The document summarizes key patent licensing issues in the wake of several recent US Supreme Court decisions, including eBay v. MercExchange, MedImmune v. Genentech, and SanDisk v. STMicroelectronics. It discusses how these rulings have shifted power away from patent holders by eliminating presumptions of injunctive relief and allowing licensees greater ability to challenge patent validity without terminating their licenses. The decisions have introduced more uncertainty for patent holders and licensees in areas like injunctions and declaratory judgment jurisdiction.
This document summarizes a law journal article that analyzes how courts have applied the Supreme Court's 2006 eBay v. MercExchange decision regarding when permanent injunctions should be granted for patent infringement. It finds that while some early post-eBay cases denied injunctions, courts have increasingly returned to granting injunctions in the majority of cases, especially when the patent holder and infringer are competitors. The article analyzes over 60 post-eBay district court cases between 2006-2009 to examine how the standards for irreparable harm and inadequate legal remedies have evolved over time.
This document summarizes several recent Federal Circuit cases involving issues of patent validity and infringement. The first case summary discusses the Federal Circuit affirming a district court decision upholding patent claims covering the drug Abilify as non-obvious and not invalid for double patenting. The second case discusses the Federal Circuit vacating and remanding a rejection of reissue claims for failure to properly apply the recapture rule. The third case discusses the Federal Circuit affirming a rejection of claims as inherently anticipated by a prior art clinical trial protocol.
In-House Counsel's Role in Avoiding Willful Patent InfringementTim Hsieh
This document discusses actions in-house counsel can take post-Seagate to avoid findings of willful patent infringement. It recommends:
1) Continuing to implement design-around strategies and obtaining opinions of counsel, though an opinion is not always required.
2) Ensuring opinions of counsel are timely obtained, provided to decision-makers, and relied upon before production begins.
3) Making sure all relevant information is provided to opinion counsel.
4) Reviewing opinions for quality and protecting counsel's independence.
5) Educating employees and establishing communication lines to detect potential issues.
Partner Michael Fuller wrote an article for the Bloomberg BNA - Pharmaceutical Law & Industry Report discussing how the PTAB may be taking a more balanced approach in biotech and pharmaceutical IPRs.
The document summarizes recent developments in patent law from Supreme Court cases and post-grant proceedings that impact medical device companies. Key points include:
1) The Supreme Court has made it more difficult to obtain and enforce patents by raising the bar for what constitutes patentable subject matter and claim clarity, and making it easier to recover attorney's fees.
2) Recent litigation and settlements between medical device companies highlight the ongoing battles over patents for pioneering heart valve technologies.
3) In the two years since being established, inter partes reviews have led to about 60% of challenged claims being found unpatentable by the Patent Trial and Appeal Board.
Selected as a "Best Law Firm" in real estate in 2019 this newsletter by Adam Leitman Bailey P.C. showcases some of the firms crowning moments during the Winter of 2018.
This document summarizes a court ruling on a motion to dismiss claims against three investors in Veoh Networks Inc. for secondary copyright infringement. The court held that while the complaint alleged the investors obtained control of Veoh through board seats and financing, it did not sufficiently plead that the investors were significantly involved in Veoh's alleged infringing activities to state valid claims of contributory copyright infringement against the investors. As a result, the court granted the investors' motion to dismiss the secondary liability claims against them.
Preliminary Injunction in the United States and Taiwan杰凱 楊
This is a presentation I gave to the instructors and classmates in the course--Advanced Trademark Law in the University of Washington School of Law. The instructors were Toshiko Takenaka and Chad Smith. (Disclaimer: the contents may have out-dated or wrong materials, feel free to contact me if you have further questions.)
This document summarizes a law journal article that analyzes how courts have applied the Supreme Court's 2006 eBay v. MercExchange decision regarding when permanent injunctions should be granted for patent infringement. It finds that while some early post-eBay cases denied injunctions, courts have increasingly returned to granting injunctions in the majority of cases, especially when the patent holder and infringer are competitors. The article analyzes over 60 post-eBay district court cases between 2006-2009 to examine how the standards for irreparable harm and inadequate legal remedies have evolved over time.
This document summarizes several recent Federal Circuit cases involving issues of patent validity and infringement. The first case summary discusses the Federal Circuit affirming a district court decision upholding patent claims covering the drug Abilify as non-obvious and not invalid for double patenting. The second case discusses the Federal Circuit vacating and remanding a rejection of reissue claims for failure to properly apply the recapture rule. The third case discusses the Federal Circuit affirming a rejection of claims as inherently anticipated by a prior art clinical trial protocol.
In-House Counsel's Role in Avoiding Willful Patent InfringementTim Hsieh
This document discusses actions in-house counsel can take post-Seagate to avoid findings of willful patent infringement. It recommends:
1) Continuing to implement design-around strategies and obtaining opinions of counsel, though an opinion is not always required.
2) Ensuring opinions of counsel are timely obtained, provided to decision-makers, and relied upon before production begins.
3) Making sure all relevant information is provided to opinion counsel.
4) Reviewing opinions for quality and protecting counsel's independence.
5) Educating employees and establishing communication lines to detect potential issues.
Partner Michael Fuller wrote an article for the Bloomberg BNA - Pharmaceutical Law & Industry Report discussing how the PTAB may be taking a more balanced approach in biotech and pharmaceutical IPRs.
The document summarizes recent developments in patent law from Supreme Court cases and post-grant proceedings that impact medical device companies. Key points include:
1) The Supreme Court has made it more difficult to obtain and enforce patents by raising the bar for what constitutes patentable subject matter and claim clarity, and making it easier to recover attorney's fees.
2) Recent litigation and settlements between medical device companies highlight the ongoing battles over patents for pioneering heart valve technologies.
3) In the two years since being established, inter partes reviews have led to about 60% of challenged claims being found unpatentable by the Patent Trial and Appeal Board.
Selected as a "Best Law Firm" in real estate in 2019 this newsletter by Adam Leitman Bailey P.C. showcases some of the firms crowning moments during the Winter of 2018.
