Patent Litigation for Business People Presented by William “Skip” Fisher Christopher J. Lewis Johnathan E. Mansfield Schwabe, Williamson & Wyatt Pacwest Center 1211 SW 5th Avenue Portland, OR 97204 www.schwabe.com September 28, 2006 Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 1 Intellectual Property Schwabe, Williamson & Wyatt has one of the largest intellectual property practices in the Pacific Northwest. The firm has a long history of assisting large corporations, small and medium-sized businesses, and individuals in securing, protecting, and exploiting their intellectual property rights, both in the U.S. and in other countries. Our intellectual property and patent attorneys – many of whom have years of science and technical education and experience – provide a full range of services in patent, trade secret, trademark, and copyright matters, including counseling, prosecution, litigation, dispute resolution, licensing, and technology transfer. We are one of only a few firms in the region that offers both patent prosecution and patent litigation services. Our lawyers are intellectual property strategists and fully appreciate that intellectual property is often a crucial business asset. We serve in the role of trusted advisor to our clients, from the early planning stages, through development and commercialization, to licensing and sale. We are capable of handling virtually any intellectual property matter that arises in our clients’ business, including enforcing their intellectual property rights through litigation or defending them against infringement claims. Schwabe, Williamson & Wyatt’s Intellectual Property Practice Group serves clients in a wide range of industries, including information, mobile telephony, electronics, software, telecommunications, e-commerce, semiconductor, biotechnology, medical devices, media and entertainment, and consumer products. Schwabe, Williamson & Wyatt’s intellectual property services include: Litigation, Patents, Trademarks and Copyrights and Trade Secrets and Unfair Competition. Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 2 William "Skip" Fisher Shareholder, Seattle Office Bill "Skip" Fisher is a member of Schwabe, Williamson & Wyatt's rapidly expanding intellectual property (IP) practice group. Mr. Fisher’s practice focuses on IP counseling and dispute resolution in all areas of IP, including patents, trade secrets, trademarks, copyright, and unfair competition. He has handled high-stakes IP and commercial cases for clients large and small in diverse industries, including complex patent matters involving various hardware, software, and mechanical technologies. Mr. Fisher has a unique focus on China and China IP law, is a frequent speaker on the topic, and is one of the few U.S. lawyers who has spent time in China practicing in this area (e.g., managing the litigation and administrative enforcement of IP rights). He regularly counsels clients on a variety of domestic and international IP matters, including their rights and obligations under U.S. and China IP laws, the procurement of IP rights at home and abroad, IP enforcement and dispute resolution, licensing and technology transfer, and strategic IP risk management. He is proficient in Mandarin Chinese. Prior to joining Schwabe, Mr. Fisher was with the international law firm Lovells in its Shanghai, China office and with Perkins Coie in Seattle, Washington. He was selected as a “Rising Star of Washington Law” by Washington Law & Politics for three consecutive years beginning in 2001. You may contact Mr. Fisher at 206-407-1517, or wfisher@schwabe.com Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 3 Christopher J. Lewis Shareholder, Portland Office Mr. Lewis’ practice focus is primarily in three areas: 1) patent prosecution, with experience in chemical, mechanical and electrical based patents; 2) intellectual property litigation, with an emphasis on patent litigation; and 3) assisting clients with patent portfolio strategy and management. Prior to joining the firm, Mr. Lewis worked in Intel Corporation's Corporate Licensing Group, where he assisted in value licensing and patent portfolio management. Mr. Lewis was also a law clerk for the Oregon Department of Justice, Civil Recovery Division in Portland, Oregon, and for the Honorable James R. Michaud, Bonner County District Court, Sandpoint, Idaho. In law school, Mr. Lewis served as the Current Materials Editor for the nationally published journal, Environmental Law. You may contact Mr. Lewis at 503-796-2456, or clewis@schwabe.com Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 4 Johnathan E. Mansfield Shareholder, Portland/Seattle Office Mr. Mansfield is a shareholder in the firm’s Intellectual Property and Patent Law practice group, focusing on intellectual property litigation and business, including patent, trade secret, trademark, copyright, and other intellectual property cases. He advises trade associations