2013 01 09 gguls pat lit - introduction (class 1)

7/29/2019 2013 01 09 GGULS PAT LIT - Introduction (Class 1)

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January 9, 2012

GOLDEN GATE UNIVERSITYSCHOOL OF LAW:

PATENT LITIGATION


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Beck:

(408)[email protected]

Morrill: (415) 823-8214

[email protected]

Mitchell: (415) 766-3514

[email protected]

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Provide an overview of a patent case

for: Civil litigators involved in patent litigation

Patent prosecutors providing litigation support

Patent prosecutors involved in post-grant review ofan issued patent

Focus is on strategy and tactics

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Inventor discloses the invention

Public benefits from that disclosure Public in return gives inventor a patentgrant for a limited period of time

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Patents are obtained from a

government agency But it is not like a trip to the DMV

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Courts will often show a 17 minute

video An Introduction to the Patent Systemfrom the Federal Judicial Center Available from the Centers web site or YouTube Comes with a sample patent

Who will like this video better thepatent owner or accused infringer?

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Largest revision of patent laws in 60 years

Final changes become effective in March Modified first to file system (but it will be

years before new case law evolves.

PTO post grant review revised


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Exotic and non intuitive governing law

Can be extremely expensive Specialized procedural rules

Often technical, hard to explain

subject matter

No intrinsic morality

Hard to evaluate Can be bitter and acrimonious

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Claims/claim construction

Prior art and obviousness Doctrine of Equivalents Willful infringement

Inequitable conduct Damages Burden of proof/evidentiary rules

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Less than $1million at risk: $650,000

$1-$25 million at risk: $2,500,000 Over $25 million at risk: $5,000,000

AIPLA 2011 Economic Survey, Appendix A,Median Costs

[P]erhaps the most profitable kind oflitigation other than plaintiffscontingency-fee cases. Peter Zeughauser

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Special pretrial rules for patent cases Rules vary district by district Infringement contentions, invalidity contentions,

claim construction

Claim construction required in each case Reviewed de novoby the Federal Circuit

PTO procedures Post Grant Review Reexamination

International Trade Commission - analternate forum

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Juries (and Judges) may not

understand the technology Extensive use of analogies

Technical expert testimony is essential

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Protective cover for laptop computer

U.S. Patent No. 7,643,274 Ear Tip

U.S. Patent No. 7,681,577

Exercise Kit and Method of UsingSame U.S. Patent No. 6,258,014

Helically Grooved Foam Football U.S. Patent No. RE33449

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Often boring cases

Complicated issues Few heroes/villains

So what can be the themes?

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They stole/copied my invention

Goodness of invention

Patent approved by government (the ribbon) David v. Goliath

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Im the realinnovator

I am the realowner of the patent

Patentee didnt keep bargain no full disclosure Patentee cant compete in the market

Patentee is trying to suppress a better product

David v. Goliath

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Words, not facts, at issue

Unpredictable court rulings Befuddled juries (and judges)

De novoFederal Circuit review

Plaintiffs case gets worse from day 1

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These patent cases

involve moreacrimony than anyother category of

cases which I have,including an actualfistfight in adeposition.Anonymous DistrictCourt Judge

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First, determine what your client

wants Second, determine if you can deliverwhat the client wants

Analyze remedies at the beginningof the case Third, determine how much it will cost(and tell your client)

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Planning Goals Deadlines Costs

Organization Staffing Roles Communication

Trial Binder Actual or virtual?

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Formed in 1982

Non-regional (jurisdiction notgeographical)

Hears appeals from patentcases including non-patent issues

Historically considered pro-patent

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2011 Pilot program for 14 districts Northern, Central and Southern Districts of California and

District of Nevada among others

Non-specialist judges may declinepatent cases, which will then be

assigned to specialists Northern District: Ware, Whyte, White, Koh and Davila

Good or bad idea?

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Does the law of the Regional Circuit or

the Federal Circuit apply? The rule:

Issues not unique to patents

Use Regional Circuit law Issues unique to patents

Use Federal Circuit law

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What were the facts and the issue? Biodex moved for a directed verdict at the close

of testimonyJury verdict for Loredan Biodex did not renew motion or make a JNOV

(JMOL) motion after verdict Was Biodex required to renew its motion for

directed verdict or make a JNOV motion to obtainappellate review of sufficiency of evidence?

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Whose law applied? Federal Circuit law applied

Why? Because of need for uniformity, rather than

different District Court procedures

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Patents are issued to individualinventors One or more

Patents are transferred by assignment One or more

Patent rights are granted by license License = Agreement not to sue

Can be multiple licenses on the same patent

Exclusive or nonexclusive license Geographic limitations on license

Line of business limitations on license

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Who can sue?

Sole owner, co-owners, or exclusive licenseeof patent

Why?

Who can be sued? Direct infringers, inducers of infringement, or

contributory infringers may be sued

Officers, affiliates, customers, etc.

Exporters and importers

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Ortho sued as exclusive licensee ofAmgen

Amgen license exclusive in certainfields except against Amgen

License granted Ortho right to sue incertain circumstances Held:

Non-exclusive license Grant of right to sue insufficient for standing

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How do you distinguish an exclusivefrom an non-exclusive license? Territorial limitations Reserved rights and exclusions Temporal limitations

Termination rights How do you join an unwillingpatentee?

When is a patentee indispensable? Pre-assignment damages

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Poly-America obtained a judgment for$7M lost profits and $5 M reasonableroyalty from GSE Poly-America owned the patents

The sales were made by Poly-Flex, a

sister company Poly-Flex was a non exclusive licensee

Reversed as to lost profits A patent owner cannot recover the lost profits of

its licensees However . . .

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Affirmed as to reasonable royalty A patent owner does not have to have sales to

recover a reasonable royalty

Should Poly-Flex have joined in thesuit? Only an exclusive licensee may recover damages

Poly-America, LP v. GSE Lining Technology, 383 F.3d1303 (Fed. Cir. 2004)

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Lear hired Adkins to develop an improvedgyroscope

Adkins promptly developed an improvedlow cost method of building gyroscopes

Lear agreed to pay royalties in two written

licenses Lear refused to pay royalties based on

patent invalidity arguments

CA Supremes: A licensee is estoppedtodeny the validity of the licensors patent

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What was the Federal Issue involved?

Federal law governs U.S. patents California was enforcing a license

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A patent license maychallenge the

validity of the licensed patent Why?

There is a public policy against monopolies, andpatents are an exception

It is good to get invalid patents off the books Who has more incentive to challenge patent

validity than one who is paying royalties?

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Adkinss license to Lear included the

period prior to issuance of his patent Could Lear challenge its obligation topay royalties during this period, where

no ideas existed? A matter of state law, consistent withthe Federal policy

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Diamonds employee-Dr. Welter-developed aswine vaccine

He assigned all rights in patent application toDiamond

He then left and started Ambico, also making

swine vaccine Sued for patent infringement He defended by asserting patent invalidity

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Can Dr. Welter claim that his own patent isinvalid? Or is he precluded by assignor estoppel?

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Held: A patentee generally may notchallengethe validity of the patent which he hasassigned

Why different than Lear v. Adkins?1. Unfair and unjust;

2. Implicit representation that patent has value; and3. Dr. Welter executed an inventors oath

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The rule is not automatic, but requires aweighing of the equities

If the claims are different than those whichDr. Welter approved, perhaps he canchallenge them

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Q: How infectious is the estoppel?

2013 01 09 gguls pat lit - introduction (class 1)

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