This document summarizes a court ruling on a motion to dismiss claims against three investors in Veoh Networks Inc. for secondary copyright infringement. The court held that while the complaint alleged the investors obtained control of Veoh through board seats and financing, it did not sufficiently plead that the investors were significantly involved in Veoh's alleged infringing activities to state valid claims of contributory copyright infringement against the investors. As a result, the court granted the investors' motion to dismiss the secondary liability claims against them.
Preliminary Injunction in the United States and Taiwan杰凱 楊
This is a presentation I gave to the instructors and classmates in the course--Advanced Trademark Law in the University of Washington School of Law. The instructors were Toshiko Takenaka and Chad Smith. (Disclaimer: the contents may have out-dated or wrong materials, feel free to contact me if you have further questions.)
Managing IP In Light of Changing US Patent LawIanliu
This document discusses strategic intellectual property management and how U.S. patent law is changing. It provides an overview of strategic IP management, including creating, maximizing, and realizing IP value. It then summarizes how recent Supreme Court cases and proposed patent law reforms have impacted licensing and litigation strategies. When asked about a competitor's new product, the document advises reviewing existing patents for potential licensing or litigation in light of evolving legal standards regarding obviousness and injunctions.
Divided Infringement of Method Claims: A Tough SellMichael Cicero
Discusses the state of the law on this issue prior to the Federal Circuit's decision in Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012).
This document summarizes an article that examines the validity of intellectual property (IP) carve-outs in arbitration clauses in light of recent legal developments. It discusses how IP carve-outs are commonly used to exclude IP issues from arbitration, but cites justifications for this are weakening. Recent court rulings have made interim injunctions in IP disputes more difficult to obtain, and separating IP issues from other contractual issues is challenging, leading to prolonged disputes. Additionally, arbitration institutions have strengthened rules for interim relief in IP matters. Therefore, the document concludes IP carve-outs may not provide intended benefits and add unnecessary costs and delays.
The marcus evans 5th Product and Pipeline Enhancement for Generics Conference hosted industry leaders within the Generic Pharmaceutical, Branded Pharmaceutical and API industries operating globally. These leaders shared best practices, strategies and tools on portfolio management and business strategy, as well as legal, intellectual property and patent issues.
Knobbe Martens' attorneys presented on the following topic:
*Analyzing Recent Updates to the Hatch-Waxman Act to Grasp Future Impacts and Challenges
*Studying recent changes that could impact the industry, including 180-day exclusivity and complications regarding patent listings
*Drawing lessons from the close relationship between the patenting of generic products and FDA regulatory approval to pinpoint areas of improvement
*Considering the impact biosimilar products could have on market entry and patent strategies
*Reviewing both real-life rulings and hypotheticals regarding Hatch-Waxman litigation to identify future strategies
The document summarizes the impact of the US Supreme Court's 2006 eBay v. MercExchange decision on the availability of permanent injunctions for patent infringement. It discusses how the decision established a four-factor test for injunctions and eliminated the presumption of irreparable harm for patent holders. It then summarizes several post-eBay cases where courts denied permanent injunctions and instead imposed ongoing royalty rates. The key impacts are that non-practicing entities and owners of small components face high hurdles to injunctions, while direct competitors can still potentially receive injunctions. Questions remain regarding ongoing royalty rates and treatment of willful infringement.
Federal Circuit will review en banc two recent panel decision relating to joint infringement of method claims — Akamai Technologies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010) and McKesson Technologies Inc. v. Epic Systems Corp., 98 U.S.P.Q.2d 1281 (Fed. Cir. 2011).
The document discusses divided patent infringement and the legal standards for determining liability when infringement requires actions by multiple parties. It reviews pre-BMC case law treating infringement as a tort and joint infringers as joint tortfeasors. The BMC and Muniauction cases established that to prove direct infringement, a plaintiff must show one party directed or controlled the other's performance and effectively performed every step of the patented method.
1) Reasonable royalty calculations are important in patent infringement cases, as they represent the minimum damages a patent holder is entitled to and are the most common form of damages sought, particularly by non-practicing entities.
2) There are two main approaches to calculating reasonable royalties - the analytical approach based on infringer's profits, and the hypothetical negotiation approach which aims to determine the royalty the patent holder and infringer would have agreed to.
3) The Georgia-Pacific factors provide a legal framework for assessing reasonable royalties, considering factors relevant to a hypothetical negotiation between willing parties such as existing royalty agreements, industry standards, and the merits of the invention.
The document discusses how the U.S. patent system has struggled to balance patent rights and preventing abuse. Recent legislation and court rulings aimed to curb frivolous lawsuits led to concerns the system favored accused infringers over patent owners. However, new court decisions indicate the pendulum may be shifting back toward balance, finding the right amount of power for both patent owners and accused infringers.
This month’s litigation group presentation includes a discussion of the state of the law regarding preliminary injunctions in trademark infringement cases. The presentation also examines similar issues with respect to trade secret infringement, particularly as they relate to the doctrine of inevitable disclosure.
This document outlines 10 unique ethical issues facing in-house counsel. It discusses issues such as ensuring compensation complies with rules prohibiting business transactions with clients without proper disclosures and consent. It also addresses maintaining independent professional judgment, licensing requirements, developing competence in diverse legal topics, avoiding unauthorized practice of law, identifying the client, separating legal and business advice, privilege considerations, obligations to report legal and ethical violations up the corporate ladder, and resources for further guidance.
This document summarizes guidelines from the FTC and state attorneys general for online marketers and affiliates to avoid investigations and enforcement actions for deceptive practices. It outlines what constitutes deception under the FTC Act, how the FTC interprets marketing claims, disclosure requirements, and the investigative and enforcement processes of the FTC and state agencies. It also provides examples of past FTC and state actions against online marketers and affiliates related to areas like mortgage offers, debt relief, and spam emails. The document advises best practices for legal compliance.
SKGF_Presentation_The Supreme Courts Renewed Interest In IP_April 2007SterneKessler
The Supreme Court has recently taken a renewed interest in intellectual property cases, reviewing and reversing several Federal Circuit rulings over the past decade. This suggests the Supreme Court is unhappy with the Federal Circuit's handling of patent law and prefers flexibility over bright-line rules. There are indications the Supreme Court views IP law as more important today than in the past and wants to ensure consistency with how other types of cases are handled. The talk examines this growing tension between the two courts with implications for how patent cases may be decided going forward.