in technology industries as well as in other business sectors, on issues including formation, governance, and antitrust. Mr. Mansfield also advises companies on food and drug matters, including food and dietary supplement labeling. Mr. Mansfield has had extensive litigation experience involving a variety of hardware and software technologies, and has litigated in numerous federal and state courts, at both the trial and appellate level. He is known for his advocacy skills, in particular, his ability to help judges and juries understand complex technical issues. Before joining Schwabe, Mr. Mansfield practiced intellectual property litigation with Morrison & Foerster in San Francisco. After graduation from Cornell Law School, Mr. Mansfield clerked for the Honorable Conrad K. Cyr, United States Court of Appeals for the First Circuit, in Maine. While at Cornell, he served as the Articles Editor for the Cornell Law Review. You may contact Mr. Mansfield at 503-796-2088, or jmansfield@schwabe.com Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 5 Patent Litigation Seminar for Business People September 28, 2006 Portland, OR Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 6 Program Overview • Patent litigation overview • Preemptive strategies and alternatives to litigation • Demand letters and opinions of counsel • Patent litigation costs and budgeting • International aspects of patent litigation • Current trends and patent reform Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 7 Patent Litigation Overview Christopher J. Lewis Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 8 Patent Basics • Patent Types – Utility: new, useful and non-obvious – Design: ornamental features • Parts – Written Description – Claims – deed to property rights • Right to exclude others – Making, using, selling/offering to sell, or importing – Patentee does not need to sell • Term – 20 years from the date of filing – >6/8/95 – option of 17 years from the date of issue Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 9 Patent Litigation Statistics • • • • • • < 1% of issued patents get litigated ~7% go to Trial ~17% resolved by the court prior to trial ~76% settle prior to trial ~1.8 year average case pendency ~40 - 50% reversal rate of trial court’s claim construction Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 10 Potential Parties • Plaintiffs – – – – Patentee Assignee Exclusive licensee – substantially all rights Potential infringer (Declaratory Judgment action) • Defendants – Anyone who makes, uses, offers and/or sells or imports a patented invention without permission – Anyone who actively induces or contributes to direct infringement – Patentee/assignee Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 11 Pre-litigation Considerations • General Requirements – Valid patent – Infringement or threat/apprehension of suit – Rule 11 – good faith belief • Constitutional Requirements – Subject matter jurisdiction – exclusive federal jurisdiction for patent infringement suits – Personal jurisdiction – minimum contacts – Venue – convenient forum Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 12 Pre-litigation (cont.) • Recommendations – Know the opponent • Who to sue – customer, small infringer, large infringer? • Patent portfolio – don’t kick a hive of sleeping bees! • Litigation prowess – active litigants? – Know yourself • Patent strengths and weaknesses • Litigation stamina • ROI • Selecting where to file the complaint – Home turf – Fast forum – Plaintiff friendly • Demand letters to send or not to send? Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 13 The Complaint • Identify the parties • Jurisdictional statement – Subject matter jurisdiction, Personal jurisdiction, Venue • Statement of the claim – – – – Identify the relevant patent(s) Assert ownership of the patent(s) & right to sue Identify the accused infringer & alleged infringing act Assert other claims Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 14 The Complaint (cont.) • Demand for judgment – – – – Monetary damages Injunctive relief Increased damages Attorneys’ fees • Demand for jury – Usually better for plaintiffs (about 70% jury trials) – Waived if not demanded w/in 10 days of the last pleading – Declaratory judgment – no right to a jury Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 15 Responding to the Complaint • Motions – dismiss, transfer venue • Answer – admit or deny allegations – Within 20 days of service – Within 60 days of a request for waiver of service • Affirmative defenses – Non infringement, invalidity, laches, estoppel, intervening rights, failure to state a claim, etc. • Counterclaims – Declaratory judgment of invalidity/noninfringement, antitrust violations – Assert other patents Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 16 Preliminary Injunction • Patent holder must prove: – – – – Likelihood of success (infringement and validity) Irreparable harm (may be