John Fargo, Director Intellectual Property Staff, Civil Division Department of Justice.

Transcription

1 DOJ Role in Affirmative Suits John Fargo, Director Intellectual Property Staff, Civil Division Department of Justice May 6, 2009

2 DOJ Role in Affirmative Suits Tech transfer involves licensing of intellectual property owned by a government agency. Effective licensing requires ability to enforce IP rights in order to preserve value of license.

3 DOJ Statutory Role 28 U.S.C. 517 reserves the conduct of litigation to the Attorney General, except where otherwise authorized by law. 28 U.S.C. 519 requires the Attorney General to supervise all litigation to which the US or an agency is a party, except where otherwise authorized by law. Together these provisions require DOJ to handle all actions involving infringement of IP rights to which the US, or an agency, is a party.

4 What is required for suit by DOJ Affirmative suit for infringement of a patent, copyright or trademark, like any other civil suit, requires approval within the Civil Division of DOJ. My office would review request from agency General Counsel s office that suit be filed, along with evidence supporting it, and ddetermine whether to seek authorization.

5 What is required for suit (cont d) Items we need: Copy of patent, prosecution history, prior art references, and evidence indicating infringement with claims chart. Copy of any licenses granted for the patent and some indication of the type of damages that may be recoverable.

6 What is required for suit (cont d) Legal memo discussing where suit should be brought, and any expected issues (infringement, validity). Validity search can be conducted by agency counsel, but should be thorough, mirroring the type of search we would do if we were being sued.

7 Preparation for Suit If authorization to file suit is granted, or sometimes while it is being considered, we will also want to interview the inventors and other likely witnesses, and review documents. If we are prepared to recommend authorization to file suit, agency needs to put a litigation hold on all potentially relevant documents, including and other Electronically Stored Information (ESI).

8 Preparation for Suit (cont d) Role of Exclusive licensee In the two instances in which the US has filed a patent infringement suit, it has been along with the agency s exclusive licensee. Very often, the licensee has a better damage claim lost profits than the agency. This requires some interviews with the exclusive licensee, as well as some common interest agreement with it in order to preserve privileges.

9 Preparation for suit (cont d) We will probably send a final cease and desist letter just prior to filing suit. We normally will not send out this type of letter unless we have already obtained authorization to file suit. We do not want to make empty threats. Letter may prompt DJ suit, raising issue of whether US is subject to DJ suit.

10 Preparation for Suit (cont d) We do not normally send cease and desist letters to mere customers. Rather, cease and desist letters should be directed to manufacturer of allegedly infringing product. Sending numerous letters to customers could be viewed as scare tactic. ti

11 Suit Role of the Agency Once suit is filed, we can expect an aggressive defense that will focus on the validity of the patent, and at times on whether an exclusive license was validly granted. If a suit is filed, it is a good idea to have all documents assembled for production, and perhaps have draft answers to the type of interrogatories that we would expect, at the time the Complaint is filed.

12 Suit Settlement Most, if not all, district courts have mandatory ADR programs. Need to carefully consider what agency wants. Where exclusive license is co- plaintiff, probably have to split. Sealing of settlements of litigation is against DOJ policy absent exceptional circumstances. 28 C.F.R

13 Suit by Exclusive Licensee 35 U.S.C. 207(a)(2) permits a federal agency to grant a licensee the right of enforcement. Nutrition 21 v. United States,, 930 F.2d 862 (Fed. Cir. 1991). Held that section 207 permits an exclusive licensee who has been granted the right of enforcement to bring suit for patent infringement without the United States, or its agency, as a party.

14 Suit by Licensee (cont d) Where suit is filed by a licensee, the agency can expect substantial involvement: Agency inventors will be deposed, and documents requested re making of the invention. If inequitable conduct is alleged, defendant may seek to depose patent prosecution attorneys.

15 Suit by Licensee (cont d) Agency may need to consider requesting intervention by US. An infringement suit will put the patent at risk for a challenge to validity. The agency may have a greater interest in preserving its validity in some cases than the licensee. A charge of inequitable conduct may implicate agency employees and make govt. intervention advisable.