As the legal landscape continues to evolve in terms of intellectual property law, the Los Angeles Business Journal once again turned to some of the leading IP attorneys and experts in the region to get their assessments regarding the current state of IP legislation, the new rules of copyright protection, licensing and technology, and the various trends that they have been observing, and in some cases, driving. Below is a series of questions the Business Journal posed to these experts and the unique responses they provided – offering a glimpse into the state of intellectual property law in 2014 – from the perspectives of those in the trenches of our region today.
This ppt was used in a Legal English class at the Universidad Católica de Cuyo sede San Luis. It comprises Three Corporate law cases and one major Competition Law case.
The document discusses merger objection lawsuits that typically occur when a company is acquired. It provides examples of typical characteristics of these lawsuits, including that they usually follow the announcement of a merger within two weeks and are often settled within two months. The document also summarizes the fiduciary duties of company directors in evaluating merger offers, including the duties of care, good faith and loyalty. It notes that Delaware law establishes three levels of scrutiny for the court to evaluate director decisions: the business judgment rule, enhanced scrutiny, and entire fairness.
Intellectual Property Rights: Between Exclusivity and Market PowerMoses Muchiri
This document provides an analysis of the relationship between intellectual property rights (IPRs) and competition law. It summarizes the U.S. Supreme Court's 2006 decision in Illinois Tool Works v. Independent Ink, which rejected the presumption that patents confer market power. The decision established that plaintiffs in tying cases must prove the defendant has market power in the relevant market, rather than relying on this presumption. It analyzes how the presumption originally arose and reasons for its failure, noting a lack of economic evidence supporting an equivalence between legal and economic monopolies. The ruling shifts analysis of patent tying cases to a rule of reason approach.
Partners Mauricio Uribe, Dan Altman and Jessica Achtsam gave a presentation on understanding the history and current state of the law involving willful infringement and enhanced damages under U.S. Patent Law. They provided insights and practical tips related to the evolving standard of care related to potential assertions of patent infringement.
Speakers: Mauricio Uribe, Dan Altman and Jessica Achtsam
Focus on Pharma: Creating, Protecting & Enforcing High-Value IP AssetsSterneKessler
A two-day conference held by Sterne, Kessler, Goldstein & Fox P.L.L.C., which focused on on recent trends in substantive case law, their impact on patent prosecution and examination, and implications regarding the enforcement of patents in the pharmaceutical and biopharmaceutical industry.
This document summarizes a USPTO Bio/Chem/Pharma Customer Partnership meeting in September 2006. About 100 people attended in person and 40 attended virtually. Key topics discussed included recent changes to restriction practice, data on restriction petition outcomes, new accelerated examination rules, the examination of bioinformatics cases, and upcoming proposed rule changes regarding claims, continuations, IDS practice and Markush claims. Speakers from various technology centers and art units provided updates in their areas. Attendees engaged in discussion and questions.
More Related Content
Similar to SKGF_Presentation_Patent Licensing in the Wake of MedImmune, eBay, KSR and Microsoft_2007
Managing IP In Light of Changing US Patent LawIanliu
This document discusses strategic intellectual property management and how U.S. patent law is changing. It provides an overview of strategic IP management, including creating, maximizing, and realizing IP value. It then summarizes how recent Supreme Court cases and proposed patent law reforms have impacted licensing and litigation strategies. When asked about a competitor's new product, the document advises reviewing existing patents for potential licensing or litigation in light of evolving legal standards regarding obviousness and injunctions.
Divided Infringement of Method Claims: A Tough SellMichael Cicero
Discusses the state of the law on this issue prior to the Federal Circuit's decision in Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012).
This document summarizes an article that examines the validity of intellectual property (IP) carve-outs in arbitration clauses in light of recent legal developments. It discusses how IP carve-outs are commonly used to exclude IP issues from arbitration, but cites justifications for this are weakening. Recent court rulings have made interim injunctions in IP disputes more difficult to obtain, and separating IP issues from other contractual issues is challenging, leading to prolonged disputes. Additionally, arbitration institutions have strengthened rules for interim relief in IP matters. Therefore, the document concludes IP carve-outs may not provide intended benefits and add unnecessary costs and delays.
The marcus evans 5th Product and Pipeline Enhancement for Generics Conference hosted industry leaders within the Generic Pharmaceutical, Branded Pharmaceutical and API industries operating globally. These leaders shared best practices, strategies and tools on portfolio management and business strategy, as well as legal, intellectual property and patent issues.
Knobbe Martens' attorneys presented on the following topic:
*Analyzing Recent Updates to the Hatch-Waxman Act to Grasp Future Impacts and Challenges
*Studying recent changes that could impact the industry, including 180-day exclusivity and complications regarding patent listings
*Drawing lessons from the close relationship between the patenting of generic products and FDA regulatory approval to pinpoint areas of improvement
*Considering the impact biosimilar products could have on market entry and patent strategies
*Reviewing both real-life rulings and hypotheticals regarding Hatch-Waxman litigation to identify future strategies
The document summarizes the impact of the US Supreme Court's 2006 eBay v. MercExchange decision on the availability of permanent injunctions for patent infringement. It discusses how the decision established a four-factor test for injunctions and eliminated the presumption of irreparable harm for patent holders. It then summarizes several post-eBay cases where courts denied permanent injunctions and instead imposed ongoing royalty rates. The key impacts are that non-practicing entities and owners of small components face high hurdles to injunctions, while direct competitors can still potentially receive injunctions. Questions remain regarding ongoing royalty rates and treatment of willful infringement.
Federal Circuit will review en banc two recent panel decision relating to joint infringement of method claims — Akamai Technologies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010) and McKesson Technologies Inc. v. Epic Systems Corp., 98 U.S.P.Q.2d 1281 (Fed. Cir. 2011).
The document discusses divided patent infringement and the legal standards for determining liability when infringement requires actions by multiple parties. It reviews pre-BMC case law treating infringement as a tort and joint infringers as joint tortfeasors. The BMC and Muniauction cases established that to prove direct infringement, a plaintiff must show one party directed or controlled the other's performance and effectively performed every step of the patented method.
