Intersection of Automotive, Aerospace, & Transportation: Practical Strategies for Resolving IP Conflicts in Multi-Supplier Sourcing

Transcription

1 Intersection of Automotive, Aerospace, & Transportation: Practical Strategies for Resolving IP Conflicts in Multi-Supplier Sourcing May 28, 2014 R. David Donoghue Holland & Knight LLP 131 South Dearborn Street, 30th Floor Chicago IL Phone Fax Copyright 2014 Holland & Knight LLP. All Rights Reserved

2 Overview The Realities of the Multi Supplier Relationship Elements of Successful IP Dispute Resolution Patent Office Strategies Trademark Strategies District Court Strategies 2

3 The Realities of the Multi-Supplier Relationship Symbiotic Multi layered Must consider multiple programs, across business lines Governed by the OEM Rarely see litigation go the distance Looking for flexibility 3

4 Patent Office Strategies Supplemental Examination (new) Ex parte Reexamination Inter Partes Reexamination (fading out) Inter Partes (new) Post Grant Interference Proceeding (fading out) Derivation Proceedings (new) 4

5 Patent Office Strategies: Filing Post-Grant Earliest priority > March 16, 2013 First 9 mos Inter Partes < 1 year after sued for infringement Ex Parte Reexamination Covered Business Method financial services patents Only after sued or charged with infringement Sunsets year Term 5

6 Patent Office Strategies: Who Post Grant Inter Partes Ex Parte Reexamination CBM Anyone but patent owner Barred if: (i) Petitioner earlier filed DJ (ii) Petition filed > 1 year after service Anyone but patent owner Barred if: (i) Petitioner earlier filed DJ (ii) Petition filed > 1 year after service Anyone (even anonymously) Anyone but patent owner who has been sued or charged with infringement 6

7 Patent Office Strategies: Basis Post Grant Inter Partes Ex Parte Reexamination CBM 35 U.S.C. 101 (ineligible subject matter) 35 U.S.C. 101 (ineligible subject matter) 35 U.S.C. 101 (ineligible subject matter) 35 U.S.C. 101 (ineligible subject matter) 35 U.S.C. 102 (anticipation) 35 U.S.C. 102 (anticipation) 35 U.S.C. 102 (anticipation) 35 U.S.C. 102 (anticipation) 35 U.S.C. 103 (obviousness) 35 U.S.C. 103 (obviousness) 35 U.S.C. 112 (indefiniteness) 35 U.S.C. 112 (indefiniteness) Limited to: Patents Printed Pubs Limited to: Patents Printed Pubs 7

8 Patent Office Strategies: Legal Standard Post Grant Inter Partes Ex Parte Reexamination CBM Whether it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable. Whether there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. Whether a substantial new question of patentability affecting any claim of the patent has been raised. Whether it is more likely than not that at least 1 of the claims challenged in the petition is unpatentable. 8

9 Patent Office Strategies: Estoppel Post Grant Inter Partes Ex Parte Reexamination CBM Raised or reasonably could have raised ** scrivener's error Raised or reasonably could have raised None Raised (PTO and Civil) or reasonably could have raised (PTO) 9

10 Patent Office Strategies: Costs Post Grant Inter Partes Ex Parte Reexamination CBM Request fee of $12,000 plus $250 for each claim in excess of 20 Post-institution fee of $18,000 plus $550 for each claim in excess of 15 Request fee of $9,000 plus $200 for each claim in excess of 20 Post-institution fee of $14,000 plus $400 for each claim in excess of 15 Request fee of $12,000 plus $420 for independent > 3 and $80 for each dependent > 20. Same as PGR 10

11 Patent Office Strategies: PGR / IPR / CBM Timeline 11

12 Patent Office Strategies: Pre-Filing Planning Like with civil litigation must plan in advance and consider the following: Grounds for invalidity Estoppel Cost Speed Impact on Litigation Discovery Considerations When to file Settlement Co-Defendants, Join or Stay Out? 12

13 Opposition (generally requires an active search)» 90 day period for filing before issuance» May be extended by motion Cancellation» Filed after issuance» Increased effort» Greater expense Automatic stay for district court litigation Trademark Office Strategies 13

14 District Court Strategies Difficulties with district court litigation:» Length (2-3 years or more)» Cost» Visibility» Discovery 14

15 District Court Strategies: SHAPE THE CASE Early Motions USPTO Proceeding with Stay Transfer to home forum Move to dismiss Early 30(b)(6) deposition Early summary judgment ED Tex. Plan B 15

16 District Court Strategies: UNIQUE DEFENSES Patent Exhaustion Keurig, Inc. v. Sturm Foods, Inc., No (Fed. Cir. Oct. 17, 2013). Helferich Patent Licensing, LLC v. New York Times (N.D. Ill. Aug. 14, 2013). Simple, (mostly) dispositive defense Look to OEM license 16

17 District Court Strategies: UNIQUE DEFENSES RAND Damages Economic sea change Consider bifurcating damages with damages going first Innovatio IP Ventures v. Cisco (N.D. Ill.) Look for standards-based contentions Look for previously licensed devices 17

18 Questions? R. David Donoghue Holland & Knight LLP 131 South Dearborn Street, 30th Floor Chicago IL Phone Fax