presumed) Balance of hardships in favor of enjoining activity Favorable impact on public interest • Requires a bond - $$ consideration • Early claim construction, validity & infringement analysis (good and bad) • Motivates early settlement if granted Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 17 Discovery • Informal discovery – Interviews – Internet – Voluntary exchange • Formal discovery – Interrogatories – clarify issues, identify witnesses, uncover opponent’s case – Document requests – include other tangible material – Requests for admission – limit issues for trial, authenticate documents – Depositions – individual or corporation Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 18 Discovery Issues • Accounts for a large percentage of the litigation costs • Often leads to protracted litigation – Increases costs – Sets negative tone with the court • Electronic discovery – No hard drive will go unturned • Third party discovery • Privileged and confidential Information • Protective orders – attempt to limit discovery and maintain confidentiality Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 19 Claim Construction (Markman) Hearing • Judge interprets claim terms as a matter of law – Focus on intrinsic evidence • Claim language, patent specification and prosecution history – Extrinsic evidence may be considered • Dictionaries, expert testimony, treatises • Used to inform, but cannot contradict the intrinsic evidence • First major milestone in a case – Often dispositive of the infringement and/or invalidity issues Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 20 Motions for Summary Judgment • Often follows the Markman decision • Grounds – Infringement/non-infringement • Literal • Doctrine of Equivalents (insubstantial differences) • Direct and indirect (inducement and contributory) – Invalidity • High burden clear and convincing evidence • Not novel (102), obvious (103), inadequate disclosure (112) – Unenforceability • • • • Inequitable conduct – failure to disclose material information Patent misuse – using the patent for improper purposes Laches – unreasonable delay + prejudice Equitable estoppel – misleading conduct + reliance + prejudice Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 21 Trial and Beyond • Determination of liability & damages – Jury determines infringement based on the claim construction provided by the court • Pretrial conference – issues for trial, witnesses, exhibits • Special verdicts & jury instructions • Post-trial motions • Appeals Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 22 Avoiding Litigation and Alternatives to Litigation Christopher J. Lewis Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 23 Avoiding Litigation • Patent portfolio strategy/management – Strategic Patenting • Core business/products • Areas vital to competitors – Quality vs. quantity • Licensing – Cross license (win-win?) – Royalty bearing license • Design around the patented product – Consult your attorney Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 24 Alternatives to Litigation • Alternative Dispute Resolution (ADR) – Mediation • Non-binding • Neutral 3rd party tries to facilitate settlement – Arbitration • • • • Binding, unless otherwise specified Like a trial, but no jury Faster cheaper and more flexible than litigation Reviewable by the District Court – Great deference given to the arbitrator – Very hard to vacate or modify the award Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 25 Alternatives to Litigation (cont.) • Reexamination – Must show a substantial new question of patentability exists – Two Types • Inter-Parte – Allows Requester participation – Decision by PTO is binding on the parties in litigation • Ex-Parte – No participation, but anonymous – No estoppel – Pending Litigation will be stayed if requested earlier on in the case • ITC § 337 Proceedings Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 26 Demand Letters and Opinion Letters Johnathan E. Mansfield Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 27 Demand/Cease & Desist/Notice Letters • Patent Owner π Portland, OR | Bend, OR | Salem, OR • Accused infringer Δ | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 28 First Things First • • • • Clarify goals Get your people on board Be sure... ROI Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 29 Reasons to Send Demand Letter • “Stop infringing” • “You might want to take a license” • Actual notice per 35 U.S.C. 287 (damages) • Start the willfulness clock running Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 30 Results of Demand Letter • Nothing happens • Negotiation and requests for showing of basis for infringement • Accused infringer stops infringing • Accused infringer negotiates a license • Lawsuit(s) ensue Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 31 The Hardball Demand Letter • Upside – Starts all clocks running • Willfulness, damages – Possible In terrorem effect (with newbies) – You will get a reaction Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 32 The Hardball Demand Letter • Downside – Sets the tone for future relationship – Evidence in lawsuit – Most important: United States Code Title 28, section 2201 Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 33 What is a Declaratory Judgment? 