1) Reasonable royalty calculations are important in patent infringement cases, as they represent the minimum damages a patent holder is entitled to and are the most common form of damages sought, particularly by non-practicing entities.
2) There are two main approaches to calculating reasonable royalties - the analytical approach based on infringer's profits, and the hypothetical negotiation approach which aims to determine the royalty the patent holder and infringer would have agreed to.
3) The Georgia-Pacific factors provide a legal framework for assessing reasonable royalties, considering factors relevant to a hypothetical negotiation between willing parties such as existing royalty agreements, industry standards, and the merits of the invention.
The document discusses how the U.S. patent system has struggled to balance patent rights and preventing abuse. Recent legislation and court rulings aimed to curb frivolous lawsuits led to concerns the system favored accused infringers over patent owners. However, new court decisions indicate the pendulum may be shifting back toward balance, finding the right amount of power for both patent owners and accused infringers.
This month’s litigation group presentation includes a discussion of the state of the law regarding preliminary injunctions in trademark infringement cases. The presentation also examines similar issues with respect to trade secret infringement, particularly as they relate to the doctrine of inevitable disclosure.
This document outlines 10 unique ethical issues facing in-house counsel. It discusses issues such as ensuring compensation complies with rules prohibiting business transactions with clients without proper disclosures and consent. It also addresses maintaining independent professional judgment, licensing requirements, developing competence in diverse legal topics, avoiding unauthorized practice of law, identifying the client, separating legal and business advice, privilege considerations, obligations to report legal and ethical violations up the corporate ladder, and resources for further guidance.
This document summarizes guidelines from the FTC and state attorneys general for online marketers and affiliates to avoid investigations and enforcement actions for deceptive practices. It outlines what constitutes deception under the FTC Act, how the FTC interprets marketing claims, disclosure requirements, and the investigative and enforcement processes of the FTC and state agencies. It also provides examples of past FTC and state actions against online marketers and affiliates related to areas like mortgage offers, debt relief, and spam emails. The document advises best practices for legal compliance.
SKGF_Presentation_The Supreme Courts Renewed Interest In IP_April 2007SterneKessler
The Supreme Court has recently taken a renewed interest in intellectual property cases, reviewing and reversing several Federal Circuit rulings over the past decade. This suggests the Supreme Court is unhappy with the Federal Circuit's handling of patent law and prefers flexibility over bright-line rules. There are indications the Supreme Court views IP law as more important today than in the past and wants to ensure consistency with how other types of cases are handled. The talk examines this growing tension between the two courts with implications for how patent cases may be decided going forward.
As the legal landscape continues to evolve in terms of intellectual property law, the Los Angeles Business Journal once again turned to some of the leading IP attorneys and experts in the region to get their assessments regarding the current state of IP legislation, the new rules of copyright protection, licensing and technology, and the various trends that they have been observing, and in some cases, driving. Below is a series of questions the Business Journal posed to these experts and the unique responses they provided – offering a glimpse into the state of intellectual property law in 2014 – from the perspectives of those in the trenches of our region today.
This ppt was used in a Legal English class at the Universidad Católica de Cuyo sede San Luis. It comprises Three Corporate law cases and one major Competition Law case.
The document discusses merger objection lawsuits that typically occur when a company is acquired. It provides examples of typical characteristics of these lawsuits, including that they usually follow the announcement of a merger within two weeks and are often settled within two months. The document also summarizes the fiduciary duties of company directors in evaluating merger offers, including the duties of care, good faith and loyalty. It notes that Delaware law establishes three levels of scrutiny for the court to evaluate director decisions: the business judgment rule, enhanced scrutiny, and entire fairness.
Intellectual Property Rights: Between Exclusivity and Market PowerMoses Muchiri
This document provides an analysis of the relationship between intellectual property rights (IPRs) and competition law. It summarizes the U.S. Supreme Court's 2006 decision in Illinois Tool Works v. Independent Ink, which rejected the presumption that patents confer market power. The decision established that plaintiffs in tying cases must prove the defendant has market power in the relevant market, rather than relying on this presumption. It analyzes how the presumption originally arose and reasons for its failure, noting a lack of economic evidence supporting an equivalence between legal and economic monopolies. The ruling shifts analysis of patent tying cases to a rule of reason approach.
Partners Mauricio Uribe, Dan Altman and Jessica Achtsam gave a presentation on understanding the history and current state of the law involving willful infringement and enhanced damages under U.S. Patent Law. They provided insights and practical tips related to the evolving standard of care related to potential assertions of patent infringement.
Speakers: Mauricio Uribe, Dan Altman and Jessica Achtsam
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Focus on Pharma: Creating, Protecting & Enforcing High-Value IP AssetsSterneKessler
A two-day conference held by Sterne, Kessler, Goldstein & Fox P.L.L.C., which focused on on recent trends in substantive case law, their impact on patent prosecution and examination, and implications regarding the enforcement of patents in the pharmaceutical and biopharmaceutical industry.
This document summarizes a USPTO Bio/Chem/Pharma Customer Partnership meeting in September 2006. About 100 people attended in person and 40 attended virtually. Key topics discussed included recent changes to restriction practice, data on restriction petition outcomes, new accelerated examination rules, the examination of bioinformatics cases, and upcoming proposed rule changes regarding claims, continuations, IDS practice and Markush claims. Speakers from various technology centers and art units provided updates in their areas. Attendees engaged in discussion and questions.
SKGF_Advisory_US Design Patents Strengthened by Recent Federal Circuit Ruling...SterneKessler
The Federal Circuit issued a decision strengthening US design patents. It threw out the "point of novelty" test for infringement and returned to a test of whether the accused design is "substantially the same as" or a "colorable imitation" of the patented design. This simplifies the test for infringement and shifts the burden of comparing the patented design to prior art to the accused infringer. The decision also cautions against describing a design patent's drawings with words, which could unduly emphasize particular features over the design as a whole. This ruling should reduce design patent litigation costs for patent holders and make summary judgment of infringement more likely.
