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THURSDAYS 6:30-9:30pm (3 credit hours)
Room 301
Imran Khaliq
ROVI Corporation
2830 De La Cruz Blvd.
Santa Clara, CA 95050
Telephone: 415-596-6519
Email: Imran.Khaliq@gmail.com
Imran is available for office hours Thursdays 4:30-6:30 and by appointment
Tyson Winarski
Intellectual Ventures
2440 W. El Camino Real Suite 500
Mountain View, CA 94040
Telephone: (480) 244-8379
Email: twinarski@intven.com
Tyson is available for office hours Thursdays 4:30-6:30 and by appointment
This is a skills-based intellectual property course covering patent licensing and patent monetization transactions.
Patent licensing and monetization represents the largest financial portion of the patent economy. This practical course will focus on negotiation skills, contract drafting skills, presentation skills, and technical knowledge as used in actual licensing and monetization negotiations as well as integrating key subjects from patent law to demonstrate real-world business transactions involving patents. Students will conduct mock negotiations and contract drafting for three separate patent transactions: a mock patent sale, a mock licensing engagement, and a mock patent portfolio transaction. In particular for the mock licensing engagement, students will be divided into teams representing separate companies that each potentially infringe a patent owned by the other company and: negotiate and draft a Non-Disclosure/Standstill Agreement in order to start a substantive licensing discussion, draft claim charts showing infringement, develop a business model for damages, conduct a technical presentation showing their claim chart alleging infringement and business case for licensing, conduct a rebuttal presentation attacking the other team’s claim chart for lack of infringement and invalidity of the patent as well as rebutting damages, negotiate a term sheet for a cross-licensing deal, and draft a cross-license. Students will also receive lectures on core patent law licensing and monetization issues, contractual patent issues, portfolio transactions driving Mergers & Acquisitions, patent consortiums, patent portfolio market economics and other patent monetization vehicles. Credit is based on regular homework assignments and in-class mock-negotiation performance. There is no final exam.
Students require no technical background for this course.
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There is no assigned text book for this course. All course materials will be provided on TWEN or in class as handouts. Students will be provided citations for cases, statutes, federal regulations and links for other online materials to review for class.
This class is a practical skills course. Students will be conducting in class negotiations and presentations representing various companies regarding patent sales, non-disclosure standstill agreements, patent infringement, patent damages, patent validity, patent licenses, cross-licensing agreements, and patent portfolio transactions.
In accordance with the College of Law policy, regular attendance is expected at each class. Please email both
Professors Khaliq and Winarski in advance if you are unable to attend a meeting. Your student partners will depend on your attendance so that they have someone to negotiate against.
This course is offered as a credit/no-credit course as it is a practical skills course. There is no exam. Credit is based upon attendance, in-class participation, and regular class assignments.
Class
PRECLASS
ASSIGNMENT
1
Topic
Course Introduction
Provide overview on the parts of a US
Patent and file history (discuss USP
6496935); discuss section 112; discuss infringement scenarios; discuss claim construction
Discuss patent sales economy (Patent aggregators –
Homework
PLEASE READ THE FOLLOWING DOCUMENTS PRIOR TO THE
FIRST CLASS
US Patent 6496935
USPTO Basics On Patents http://www.uspto.gov/sites/default/files/inventors/eduinf/BasicPatentGuide.pdf
35 U.S.C. § 112
Nautilus, Inc. v. Biosig Instruments, 134 S.Ct. 2120 (2014)
(Patent Sale Exercise)
Review Patent Sale Exercise Assignment Sheet (in class handout)
Prepare claim chart based on provided information (turn in claim chart and hand in assignment sheet)
READ:
35 U.S.C. §101;
Alice Corp. v. CLS Bank International, 573 U.S. __, 134 S. Ct. 2347
(2014)
DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014)
Ultramercial, Inc. v. Hulu, 772 F.3d 709 (Fed. Cir. 2014)
Westlaw Journal IP, Oct. 29, 2014, Vol. 21, Issue 14,
“Patentability of Software After Alice Corp: Where Do We Go from Here”, Imran Khaliq.
In Class Exercise
NONE
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2
3
4
Intellectual
Ventures, RPX)
Discuss Patent
Infringement
(demonstrate claim charting)
Patent Licensing
Engagement
Overview
101 subject matter
Discuss claim charts on ‘935 patent and patent sales exercise
35 USC §§102 and
103 subject matter
Patent License
Engagement – Use of
NDAs to start discussions (discuss assignment #2)
Discuss types of patent actions –
Federal District Court
Litigation, ITC 337
Actions, Declaratory
Judgment Actions,
UPSTO post grant proceedings
Infringement
(direct/indirect) claim interpretation -
Patent File Histories
– File Wrapper
Estoppel
(Cross License Exercise)
BOTH TEAMS:
Review Cross-License Exercise ASSIGNMENT #1
TEAM A:
READ US Patent 7847729
TEAM B:
READ US Patent 6330670
EVERYONE READ:
35 U.S.C. §102
Suffolk Technologies, LLC v. AOL, Inc., 752 F.3d 1358 (Fed. Cir.