28 USC §§ 2201-02 • Lawsuit filed by Δ – Non-infringement – Invalidity – Unenforceability • Actual controversy – “Reasonable apprehension” of imminent lawsuit – Actual infringement or preparation Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 34 You Don’t Want a DJ Lawsuit • Infringer gets to choose the court • Roles reversed: Δ v. π • May have precedence over your own lawsuit Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 35 When To Use The Hard Ball Letter Never (hardly ever) Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 36 A kinder, gentler demand letter Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 37 The Softball Letter • “We have patents” • “Your product/process seems similar” • “Let’s talk about a license” Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 38 The Softball Letter • Upside – No DJ jurisdiction – Notice • Downside – May not get (quick) results – May send wrong message Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 39 When to Use the Softball Letter • Testing the waters/getting information • Put on notice/start clocks running Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 40 The Medium-speed Pitch • • • • Softball with teeth Claim charts Specific deadlines Don’t trigger DJ Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 41 The Medium-speed Pitch • Upside – Can get good results – More control • Downside – Divulges infringement theory – Labor-intensive – Evidence in case Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 42 When to Use the Medium-speed Pitch • Well-developed infringement position • Only want a license • Large scale-licensing campaign Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 43 A View From the ’s Side Receiving a Demand Letter • • • • • How serious is this? Do we infringe? Respond if appropriate Protect yourself ROI Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 44 A Digression on Willful Infringement • Willful = aware of patent, and had no “reasonable basis” for concluding that patent was not infringed or was invalid • Consequences – Up to treble damages – Other side’s attorney’s fees Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 45 Set Up A Process • Anything that makes a claim about someone else’s IP rights is serious enough to be read • By a designated person • Determine seriousness • Take appropriate action Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 46 How Serious is This? • Factors – – – – – – Specific deadlines/demands What kind of letter, e.g., hardball, slow pitch? Form letters Who signed it/sent it? Is your specific product identified? Is a specific patent identified? • Options – File – Respond & file – Send to patent litigation counsel Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 47 Do We Infringe? • Patent Miranda Warning: you are creating evidence that will show up in court Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 48 Infringement Investigation • You need to know: – Likelihood of liability – Extent of liability, i.e., mount of damages or cost of injunction – Product of these will determine how you handle demand letter Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 49 Protect Yourself Stop the Willfulness Clock • Reasonable investigation • Reasonable basis to believe – No infringement – Patent not valid • Opinion letter Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 50 Opinion Letters • Purpose: Establish good faith basis for continuing accused activity Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 51 Do We Need An Opinion Letter? • Not required: Knorr-Bremse • But don’t leave home (for the courthouse) without one Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 52 A Good Opinion Letter • • • • Timely Independent Credible Read and understood Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 53 How comprehensive? • ROI – Cost: $3K to $100K; avg. in OR, about $10K – Extent of analysis depends on risk Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 54 Patent Litigation Costs and Budgeting Christopher J. Lewis Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 55 Patent Litigation Costs Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 56 Patent Litigation Costs (cont.) • Factors Affecting Costs – PTO routinely issues patents without knowing and/or understanding the most relevant prior art • Requires significant effort and cost to locate prior art • Can arise late in the suit dramatically changing the playing field • May spawn Reexamination – Protracted discovery disputes – Markman proceedings • Much legal wrangling over the meaning of simple terms • Worth the