SKGF_Advisory_Two Questions Every Wind Energy Company Should Ask Itself_2009SterneKessler
Before bringing a new wind turbine product to market, companies should ask two important questions: 1) Does someone hold a patent that could block sales of the product? and 2) Can the company's patents block competitors from selling similar products? To answer the first question, companies should thoroughly review their product and related patents to ensure freedom to operate without infringement. They should also consider pending patent applications that could issue as enforceable patents. To answer the second question, companies should seek patents on novel and non-obvious aspects of their product to create roadblocks for competitors. Conducting this analysis can help companies avoid infringement liability and protect their market position.
The document summarizes the February 24, 2006 hearing between NTP, RIM, and the US government over NTP's patent infringement claims against RIM regarding Blackberry technology. It outlines two possible scenarios for how the judge, James R. Spencer, may rule on damages and an injunction. The first scenario has Judge Spencer siding more with NTP, awarding them full damages and ultimately blocking Blackberry services. The second scenario favors RIM more, with lower initial damages and no service interruption. The authors believe the first outcome is more likely.
SKGF_Advisory_Strategies for Life Under the New USPTO Rules on Continuation a...SterneKessler
The document summarizes new rules from the USPTO regarding continuation and claims practice that take effect on November 1, 2007. Key points of the new rules include: limiting the number of claims to 5 independent and 25 total without an examination support document; limiting continuations and RCEs to two "as of right" per family; requiring commonly owned applications to be identified. The document provides strategies for dealing with the new rules such as using suggested restriction requirements and filing continuations serially after a parent is allowed.
SKGF_Advisory_SKGF Forms Stem Cell Task Force Advisory_2005SterneKessler
A law firm formed a Stem Cell Task Force in 2004 to stay up-to-date on legal and policy developments regarding stem cells and inform clients. The task force has published three pieces on stem cell patenting, including one on California's Proposition 71 and the stem cell patent landscape. Their latest publication discusses whether patent pools could help resolve stem cell patent issues.
SKGF_Advisory_Reexamination Practice with Concurrent District Court or USITC ...SterneKessler
This document discusses the interplay between patent litigation in federal courts or the International Trade Commission and concurrent reexamination proceedings involving the same patent before the US Patent and Trademark Office. It notes that these "parallel universes" operate with separate rules, standards, procedures, timelines and results. The increased use of reexamination as an alternative venue to challenge patent validity when district court litigation has been initiated is discussed. Key factors driving this include the USPTO's focus on making reexamination more efficient and changes in the legal landscape regarding patent validity and obviousness standards from Supreme Court cases. The impact of potential reexaminations is now commonly considered in nearly all patent litigation.
SKGF_Advisory_Real World Impacts of Reexamination Practice and Procedure_2008SterneKessler
This document discusses issues related to patent reexamination procedures and their impact on patent owners. It provides background on ex parte and inter partes reexamination procedures. It then discusses concerns about the low standard for instituting reexaminations, the impact of reexaminations on capital markets, and identifying the real party in interest in inter partes reexaminations. It proposes solutions such as increasing the standard for reexaminations involving previously litigated patents or previous reexams and keeping reexamination proceedings confidential until a final office action.
SKGF_Advisory_Preparing and Prosecuting a Patent that Holds up in Litigation_...SterneKessler
This document provides guidance on preparing and prosecuting a patent application to obtain a patent that will withstand litigation. It discusses considerations prior to filing such as conducting a prior art search, carefully drafting claims to avoid obvious errors or unnecessary limitations, and ascertaining inventorship. During prosecution, it recommends fully complying with the duty of disclosure and using interviews and narrowing amendments strategically. Post-issuance, it suggests using certificates of correction, reissue applications, and reexamination where needed to strengthen the patent. The overall goal is to obtain a valid, enforceable patent by addressing weaknesses before they can be exploited in litigation.
SKGF_Advisory_Living in a Post KSR World_2007SterneKessler
This document provides an overview of how the Supreme Court's 2007 decision in KSR International Co. v. Teleflex Inc. has impacted obviousness determinations at the Federal Circuit, district courts, and USPTO. Since KSR, the Federal Circuit has found inventions obvious in 6 out of 9 precedential decisions. While some language in opinions remains similar to pre-KSR cases, the standard for determining obviousness is less rigid, with motivation or reason to combine references no longer required to be explicit. District courts are more readily granting summary judgment of obviousness. The USPTO has also been impacted but specifics are still emerging.
SKGF_Advisory_Federal Circuit Issues Decision in TAFAS v. Doll_2009SterneKessler
The United States Court of Appeals for the Federal Circuit issued a decision in Tafas v. Doll regarding USPTO rules on claims, continuation applications, and Requests for Continuation Examination (RCEs). While the Federal Circuit found the rules to be procedural and within the USPTO's authority, it determined the rule limiting continuation filings to two was inconsistent with statute. The validity of the rules limiting claims and RCEs was not affirmed and was remanded for further consideration. The opinion was issued by a three-judge panel with disagreement on some aspects. The parties can request rehearing by the full panel of judges.
SKGF_Advisory_Stem Cells-Patent Pools to the Rescue_2005SterneKessler
Stem cell research faces challenges due to numerous existing and pending patents covering related technologies. A patent pool is proposed to consolidate these patents into a single license to streamline access for researchers and developers. A patent pool would integrate complementary patents and reduce costs by avoiding multiple licensing agreements. However, any patent pool must be carefully designed to avoid anti-competitive behaviors like restricting innovation. If properly structured, a stem cell patent pool could enable continued progress while respecting patent holders' rights.
SKGF_Advisory_Nanotechnology Practice News_2005SterneKessler
The law firm Sterne, Kessler, Goldstein & Fox provides an update on its growing nanotechnology practice. It has hired three new Ph.D. scientists - Dr. Barron, Dr. Lukas, and Dr. Tuminaro - to strengthen its technical expertise in areas like tissue engineering, protein microarrays, nanoporous materials, and solid state physics. It has also analyzed nanotechnology patent prosecution histories and plans to present preliminary results of its comprehensive study of all nanotube patents issued in 2004 at the 2005 NSTI conference.