2014)
Pfaff v. Wells Electronics, Inc. 525 U.S. 55 (1998)
35 U.S.C. §103
KSR v. Teleflex, 550 U.S. 398 (2007)
REVIEW:
-patent infringement Complaint: Local.com v. Fry’s Electronics,
Case No. 8:12-cv-00976
-ITC Complaint: 337-TA-562; CERTAIN INCREMENTAL DENTAL
POSITIONING ADJUSTMENT APPLIANCES AND METHODS OF
PRODUCING SAME
-Declaratory Judgment complaint: Netflix Inc. v. Rovi Corp., Case
No. 4:11-cv-0659
(Cross License Exercise)
BOTH TEAMS:
Review Cross-License Exercise ASSIGNMENT #2 – negotiating an
NDA agreement to start licensing discussions
EVERYONE READ:
35 U.S.C. § 271
Phillips v. AWH, 414 F.3d 1303 (Fed. Cir. 2005)
NTP v. RIM, 418 F.3d 1282 (Fed. Cir. 2005)
Limelight Networks, Inc. v. Akamai Technologies Inc., 134 S.Ct.
2111 (2014)
Review:
The Doctrine of Equivalents: Rethinking the Balance Between
Equity and Predictability, GG University Law Review, Vol. 22, Iss.
2.
Festo v. Shoketsu, 122 S.Ct. 1831 (2002)
(Cross License Exercise)
BOTH TEAMS:
Review Cross-License Exercise ASSIGNMENT #3 – conducting a patent licensing assertion presentation
Hand in Patent Sale Exercise
Assignment Sheet (turn in claim chart)
Conduct Patent Sale Exercise
Negotiation in Class
Turn in Assignment #1
Conduct NDA negotiation in class
Turn in Assignment #2
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5
6
7
35 USC §271
Discuss NDA negotiations – negotiation strategies
Patent License
Engagement – Claim
Charts: Discuss components of claim charts (infringement and business case)
Patent License
Engagement: Prior
Art – using prior art to invalidate patents
Damages Calculation
Models –
Apportionment
Discuss ‘729 and
‘670 patents – discuss claim charts, assertion presentation styles
Patent License
Engagement –
Defending your asserted patents against 101, 102 and
103 challenges (in class case study on post grant proceeding)
Discuss rebuttal presentations
In class litigation case study on 101,
102/103 issues
Discuss Patent
Licenses – components of a patent license
EVERYONE READ:
35 U.S.C. § 284, 286
Rite-Hite Corp. v. Kelley Co., 56 F.3d 1538 (Fed. Cir.)
Georgia-Pacific Corp. v. U.S. Plywood-Champion Papers, Inc.,
446 F.2d 295 (1971)
VirnetX, Inc. v. Cisco Systems, Inc. 767 F.3d 1308 (Fed. Cir. 2014)
E-Bay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006)
(Cross License Exercise)
BOTH TEAMS:
Review Cross-License Exercise ASSIGNMENT #4 – conducting a rebuttal presentation to counter the patent assertion presentation
Review:

USPTO materials on Inter-Partes Review, Post-Grant
Reviews, and Covered Business Method Patents: http://www.uspto.gov/patents-application-process/patenttrial-and-appeal-board/trials

Presentation: Major Differences between IPR, PGR and CBM
Read:
-IPR Petition: iPR 2012-00001, Garmin v. Patent of Cuozzo Speed
Technologies, U.S. Pat. 6778074
-PTAB Decision to Institute Review
-Patent Owner Response
-Final Decision
(Cross License Exercise)
BOTH TEAMS:
Review Cross-License Exercise ASSIGNMENT #5 – conducting a rebuttal response presentation
Read:
-patent local rules/infringement and invalidity contentions
-markman ruling,
-MSJ ruling
Conduct patent assertion presentations
Turn in Assignment #3
Conduct patent rebuttal meeting
Turn in Assignment #4
(Cross License Exercise)
BOTH TEAMS:
Review Cross-License Exercise ASSIGNMENT #6 – Term Sheet
Assignment
EVERYONE READ:
Patent License Considerations: American Corporate Counsel http://www.acc.com/legalresources/quickcounsel/qcplc.cfm
Conduct patent rebuttal response meeting
Turn in Assignment #5
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8
9
10
11
Patent License
Engagement – Term
Sheets (business and negotiation strategies)
Discuss rebuttal response presentations
Discuss Patent
Licenses – components of a patent license
Monetization
Strategies