effort, as it can end the dispute….at least until appeal Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 57 Patent Litigation Costs (cont.) – Expert analysis, reports, and testimony • Significant portion of overall costs • Expert areas – – – – Claim construction Infringement Invalidity Damages – Discovery • Can account for nearly 1/3 to ½ of the overall costs • Broad net is cast due to uncertainties • Many defenses available, which requires thorough investigation • Fertile area for protracted litigation Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 58 Patent Litigation Costs (cont.) • Parties’ emotions • Judge and jury do not have a clue – Even with simple technology – Requires education, good experts, and demonstrative exhibits – Requires adaptation if you get a bad decision on claim construction – May use mock trials to identify issues and focus the presentation Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 59 Patent Litigation Budgeting: An Oxymoron? • NO • Steps that can help contain costs and stay on budget – Thoroughly investigate the potential defenses prior to making the first claim – Investigate the opponent’s patent portfolio, otherwise you may be in multiple suits – Understand the real economics of the accused product to help substantiate a budget – Avoid the shotgun approach to claims and defenses, use a rifle. Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 60 Containing Costs (cont.) – Consider adopting a focused dispute resolution plan that could limit the issues. – Evaluate reexamination potential – Be open to taking/giving a license… even if you are right. • May be better to have a say who is in the market • May be cheaper than litigation in the long run – – – – Use in-house experts and resources Consider designing around the product Work closely with the attorneys Establish a budget for discrete litigation tasks Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 61 International Aspects Of Patent Litigation William “Skip” Fisher Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 62 Why Is This Subject Important? Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 63 Why Is This Subject Important? • Patent enforcement at home • Patent enforcement abroad • Patent infringement at home or abroad Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 64 What Should You Do? Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 65 What Should You Do? • Think globally & long term • Consider patent/IP & business strategies together • Obtain like-minded patent counsel • Build appropriate patent portfolio • Be prepared to enforce/defend Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 66 What Will I Cover? • • • • • U.S. patent enforcement options Special issues in cross-border litigation ITC § 337 litigation Foreign patent enforcement options Enforcement of foreign patents in U.S. Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 67 U.S. Patent Enforcement Options • • • • Federal district court litigation ITC § 337 actions Customs enforcement Arbitration & mediation Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 68 Issues in Cross-Border Litigation • • • • Unfamiliarity with foreign adversary Jurisdiction over foreign defendant Service on foreign defendant Discovery from foreign party or nonparty Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 69 Discovery in Cross-Border Litigation • Tools: – Federal Rules of Civil Procedure – Hague Convention (Evidence) – National laws • • • • “Blocking” statutes Confidential information & protective orders Use of discovery from other jurisdictions Translation/interpretation issues Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 70 ITC § 337 Litigation – Scope • Under § 337 of U.S. Tariff Act, imported products that violate U.S. IP rights may be barred from entry • § 337 provides administrative trade remedy for protecting domestic industry • Often brought as alternative to or in parallel with court litigation Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 71 § 337 Litigation - Elements • Infringement of valid U.S. patent • Importation in U.S. • Domestic industry – patent must be exploited in U.S. – significant investment in plant/equipment – significant employment of labor or capital – substantial investment in exploitation Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 72 § 337 Litigation - Jurisdiction • § 337 gives ITC in rem jurisdiction • Thus, no issues concerning personal jurisdiction or service of process • If respondent declines to participate, ITC can still issue exclusion order against products Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 73 § 337 Litigation – Pre-filing Preparation • Pre-filing efforts – investigation of respondents – evidence of importation – establish domestic industry – infringement analysis (claim charts) • Meet with OUII • Requires detailed complaint – no notice pleading Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 74 § 337 Litigation – Timeline Complaint Filed ITC Decision/Order Investigation Begins ALJ Decision Hearing Presidential Review -1 0 Portland, OR | 7-9 Bend, OR | Salem, OR 10-13 | Seattle, WA | 12-15 Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 14-17 75 § 337 Litigation - Procedure • File complaint at ITC • ITC must initiate investigation within 30 days (public notice, service by mail) • Respondent must answer w/in 20-30 days • Discovery is compressed (approx. 