SKGF_Presentation_What You Need To Know About The Proposed USPTO Rule Changes...SterneKessler
The document discusses proposed rule changes and initiatives at the USPTO aimed at addressing issues related to patent application pendency, quality, and backlog. Specifically, it outlines proposed rules that would limit continuing applications and requests for continued examination by requiring additional showings for second or subsequent filings. It also discusses a proposed rule change to allow examiners to focus initial examination on representative claims designated by the applicant and defer examination of non-designated claims. The document provides examples and recommendations for practitioners regarding the proposed changes.
This document discusses intellectual property considerations for nanotechnology. It defines intellectual property and outlines patent, trademark, copyright and trade secret protections. It focuses on patent rights, describing the requirements to obtain a patent, the patent application process, and key stages from conception of an idea to patent issuance. Challenges in nanotechnology such as incomplete ideas and newness of the field are addressed. The importance of documentation, education of attorneys, broad claims, and leveraging the patent process are emphasized for obtaining strong nanotechnology patent rights.
SKGF_Presentation_Stem Cells The Patent Landscape_2005SterneKessler
1. Several patents exist related to stem cell research, including patents covering methods of culturing primordial germ cells and pluripotent embryonic stem cells.
2. The Wisconsin Alumni Research Foundation (WARF) owns patents related to human embryonic stem cells that are reportedly available for licensing.
3. WARF is asking for $100,000 upfront fee and $25,000 annual fee to license their patents for commercial use related to stem cell therapies.
The document summarizes the results of a 2004 study of 206 US patents issued that year containing "nanotube" in the claims, finding that the patents covered a wide range of technologies, took an average of 28 months to issue, and examinations showed relatively high allowance rates, suggesting less rigorous review by the Patent Office.
SKGF_Presentation_Nanotechnology IP Licensing Think Big, But Keep Your Feet O...SterneKessler
This document summarizes a presentation on nanotechnology intellectual property licensing. It discusses how the USPTO is handling nanotechnology patents, noting the disruptive and pervasive nature of nanotechnology. It outlines challenges in obtaining patent protection for nanotechnology inventions due to issues like enablement, inherency, and breadth of claims. The document also discusses considerations for nanotechnology licensing agreements, including ownership issues, license income structures, and performance requirements.
Marvin C. Guthrie presented at the International Engineering Consortium NanoEngineering World Forum on June 23, 2003. The presentation discussed intellectual property strategies for transferring technology depending on whether you are from academia, industry or venture capital. It also covered issues like funding source encumbrances, acquiring technology through assignments and licenses, exclusivity in licenses, and considerations in licensing agreements like maintenance of IP and enforcement.
SKGF_Presentation_Patent Licensing in the Wake of MedImmune, eBay, KSR and Microsoft_2007
1. Patent Licensing in the
Wake of MedImmune, eBay,
KSR and Microsoft
Timothy J. Shea, Jr. – Director
Sterne, Kessler, Goldstein & Fox P.L.L.C.
Drafting and Negotiating Patent
License Agreements
West Legalworks - One Day Workshop
Boston, MA
June 14, 2007
2. Introduction
• Several very significant decisions
by U.S. Supreme Court in patent
cases within the past year
• Cases are changing the rules of the
game for patent licensing
• Reflects heightened interest of
Court in patent cases
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3. Introduction
• Reasons for heightened scrutiny:
• Increased value of technology and IP in U.S. economy
• Increase in number of patents sought and granted
• Increased public awareness of importance of patents
– NTP v. Research in Motion (Blackberry case)
• Rise of patent holding companies
– NTP
• Perception that patents are stifling innovation more than
promoting it
– FTC Report
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4. Introduction
• Common Themes:
– Federal Circuit reversed
– Traditional legal principles in areas such
as equity and jurisdiction apply equally to
patent cases
• No special rules for patent disputes
– Elevation of helpful guidelines to rigid
rules by Federal Circuit is improper
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5. Introduction
• Result:
– Elimination of bright line rules relied on by
Federal Circuit is leading to greater
uncertainty in areas such as permanent
injunctions, DJ jurisdiction, obviousness
– Incremental erosion of patentee’s power (or
at least return to pre-Fed. Cir. Level)
– Playing field shifting in favor of defendants
and licensees
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6. eBay Inc. v. MercExchange L.L.C
• 126 S.Ct.1837 (May 15, 2006)
– Unanimous decision (Thomas)
• Issue: Does traditional four-factor test for
permanent injunctive relief apply to patent
disputes?
• Background:
– MercExchange in business of patent licensing
– Patent at issue was business method patent for
electronic market for sale of goods between private
individuals
– MercExchange sought to license patent to eBay
• Had previously licensed it to other companies
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7. eBay Inc. v. MercExchange L.L.C
• No agreement 0 MercExchange filed suit
• Dist. Ct.
– Jury found patent valid and eBay had infringed
– Permanent Injunction denied
• D. Ct. concluded award of damages sufficient
• Fed. Cir. Reversed
– Applied “general rule that courts will issue permanent
injunctions against patent infringement absent
exceptional circumstances”
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8. eBay Inc. v. MercExchange L.L.C
• Supreme Court reversed Fed. Cir.
– “well-established principles of equity” require
plaintiff seeking permanent injunction to
satisfy 4-factor test:
1. irreparable injury
2. remedies at law (e.g. money damages)
inadequate
3. balance of hardships between plaintiff and
defendant justify PI
4. public interest not disserved by PI
NO SPECIAL RULE FOR PATENT CASES
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9. eBay Inc. v. MercExchange L.L.C
• Fed. Cir. erred in holding statutory right
to exclude alone justifies presumption
the injunction should be granted
• Court looked to Patent Act
– Injunctions “may” issue “in accordance with
principles of equity”
• Copyrights
– Similar right to exclude, but no special rule
for injunctions
• Traditional rule applies
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10. eBay Inc. v. MercExchange L.L.C
• Neither Dist. Ct. nor Fed. Cir. Applied proper
test
– Dist. Ct. erred in concluding that MercExchange’s
willingness to license and lack of commercial activity
practicing patents meant could not show irreparable
harm
• Court notes universities and independent inventors who
seek to license may still meet 4-prong test
– Fed. Cir. Erred in concluding injunction should be
denied only in exceptional circumstances
• S. Ct. did not opine on appropriateness of
injunction in this case
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11. eBay Inc. v. MercExchange L.L.C
• Roberts Concurrence (Scalia, Ginsburg)
– Notes “long tradition” of granting injunctive relief in
“vast majority” of patent cases
– Suggests tradition should continue
• Kennedy Concurrence (Stevens, Souter,
Breyer)
– notes tradition of granting injunctions but suggests
recent developments may require change
• Rise of licensing industry
• Questions business method patents
• Quotes FTC report on innovation
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12. eBay Inc. v. MercExchange L.L.C
• Kennedy concurrence
– “When the patented invention is but a
small component of the product the
companies seek to produce and the
threat of an injunction is employed
simply for undue leverage in
negotiations, legal damages may well
be sufficient to compensate for the
infringement and an injunction may
not serve the public interest.”
