Log
– Knee jerk reaction against privilege logs may be wrong
– Avoids hiding all communications as privilege
– Receive identification of people that you may not know about
> Business is to License/Enforce Patents
– No privilege as to business and financial terms
 Demand redactions not just an exclusion of the entire document
– Even if company is run by an attorney doesn’t make it privilege
– Not everything is work product when business is enforcement/litigation
March 11, 2015
42
SEGMENT 2:
Herbert H. Finn
Shareholder

Prior License/Exhaustion Bridge
> Prior owner may have granted licenses:
– Supplier licensed
– Often times current owner have no records of past actions
– Bought out of Bankruptcy
– Mergers with prior licensors/licensees
– FRAND obligations
March 11, 2015
43
SEGMENT 2:
Herbert H. Finn
Shareholder

Prior License/Exhaustion Bridge
> HELFERICH PATENT LICENSING, LLC v. THE NEW YORK TIMES COMPANY
– Federal Circuit – February 10, 2015
– License/exhaustion does not necessarily travel with the product
– Exhaustion only applies to Authorized Acquirers
 Those who acquire title to the article at issue from the patentee or from a licensee
authorized to sell and those who acquire possession and operational control, as by lease,
from such a person,
 When the authorized acquirer is using the same invention by infringing the asserted claims.
– Patents are separate and do not necessarily require exhaustion where there is licensing of
apparatus claims relative to method or system claims
– Can contract to avoid exhaustion
March 11, 2015
44
SEGMENT 2:
Herbert H. Finn
Shareholder

Introduction
Bryan A. Kohm practices intellectual property litigation, with a focus on representing high technology and life science
companies in patent infringement and trade secret misappropriation disputes. Bryan has experience in a wide variety of
venues throughout the country, including federal and state courts, the International Trade Commission, and the Court of
Appeals for the Federal Circuit.
Bryan has broad experience combating patent trolls on behalf of private and public companies, from pre-funding startups to
Fortune 100 companies.
Northern California Super Lawyers has recognized Bryan as a "Rising Star" in the area of IP Litigation in 2013 and 2014.
March 11, 2015
45
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

Increasing Importance of Venue
 Recent Supreme Court decisions make venue even more important
• Claim construction – Supreme Court’s decision in Teva Pharmaceuticals
• Tips on claim construction practices in light of Teva Pharmaceuticals
• Attorneys’ fees – Supreme Court’s decision in Octane Fitness
• How to increase your chances of obtaining fees
 Tips on preparing successful motions to transfer
March 11, 2015
46
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

The Importance of Venue Is Not New - MSJs
March 11, 2015
47
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

The Importance of Venue Is Not New - Damages
March 11, 2015
48
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

Teva Changed the Review of Claim Constructions
 Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. ____ (2015)
• Claim construction rulings no longer always entitled to de novo review
• Resolution of factual disputes reviewed for clear error
• Ultimate issue of claim interpretation still reviewed de novo
• Only intrinsic evidence = de novo review
• Extrinsic and intrinsic evidence = blended clear error and de novo review
“[C]lear error review is ‘particularly’ important where patent law is at issue because patent law is a
field where so much depends upon familiarity with specific scientific problems and principles not
usually contained in the general storehouse of knowledge and experience.” Slip. Op. at 7.
March 11, 2015
49
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

When to Build a Record of Extrinsic Evidence
 Resist the urge to always use extrinsic evidence
• Clear error review may not be in your best interest
• Favorable intrinsic record
• Unfavorable judge
• Don’t assume opposition will always build extrinsic record
• Some trolls are excessively cost conscious
 Build record of extrinsic evidence to improve chances on appeal or simply when necessary
• Favorable judge
• Ambiguous specification or claims
March 11, 2015
50
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

How to Trigger Clear Error Review
 Expert testimony
• In Teva, the Supreme Court stressed the fact that the district court heard “competing fact-related
claims by different experts” and “resolved the issues of fact that divided those experts.” Slip. Op. at
10.
 Extrinsic evidence on the state of the art or meaning of claim terms
• “In some cases, however, the district court will need to look beyond the the patentee’s intrinsic
evidence and to consult extrinsic evidence in order to understand, for example, the background
science or the meaning of a term in the relevant art during the relevant time period.” Slip. Op. at 12.
March 11, 2015
51
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