6 mos) • Bench trial in front of ALJ (approx. 7-9 mos) • Initial determination by ALJ • ITC decision by Commissioners • Presidential review • Appeal to CAFC Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 76 § 337 Litigation - Remedies • Limited Exclusion Orders – prohibit entry of respondent’s infringing products • General Exclusion Orders – prohibit entry of all infringing products, regardless of source • Cease & Desist Orders – directed to infringing behavior in U.S. • No damages Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 77 § 337 Litigation - Comparison • • • • • • • • • ITC Litigation Washington DC In Rem Jurisdiction No jury Specialized ALJ Markman Optional 9-10 Months To Trial No Damages Expenses incurred over short period 60% cases settle Portland, OR | Bend, OR | Salem, OR | • • • • • • • • • Seattle, WA | Court Litigation Any District Personal Jurisdiction Jury Generalist judge Markman Typical 21 Months To Trial Damages Expenses more easily controlled 95% cases settle Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 78 Enforcing Patent Rights in China • Administrative actions • Civil actions • Customs seizures Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 79 Administrative Enforcement • • • • • • • • • Prepare administrative enforcement body Appoint Chinese agent Prove patent rights & infringement Submit petition Take raid action Confirm products infringe Obtain decision & penalties Take court action Follow up Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 80 Problems with Administrative Action • • • • • • • • Local protectionism Weak knowledge of patent law Lack of resources Apathy Lack of follow up Inability to deal with complex cases/tech No damages Appeal Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC Civil Enforcement • Pre-litigation preparation & evidence gathering • Deciding who to sue • Deciding where to sue • Pre-trial injunction and/or preservation of evidence order • Filing complaint & other documents • Defense • Investigation & exchange of evidence • Trial, judgment, appeal Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 82 Pros and Cons of Court Actions • • • • • • • Less local protectionism More chance to present case Foreign companies do win Takes more time and expense Admissible evidence hard to obtain No raid action Damages Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 83 Current Trends and Patent Reform Johnathan E. Mansfield Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 84 Overview • Nanotechnology patents • PLECs, a.k.a. trolls • Important recent Supreme Court cases – Ebay v. MercExchange (injunctions) – KSR v. Teleflex (obviousness) • Proposed legislative reforms Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 85 Nanotechnology The Next Big Small Thing • Research and technology development at the atomic, molecular or macromolecular levels, in the length scale of approximately 1 - 100 nanometer range • Creating and using structures, devices and systems that have novel properties and functions because of their small and/or intermediate size • Ability to control or manipulate on the atomic scale Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 86 The Nano-patent Thicket? • > 3000 U.S. patents and published applications have claims that mention “nanotubes.” Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 87 Can the PTO Keep Up With Nano? • As is often true with early stage technology, some nanotechnology patents have broadly drafted claims that could read on basic compositions of matter or manufacturing or testing processes. • No real “nano patent cases” yet. Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 88 Nano patents: PTO Response • Classification 977 - New classification for nanotechnology patents – 1) subject matter is in the scale of approximately 1-100 nanometers in at least one dimension; and – 2) that involve materials, structures, devices or systems that have novel properties and functions because of their nanoscale size. • But: no definitive plans to form a nano art unit. Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 89 Patent Licensing & Enforcement Companies: PLECs Is a troll the scary thing under the bridge or a fishing technique? Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 90 One Definition of a PLEC • Has no significant assets except patents • Produces no products • Acquires patents, but does not invent technology itself Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 91 Customer Suit Strategy • Sue customers for using or selling accused product • Refuse to join or threaten maker of accused product – No DJ available • Maker is “in the suit” as indemnitor, but not as a party Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 92 Ebay v. MercExchange-a Response to PLECs? • Should an injunction be automatic once infringement is found at trial? • SCOTUS overturned automatic injunction rule. Now successful π must show: – π has suffered an irreparable injury; – a royalty won’t compensate π; – balance of hardships tips in π’s favor rather than the infringer’s; and – public interest supports an injunction. Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 93 Ebay v. MercExchange: 2 concurrences • CJ Roberts +2: ‘Injunctions still the usual case’ – Reasoning of a long line of cases in which injunctions have been granted should carry great weight in deciding whether to grant one in any particular case. • Kennedy +3: ‘Patent system has changed’ – Recent development of firms who use patents primarily to obtain royalties, rather than as a basis for making or selling products. – When patented invention is only small part of the infringing product, a royalty may be adequate and an injunction might not serve the public interest. – Some recent patents, including on “business methods,” are “potentially vague” and of “suspect validity,” which could affect whether an injunction should be granted. Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 94 On SCOTUS Docket for Next Term: KSR v. Teleflex • Obviousness: primary way to show a patent is invalid • Non-obviousness requirement is guard against merely minor improvements over the prior art Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 95 What is “Obvious” Anyway? • 35 U.S.C. § 103(a): an invention may not be patented if it would have been “obvious at the time the invention was made to a person having ordinary skill in the art” of the field of the intention. • Federal Circuit test: when various pieces of prior art each contain elements of an invention, the prior art can be combined together to invalidate a patent on the invention only when there is some motivation, suggestion, or teaching to combine the prior art. • Criticism is that FC test is too strict, permitting even trivial improvements to be patented Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 96 Predictions…. • Likely: SCOTUS will kiss off FC again • Who knows? – a combination which only unites old elements with no change in their respective functions is precluded from patentability under 103(a)? – subjective ad hoc test? Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 97 Proposed Legislative Reform • Patent system is perennial topic for reform • Most recent efforts: – – – – Patent Reform Act of 2005, H.R. 2795 (6/05) Industry Coalition Redline of H.R. 2795 (9/05) Issa Litigation Pilot project, H.R. 5418 (6/06) Hatch/Leahy Bill, S. 3818 (8/06) • Nothing is expected to pass in 2006 Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 98 First to File • Changes US to “first-inventor to file” system • S.3818 § 3 Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 99 Definition of “Prior Art” • Modifies definition to accommodate first-to-file • Establishes “reasonable and effective accessibility” requirement • S. 3818 § 3 Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 100 Inequitable Conduct Standard • Adopts failure to disclose material/intent to mislead standard • Can only be pled after determination that patent is not invalid as whole and is infringed • No unenforceability if patentee: – Had informed good faith belief that information not material or otherwise established good faith, or – Relied on counsel, had no actual or constructive knowledge of misconduct, & exercised due care in selecting/supervising counsel • S. 3818 § 5 Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 101 3rd Party Submissions During Application Process • 3rd parties may submit prior art for any pending application within 6 months after publication • Showing of relevancy, fee • H.R. 2795; S. 3818 § 7 Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 102 Claim Construction Interlocutory Appeal • Right to interlocutory appeal on claim construction within 10 days after order is entered. • D.Ct. proceedings stayed during appeal • S. 3818, § 8 Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 103 Issa Pilot Project in D. Cts. • AOUSC designates at least 5 DCs in at least 3 different circuits out of top 15 patent-caseloaded DCs • Judges chose whether to opt into hearing patent cases. Random assignment but judge can send to opt-in pool • $5MM/year for judicial training, and to compensate law clerks with technical/patent expertise Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 104 Patent Litigation Seminar for Business People Portland, OR | Bend, OR | Salem, OR | Seattle, WA | Vancouver, WA | © 2006 Schwabe, Williamson & Wyatt Washington, DC 105