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13. Injunctive Relief after eBay
• Survey of approximate two dozen post-
eBay cases
– Injunction granted in about 70% of cases
• Very likely where direct competitors, competing
products, loss of market share, harm to reputation
– Injunction denied
• More likely where plaintiff not practicing invention,
established licensing program, significant harm to
business of infringer
– Finisar Corp. v. Directv Group, Inc.
» Finisar not practicing invention
» Injunction would put Direct TV out of market
– Z4 Techs., Inc. v. Microsoft
» No irreparable harm, hardship for Microsoft
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14. eBay – Impact on Licensing
• Injunctions no longer automatic
• Risk to potential infringer mitigated
• Injunctions even more difficult for patent
“trolls”
• Primary weapon of trolls (i.e., threat of
shutting down potential infringer’s
business) now less potent
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15. MedImmune, Inc. v. Genentech, Inc.
• 127 S.Ct. 764 (Jan. 7, 2007)
– Scalia
– 8-1
• Issue: Must a patent licensee terminate
or be in breach of license before it can
seek a declaratory judgment that the
underlying patent is invalid,
unenforceable, or not infringed?
• Answer: No
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16. MedImmune, Inc. v. Genentech, Inc.
• Background
• MedImmune entered into agreement with
Genentech in 1997 to license “Cabilly” patent and
application
– Covered MedImmune’s product Synagis
• Cabilly II issued in 2001
– Genentech sent letter to MedImmune stating
royalties due on Cabilly II
• MedImmune disputed validity, but paid royalties
under protest rather than risk treble damages and
injunction preventing sale of Synagis (80% of
revenues)
• MedImmune brought DJ action
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17. MedImmune, Inc. v. Genentech, Inc.
• Dist. Ct. dismissed for lack of
subject-matter jurisdiction
– Citing Gen-Probe v. Vysis, Inc. (Fed.
Cir. 2004)
• Held that patent licensee in good standing
cannot establish Art. III case or
controversy regarding validity,
enforceability, or scope of patent because
license “obliterate[s] any reasonable
apprehension” that licensee will be sued
• Fed. Cir. affirmed
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18. MedImmune, Inc. v. Genentech, Inc.
• Supreme Court reversed
– Set forth standard for DJ jurisdiction
• “[W]hether the facts alleged, under all the
circumstances, show that there is a
substantial controversy, between parties
having legal interests, of sufficient
immediacy and reality to warrant the
issuance of a declaratory judgment.”
– Court noted that no dispute that
standard would be met if MedImmune
had ceased making payments.
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19. MedImmune, Inc. v. Genentech, Inc.
– However, as long as payments made, no
risk of suit by Genentech
– Court analogized to constitutional challenge
• Where threatened action by government is
concerned, no requirement to expose self to
liability before bringing suit to challenge basis for
the threat
• Subject matter jurisdiction not precluded simply
because threat-eliminating behavior was
effectively coerced
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20. MedImmune v. Genentech
– Cited earlier decision in Altvater v.
Freeman, 319 U.S. 359 (1943)
• Patent licensee’s failure to cease
payment of royalties did not render
nonjusticiable dispute over validity of
patent
• Fact paid under injunction does not
render distinguishable
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21. MedImmune, Inc. v. Genentech, Inc.
– “The rule that a plaintiff must destroy a large
building, bet the farm, or (as here) risk treble
damages and the loss of 80 percent of its
business, before seeking a declaration of its
actively contested rights finds no support in
Article III.”
– Court rejected Genentech’s argument that
common-law rule that a party to a contract
cannot challenge its validity and, at same
time, reap its rewards applies
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22. Impact of MedImmune
• Dramatic shift in balance of power
between parties to existing license
agreements
– Little downside to licensee in
challenging validity of licensed patent
– More power to licensee to compel
renegotiation
– Increased uncertainty for licensors
• No repose
• Potential for sudden increase in litigation
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23. Impact of MedImmune
• Potential licensees now have
incentive to take license to reduce
exposure then seek DJ
• Licensors must carefully examine
existing license relationships
– Where DJ more likely, determine if
termination possible
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24. Questions Unanswered by MedImmune
• Status of Licensee Estoppel
– “We express no opinion on whether a
nonrepudiating licensee is similarly
relieved of its contract obligation
during a successful challenge to a
patent’s validity – that is, on the
applicability of licensee estoppel
under these circumstances.”
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25. Questions Unanswered by MedImmune
• Legality of Contractual Limitations on
Licensee Challenges?
– Can licensors include provision that license
will terminate if licensee challenges validity?
• Not clear - presumption against restrictions on
licensee’s right to challenge validity, but S. Ct. in
MedImmune specifically declined to address Lear.
– Other contractual provisions to consider:
• Admissions that licensed patent examined and
valid?
• Escalated royalties/milestones in event of suit?
• Forum selection clauses?
• Notice of suit?
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26. Post-MedImmune Cases
• SanDisk Corp. v. STMicroelectronics (Fed. Cir.
March 26, 2007)
• Appeal of Dist. Ct. dismissal of DJ action
• Background:
– Parties are competitors in flash memory field
– ST’s VP of IP and Licensing sent letter to CEO of
SanDisk noting patents that “may be of interest” and
seeking meeting to discuss cross-license
– At cross-licensing meeting, parties discussed patent
mapping and infringement analyses. However,
parties said no plans to sue each other
– Parties exchanged cross-licensing offers
– A few weeks later, SanDisk filed DJ action
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27. Post-MedImmune Cases
• SanDisk con’t
• D. Ct. granted ST’s motion to
dismiss on ground SanDisk did not
have reasonable apprehension of
suit.