(divestitures, licensing, litigation)
Monetization
Entities (Intellectual
Ventures, RPX, IBM,
Acacia, IPXI, Ocean
Tomo, Patent
Zombies)
Mega-trolls, trolls, real Trolls, NPEs, aggregators, research entities, individual inventors, and Patent Zombies
Monetization
Economics
Overview of current patent licensing and monetization deals
Cell Phone Patent
Wars
FRAND/Standards licensing
New patent licensing agreements enable collaboration and innovation - Microsoft http://blogs.microsoft.com/on-the-issues/2015/03/19/newpatent-licensing-agreements-enable-collaboration-andinnovation/
Supreme Court to reexamine patent licensing in Spider-Man toy case http://blog.constitutioncenter.org/2015/03/supreme-court-
Ato-reexamine-patent-licensing-in-spider-man-toy-case/
(Cross License Exercise)
BOTH TEAMS:
Review Cross-License Exercise ASSIGNMENT #7 –
Negotiate Cross License Agreement
EVERYONE READ:
The Big Idea: Funding Eureka!
Nathan Myhrvold,
Harvard Business Review, March, 2010.
LEVELING THE PATENT PLAYING FIELD , Peter N.
Detkin, 6 J. MARSHALL REV. INTELL. PROP. L. 636
(2007).
Everyone Read:
“ Patent Zombies and IP Monetization – a study in patent ecosystem statics and dynamics - understanding what is driving today’s explosive patent wealth ,” Tyson Winarski, Intellectual
Property Today, August, 2012, vol. 19, no. 8.
The Smart Phone Patent Wars , IAM-Media, March 2011.
The Great Smart Phone War http://www.vanityfair.com/news/business/2014/06/applesamsung-smartphone-patent-war
Microsoft, Apple withdraw from Android patent trolling: Is the patent war drawing to a close? http://www.extremetech.com/extreme/196432-microsoftapple-pull-back-from-android-patent-trolling-is-the-patent-wardrawing-to-a-close
Everyone Read:
Everyone Read:
USPTO/DOJ Policy Statement http://www.justice.gov/sites/default/files/atr/legacy/2014/09/
18/290994.pdf
Microsoft v. Motorola FRAND Decision http://cdn.ca9.uscourts.gov/datastore/opinions/2015/07/30/14-
35393.pdf
(Patent Portfolio Transaction Exercise)
Disscuss patent portfolio transaction exercise Assignment #1
Everyone Read:
3-D Negotiation: Playing the Whole Game , David A. Lax and James K. Sebenius, Harvard Business Review, November 1,
2003.
Conduct term sheet negotiation
Turn in Assignment #6
Conduct patent cross-license negotiation – initial discuss trade drafts
Conduct patent cross-license negotiation – final discussion
Drafting Licensing Agreement
Negotiation (negotiate redlines and reach final agreement)
(turn in final agreements)
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14
12
13
Mergers &
Acquisitions and
Patent Portfolios:
Novell, MIPS,
Google/Motorola,
RockstarBidco,
Kodak
Discussion on
Negotiation Tactics
Patent Reform –
Judicial and
Congressional
Discussion of propatent monetization positions versus antitroll lobby
Last Lecture
Patent Portfolio Transaction Exercise)
Disscuss patent portfolio transaction exercise Assignment #2
Everyone Read:
Intellectual Asset Management Magazine: Maximising Value in
Financial Transactions Involving Strategic Patent Portfolios
July, August 2015
PATENT LICENSING FOR MERGERS AND ACQUISITIONS
Portfolio Due Diligence and License Agreement Structures for
M&A Transactions, 2015 LICENSING UPDATE – WOLTERS
KLUWER LAW & BUSINESS
EDITORS: Gregory Battersby and Charles Grimes
Assignment: Prepare for in class debate on Patent Trolls/Patent
Monetization Economy (pro/con)
Everyone Read: TBD – will provide contemporaneous materials current with existing legislative efforts prior to this lecture
Good luck with exams!
Conduct Portfolio Transaction
(5 party negotiation) (turn in assignment sheet)
Negotiate Term Sheet/Draft
License Agreement Structure
(turn in term sheet/draft agreement)
In Class Debate on Patent
Monetization: (pro/con)
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