16 Suit by Licensee (cont d) It is possible that infringer may attack the grant of the exclusive licensee as contrary to law. Important in granting exclusive licenses to assure that the grant acts as a necessary incentive to bring forth risk capital to commercialize the invention. In an infringement suit, the infringer will scrutinize the application and knowledge of the agency as to whether the invention is already being practiced.

17 Suit by Licensee (cont d) 35 U.S.C. 209(a) sets forth requirements for the grant of an exclusive license. While based on prior regulations, these are now statutory requirements. Subsections (a)(1) and (a)(2), taken together, express Congressional desire that exclusivity not be more than reasonably necessary to act as an incentive to bring invention s benefits to the public.

18 Suit by Licensee (cont d) While we will have common interests with the licensee, there are instances in which they will diverge: How to split any recovery. We are likely to deal at arms-length with licensee on this issue, so there may not be any privilege attached to those discussions other than FRE 408. Any possible infringement claim by licensee against govt. on its own patents. Has not occurred yet, but is possible.

19 Suit by Licensee (cont d) Subpoenas directed toward govt. agencies or employees will be subject to Touhy limitations. United States ex rel. Touhy v. Ragen, 340 U.S. 462 (1951). When served with a subpoena for govt. employee testimony, should contact my office at DOJ. Agency decisions on whether to permit a deposition at all, or to limit it, are subject to APA review.

20 Suit by Licensee (cont d) Since law relating to Touhy requests tends to vary somewhat among the regional circuits, we should coordinate with the local US Attorneys office to assure that the agency s position is defensible, should an APA action be filed to challenge it. In addition, DOJ may want to defend any deposition of an agency employee.

21 Suit by Licensee (cont d) Just as in the case of planning for a suit by the govt., if an agency learns that a licensee with the right to enforce is planning to sue for infringement, it should gather all relevant documents and put a litigation hold on them. Again this includes ESI which in turn Again, this includes ESI, which in turn includes s.

22 Suit by Licensee (cont d) One of the daunting aspects of e- discovery is determining where may reside (server, computers). is one form of ESI (electronically stored information) that is typically subject to deletion after a certain number of days, unless preserved.

23 Suit by Licensee (cont d) also may be stored on different servers for various organizations. It is rare that an agency will have a single server that houses all . Thus, in preparing for discovery requests, the agency counsel may have to query IT professionals from various locations, within various commands or offices.

24 Affirmative Patent Suits U.S. v. Telectronics, 857 F.2d 758 (Fed. Cir. 1988). Suit on behalf of the Navy; exclusive licensee joined. Invention was bone growth stimulator t thought that it might speed healing from combat injuries. i

25 Affirmative Patent Suits District court held patent not infringed, based upon claim construction. Fed Cir rev d agreeing with govt s claim construction and remanded for damages. Case settled with licensee and Navy splitting recovery.

26 Affirmative Patent Suits EPA v. Micrology, Labs., 09-CV-69 (N.D. Ind). On March 3, 2009, we filed suit against Micrology for infringement of 3 patents owned by EPA on coliform detection in water. EPA has several licenses on this patent, but Micrology had refused to enter into a license.

27 Trademarks Another IP issue that occasionally arises is ownership and licensing of a trademark associated with a government program. Trademarks are symbols of the goodwill and reputation of source of particular goods or services.

28 Trademark Because of their function as symbolizing goodwill, issues can arise as to who owns any particular trademark, and whether it has been used in commerce. A certification mark is a particular type of trademark used to represent a seal of approval for goods or services provided by others. (E.g., the UL seal).

29 Trademarks Because of their association with the reputation of a source of goods/services, trademarks cannot be simply licensed without retaining some control over the quality of goods/services provided by licensee. Naked license can invalidate a trademark.

30 Trademarks Any licensing of a government owned trademark can raise other policy issues of whether this is an endorsement of a particular contractor, and if so, whether that would violate any policy against government agency endorsement.

31 Trademarks We have both obtained trademark registrations for certain programs AmberAlert logo, Citizen Corps and have advised agencies in filing registrations.