– “studies and determined infringement
analyses . . . Did not constitute the
requisite ‘express charges [of
infringement] carrying with them the
threat of enforcement.”
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28. Post-MedImmune Cases
• SanDisk con’t.
• Citing MedImmune, Fed. Cir.
Reversed
– Recognized MedImmune as rejection
of Fed. Cir. reasonable apprehension
of suit test
– Mere knowledge of existence of
patent of another, even if perceived to
pose infringement risk, will generally
not give rise to DJ jurisdiction absent
some affirmative act by patentee
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29. Post-MedImmune Cases
• SanDisk con’t.
– “We hold only that where a patentee asserts rights
under a patent based on certain identified ongoing or
planned activity of another party, and where that party
contends that it has the right to engage in the
accused activity without license, an Article III case or
controversy will arise and the party need not risk a
suit for infringement by engaging in the identified
activity before seeking a declaration of its legal
rights.”
– Fed. Cir. Noted infringement analysis was essentially
assertion of rights by ST based on specific, identified
activity of SanDisk
• Referred to infringement liberally at meeting
• Asked for royalties
• Statement that does not intend to sue does not moot
actual controversy created by its acts.
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30. Post-MedImmune Cases
• Bryson concurrence
– Worried about “broad implications” of
decision
– “Therefore, it would appear that under
the court’s standard virtually any
invitation to take a paid license . . .
Would give rise to an Article III case or
controversy.”
– Predicts “sweeping change” in the law
of DJ jurisdiction
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31. Post-MedImmune Cases
• Dilemma:
– May be able to avoid DJ by sending
general offer to license without
specifying infringing activity
– However, may not be enough to put
on notice.
– Incentive for licensor to file suit then
seek to negotiate license
• File but don’t serve
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32. Post-MedImmune Cases
• Teva Pharm. v. Novartis Pharm.
(Fed. Cir. March 30, 2007)
– Teva filed ANDA to market generic
version of Novartis’ drug FAMVIR®
• Para. IV cert. that did not infringe any of
five patents listed by Novartis in Orange
Book
– Novartis sued Teva on drug patent
only
– Teva sought DJ on four nonasserted
method patents
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33. Post-MedImmune Cases
• Teva v. Novartis
• D. Ct. dismissed DJ for lack of
jurisdiction
• Fed. Cir. Reversed
– Considered “all circumstances” and found
actual case or controversy
– Factors:
• Listing in Orange Book
– May not itself be enough for DJ but a factor
• Teva’s submission of ANDA was act of
infringement
• Purpose of Hatch-Waxman – to obtain patent
certainty
• Existing litigation on drug patent
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34. Post-MedImmune Cases
• Teva v. Novartis
– Patent owner may not be able to sue
on only select patents listed in Orange
Book covering same product
– Concurrence suggests Orange Book
listing alone should be enough for DJ
jurisdiction
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35. Microsoft Corp. v. AT&T Corp.
• Decided April 30, 2007 (Ginsburg)
• Background
– AT&T has patent on computer used to
digitally encode and compress recorded
speech
– Windows OS contains software code that
enables computer to do this
– Microsoft sells Windows to overseas
manufacturers who then install on computers
and sell to public
• Key – Microsoft provides master disk from which
manufacturers make copies that are installed on
computers
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36. Microsoft Corp. v. AT&T Corp.
• AT&T sued Microsoft for infringement
under 271(f)
– 271(f)(1)
• “Whoever without authority supplies or causes to
be supplied in or from the United States all or a
substantial portion of the components of a
patented invention, where such components are
uncombined in whole or in part, in such a manner
to actively induce the combination of such
components outside of the United States in a
manner that would infringe the patent if such
combination occurred within the United States,
shall be liable as an infringer.”
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37. Microsoft Corp. v. AT&T Corp.
• D. Ct. found Microsoft liable
• Fed. Cir. Affirmed
• Supreme Court reversed
– Because Microsoft did not supply actual copies
loaded on computers, no 271(f) liability
– Here “component” was copy of Windows, not
Windows in abstract
– Ease of copying not relevant to analysis
– Presumption against extraterritoriality
– To prevent copying abroad, must pursue patents
abroad
• Problem for software patents
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38. KSR Int’l v. Teleflex Inc.
• Decided April 30, 2007 (Ginsburg)
• Patent on adjustable pedal assembly
with electronic pedal position sensor
attached to a fixed pivot point
• Prior art taught
– Pedal assembly with electronic sensor on
pivot point
– Sensors of type claimed
– Location of sensor on fixed portion of pedal
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39. KSR Int’l v. Teleflex Inc.
• D. Ct. granted SJ of obviousness
• Fed. Cir. Reversed
– Said D.Ct. did not apply teaching,
suggestion, motivation (TSM) test
strictly enough
• References needed to address precise
problem facing inventors in order to be
combined
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40. KSR Int’l v. Teleflex Inc.
• Supreme Court reversed (again)
– Fed. Cir. applied TSM test in overly
narrow, rigid manner
• Graham test is flexible
• Improvement must be more than
predictable use of prior art elements
• Not limited to references dealing with
precise problem addressed
– Any need or problem known in the field and
addressed by patent can provide reason for
combining elements
• “Obvious to try” could be enough in some
instances
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41. KSR Int’l v. Teleflex Inc.
• Impact of KSR
– TSM test not dead
• Still considered “helpful insight” but not overriding
consideration
– Return to flexible approach
• Less difficult to make out prima facie case were
combination of known elements
– Concern about increased use of hindsight at
PTO
– Licensing
• More leverage to licensees and potential infringers
– Particularly in view of MedImmune and eBay
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42. Patent Licensing in the Wake of MedImmune,
eBay, KSR and Microsoft
Thank You
Timothy J. Shea, Jr.
Sterne, Kessler, Goldstein & Fox, P.L.L.C.
(202) 772-8679
tshea@skgf.com
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