Exceptional Case – Before Octane Fitness
 Brooks Furniture Manufacturing, Inc. v. Dutailier International, Inc., 393 F.3d 1378 (Fed. Cir. 2005)
 Facts
• Dispute concerned a design patent
• Patentee obtained two opinions of counsel and two expert opinions of infringement
 Court sets forth two ways to establish an exceptional case
• Litigation misconduct
• “A case may be deemed exceptional when there has been some material inappropriate
conduct related to the matter in litigation, such as willful infringement, fraud or inequitable
conduct in procuring the patent, misconduct during litigation, vexatious or unjustified litigation,
conduct that violates Fed.R.Civ.P. 11, or like infractions.”
• Bad faith pursuit of case
• Litigation must be both (i) brought in subjective bad faith and (ii) objectively baseless
 Must be shown by clear and convincing evidence
March 11, 2015
52
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

Exceptional Case – Octane Fitness
 Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S.Ct. 1749 (2014)
 Facts
• District court granted summary judgment of non-infringement
• Court subsequently denied motion for fees because neither subjective bad faith or objective
recklessness was shown
 Supreme Court rejects Brooks Furniture standard
• “[A]nalysis begins and ends with the text of section 285.”
• Requirements and heightened evidentiary standard went beyond ordinary meaning of
“exceptional” used in the statute
• Only preponderance of the evidence is required
• New standard based on plain meaning of “exceptional”:
“[A]n ”exceptional“ case is simply one that stands out from others with respect to the substantive
strength of a party‘s litigating position (considering both the governing law and the facts of the
case) or the unreasonable manner in which the case was litigated.”
March 11, 2015
53
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

The Threat of Fees Is Now More Real
March 11, 2015
54
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP
0
10
20
30
40
50
60
70
80
90
100
2002 2011 Post-Octane
Fees Not
Awarded
Fees Awarded

What Is Triggering Fees Post Octane Fitness
March 11, 2015
55
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP
0
2
4
6
8
10
12
14
16
18
20
Misconduct/Bad Faith
Objectively Baseless
Inequitable Conduct

Maximizing the Opportunity
 Raise bad faith and/or frivolous nature of claims early and often
• E.g., Rule 11 motion
• Puts court on early notice of weak case and limited Rule 11 basis
• Discovery motions
• Opportunity to raise misconduct
 Counsel’s liability for fees
• 28 U.S.C. § 1927
• Court’s inherent authority
March 11, 2015
56
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

The Early Strike
 Motion for a bond
• District courts have “inherent power to require plaintiffs to post security for costs” and attorneys’
fees. Simulent E. Assoc. v. Ramada Hotel Operating Co., 37 F.3d 573, 574 (9th Cir. 1994)
• Courts typically look to state rules
• Under California law, a bond is appropriate where the “plaintiff resides out of state, or is a
foreign corporation” and the defendants can show that “there is a reasonable possibility that
[they] will obtain judgment in the action.” Cal. Civ. Proc. Code § 1030(a), (b).
March 11, 2015
57
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

Venue – Forum Non Conveniens
 28 U.S.C. § 1404(a)
“For the convenience of parties and witnesses, in the interest of justice, a district court may transfer
any civil action to any other district or division where it might have been brought or to any district or
division to which all parties have consented.”
March 11, 2015
58
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

Motion to Transfer – Factors
 Public interest factors
• Administrative difficulties flowing from court congestion
• Local interest in dispute
• Familiarity of the forum with the governing law
• Avoidance of unnecessary conflicts of law
 Private interest factors
• Relative ease of access to sources of proof
• Availability of compulsory process to secure attendance of witnesses
• Cost of attendance for willing witnesses
• Other practical problems
In re Volkswagen of Am., Inc., 545 F.3d 304 (5th Cir. 2008)
`
March 11, 2015
59
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

Getting Your Venue
 Find third party witnesses in desired district
• Ability to compel third party witnesses to attend trial is critical
• Even if third parties were willing witnesses, cost of travel for numerous witnesses weighs in favor of
transfer
 How to find third party witnesses
• Prior art is an excellent source
• Check inventors and assignees on references identified in patent
• Consider early prior art search
March 11, 2015
60
SEGMENT 2:
Jennifer A. Riley
Partner
Seyfarth Shaw LLP
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

► You may ask a question at anytime throughout the presentation today. Simply click on the question mark icon located on the floating tool bar on the bottom right side of your screen. Type
your question in the box that appears and click send.
► Questions will be answered in the order they are received.
Q&A:
March 11, 2015
61
SEGMENT 1:
Of Counsel
SEGMENT 2:
Herbert H. Finn
Shareholder
SEGMENT 3:
Bryan A. Kohm
Attorney
Fenwick & West LLP

March 11, 2015
62
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