With Christof Wolpert, Raymond Millien, Vincent Brault, and Gene Quinn Video available on-demand. To view the webinar, click the button below: In-house IP attorneys need to explain the importance a sound, thoughtful intellectual property strategy plays in the long-term strategic development of the company. This role is even more important now as corporations across the spectrum of innovation seek cost-savings…
For my wishes, I’ll make three. First, as I did last year and the year before, I again continue to wish for patent eligibility reform in Congress that would overrule Mayo, Myriad and Alice. My second wish is for Congress to amend the statutes that created post grant challenges and provide for a real presumption of validity that requires invalidity to be proven by clear and convincing evidence. Finally, as I did last year, I again hope the Federal Circuit dramatically significantly decreases its use of Rule 36 affirmances, and specifically stops using this docket management tool when cases are appealed from the PTAB and also with respect to appeals dealing with 101 patent eligibility issues.
Join Gene Quinn (IPWatchdog.com), Ray Millien (Chief IP Counsel for GE Oil & Gas) and Julia Elvidge (President of Chipworks) on Thursday, December 1, 2016, for an panel discussion on the Internet of Things, what it is, what it means for the future of innovation, and what legal issues will be confronting clients (and lawyers) in this 4th Industrial Revolution.
The U.S. District Court for the District of Kansas construed the word “or” in clause (e) of Claim 1 to mean “a choice between either one of two alternatives, but not both.” This claim construction was significant because the accused device performed an analysis of both the strongest and fastest signals (i.e., a user could not select between a magnitude or frequency mode). Therefore, because the accused device always performed both options, the court held that it did not infringe the ‘246 patent.
Recently, it has struck me that many business folks who “negotiate tons of IP license agreements,” fail to understand the difference between covenants, representations and warranties that are “standard” in many such agreements. Well, that is not too surprising. What is very surprising, however, is that many of their lawyers also fail to appreciate the differences as well! Many think the terms are synonymous and thus use them interchangeably. They are not. So, for those of you tired of faking the funk, here is some (either fresh or refresher) “Contracts 101!”
Individual inventors and corporate IP owners are used to dealing with accountants, lawyers and investment advisors – all professionals who are governed by state and/or federal professional regulations, and/or national association guidelines. Well, the question I pose is: What professional regulations govern the qualifications and conduct of all these IP middlemen? The short answer to the above question is “none!” After all, there is no IP brokerage or IP middlemen governing body.
I ended my three-part article by recommending that members of the IP Bar should strive to volunteer more pro bono hours in order to help bridge the innovation gap. Encouragingly, I received some emails from IPWatchdog.com readers asking, “how can I help?” Well, after some research, here is a list of some organizations around the country seeking patent, trademark and copyright pro bono attorney volunteers.
The latest statistics show that the cumulative value of U.S. intellectual property is approximately $5.8 trillion (or 48.4% of GDP), and each year over half a million patent applications are filed, over a quarter million patents are issued, over 4000 patent infringement suits are filed and IP verdicts total over $4.6 billion with a median patent damage award of approximately $4 million. Against this backdrop, I now present an updated taxonomy containing 19 IP-related business models. The business models are in addition to the “traditional” operating companies and their “traditional” IP law firms. Further, while not pretending to be all-inclusive, a directory of players implementing one or more of these 19 IP business models is available for download at the end of this post.
Now, for those of you paying attention, you will notice that the spelled out numbers do not match the digits appearing in parentheticals. Why do attorneys do this? What class in law school do they teach this? I’m told this is a practice that dates back to the days of carbon copies and “old school” telefax machines, where parties needed two chances to be able to discern the figures in legal documents.
Unlike NPEs, defensive patent pools entities do not (at least initially) seek to generate revenues. Rather, they charge admission fees into the pool to fund IP acquisitions and the administrative costs to operate the pool. In sum, defensive patent pool aggregation is analogous to an insurance policy. But, where classic insurance lowers a company’s costs when accidents happen, patent pools are designed to reduce the likelihood of accidents (i.e., being sued for patent infringement) from happening at all.
In a 1972 court decision, United States Supreme Court Justice Stewart wrote: “Property does not have rights. People have rights.” Accordingly, Blacks must be diligent in making sure that they are aware of their intellectual property rights, like any other civil right, and seek IP legal counsel to secure and enforce these rights for economic gain, the avoidance of economic exploitation and the creation of wealth in the new millennium and beyond. That will only be achieved with the help of those (of all races and other categories that divide us) who work within the IP community. Until then, in a society where innovation is the key to individual wealth and national economic prosperity and where IP attorneys who represent innovators should be the “next generation civil rights lawyer,” I (and many like me) will have failed to live up to my mother’s dream.
One of the more indelible images of the civil rights movement are those from the Spring of 1968 as Black sanitation workers went on strike in Memphis, Tennessee holding signs that read “I am a Man,” in their fight for economic equality. (This is the reason that civil rights leader Martin Luther King, Jr. was visiting Memphis when he was assassinated on April 4, 1968.) Now those signs should not only read “I am a Man Who Thinks,” but “I am a Man Who Thinks and My Thoughts are Valuable.” Thus, a skillful IP attorney can be a modern day civil rights attorney by aiding Blacks to create IP rights in order to preserve their exclusive right to economically exploit the fruits of their creativity.
Many may initially wonder what IP has to do with civil rights. After all, IP rights (IPR) have always been understood in terms of individual economic incentives for creating society-wide public good in the form of cultural works, like art and music, and scientific knowledge such as medicines. The interrelationship initially seems odd because, regardless of political leanings, many are turned off by any mention or use of identity politics. Yet, as one leading scholar observed, “we cannot understand intellectual property today without recognizing the identity struggles embedded within it. Intellectual property’s convergence with identity politics reveals links between cultural representation and development, which traditional economic analyses of intellectual property overlook.” Thus, I ask should IPR be the new focal point of the civil rights movement in America?
For at least the past 15 years, the legal, technical and academic communities have been debating the patentability of business methods and software. Despite much negative press ink, talk, legislative activity and court opinions, the answer with respect to patent eligibility is still a resounding and categorical “yes.” That’s the easy part. What types of business methods and software exactly are patentable? That is the difficult question to answer.
Last month, both the U.S. Senate and U.S. House of Representatives held hearings related to patent disputes, the ITC, SSOs and FRAND licensing – no doubt precipitated by the smart phone patent wars. On July 11, 2012, the full Senate Judiciary Committee held a hearing entitled “Oversight of the Impact on Competition of Exclusion Orders to Enforce Standard-Essential Patents.” Witnesses at the Senate hearing included the Acting Assistant Attorney General, Antitrust Division, U.S. Department of Justice, and the Commissioner of the Federal Trade Commission (FTC). A week later, on July 18, 2012, the House Judiciary Committee’s Subcommittee on Intellectual Property, Competition and the Internet held a hearing entitled “The International Trade Commission and Patent Disputes.” Witnesses at the House hearing included Professor Colleen Chien of Santa Clara University School of Law, IP Counsel for Ford, VP of Litigation for Cisco, the General Counsel of Tessera Technologies, and the President of The American Antitrust Institute (AAI).