Patent Portfolio Licensing

Transcription

1 Patent Portfolio Licensing Circling the wagons while internally running a licensing program By: Nainesh Shah CAIL - 53rd Annual Conference on IP Law November 17, 2015, Plano, TX All information provided and discussed is solely for use with professional development purposes, and does not necessarily reflect the opinions of ST

2 Circling the wagons while running a licensing program

3 Alice Corp. Pty. Ltd. v. CLS Bank Int l et al., No (U.S. June 19, 2014) - Limits software inventions Patent directed to a computerized method for providing online escrow services. Here, the patent s recitation of a computer simply amounted to the implementation of an abstract idea on a computer. If a claim is directed to an abstract idea, then to be patent eligible the claims must recite significantly more. To be patent eligible, one must integrate the building blocks of human ingenuity into something more, thereby transforming the invention into patent-eligible subject matter.

4 Kimble v. Marvel Entertainment, LLC, 576 U.S., 135 S. Ct (2015) Cannot collect royalties past expiration date of patent Upheld 50 year old supreme court case of Brulotte v. Thys Co., 379 U.S. 29 (1964) - A royalty agreement that projects beyond the expiration date of the patent is unlawful per se. But there are some ways around: A licensee could pay the licensor a sum equal to 10% of sales during the 20-year patent term, but amortize that amount over 40 year If multiple patents are licensed, payments can extend to the last to expire Can extend payments for non-patent rights past expiry at lower rate The Spider-Man case

5 Nautilus, Inc. v. Biosig Instruments, 134 S. Ct (2014) Claims need to be reasonable certain The Supreme Court held that under 35 U.S.C. 112 a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. On remand the Federal Circuit held in this case that the intrinsic evidence of usage of the term spaced relationship of the electrodes makes clear that a skilled artisan would understand with reasonable certainty the scope of the invention.

6 Ericsson, Inc. v. D-Link Sys., Inc., 773 F.3d 1201 (Fed. Cir. 2014) - Limits damages for Standard Essential Patents ( SEPs ) Royalty award must be based on the incremental value of the invention, not the value of the standard as a whole or any increased value the patented feature gains from its inclusion in the standard. Just as damages are apportioned for a patent that covers a small part of a device, damages must also be apportioned for SEPs that cover only a small part of a standard Burden of proof is on accused infringer to show evidence of hold-up or royalty stacking if it is to be considered. Hold-up Charging excessive fees for any one SEP Royalty Stacking Excessive fees based on the aggregate of all SEPs

7 Williamson v. Citrix Online, LLC, No (Fed. Cir. 2015) - Broadens applicability of (now 112(f)) Use of the word means still creates a presumption that 112, 6 applies. But the Court removed precedent establishing that there is a strong presumption that is not invoked if the word means is not used. Now we must look to see whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.

8 Octane Fintess, LLC v. Icon Health & Fitness, 134 S.Ct (2014) - Increases likelihood of fee-shifting. Previous standard for fee-shifting required high standard showing material inappropriate conduct. This required a showing, by clear and convincing evidence, that the patentee s case was brought in subjective bad faith and was objectively baseless. Removed requirement for clear and convincing evidence. Now, an exceptional case warranting fee-shifting is simply one that stands out from others with respect to the substantive strength of a party s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.