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Latest patent developments say yesto innovation, no to infringement

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The July / August 2015

• Protecting patents at higher learning institutions • Scrutinizing patent renewals• Good faith beliefs and the realities of the law • Why cffDNA was stymied by Mayo

Mexico’s newwave of patentpolicies

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The September/October 2015

• Interesting developments throughout Europe • Four-year long slipper patent fight nears end

• The importance of pharmacokinetic patents in the US • The impact of timing during stay motions

AIPPI welcomes

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The January/February 2016

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• IEEE patent policy update • Content curation • Effective patent filing • Patent searching

• News stories • Gowling WLG form • Patent Trial and Appeal Board • Patent challenges

The Australian patent eligibility decision: RPL Central v Commissioner of Patents

Securing a competitive future in EuropeClaudia Tapia,Ericsson, investigates

www.patentlawyermagazine.com

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The March/April 2016

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• Prior art searching success • Polish patent laws • Chinese legislation change

• The Unitary Patent in Europe • News updates • The Federal Circuit’s decision

Knowledge share: Patent litigation and management in China

The VirtualPatent OfficeBob Stembridge,Thomson Reuters, investigates the benefits


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The May/June 2016

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• Latest news stories • Second use patents • The innovative age we live in • PTAB rules

• Intellectual property portfolio management • Design patents in China • PSC regulations

Claudia Tapia, Ericsson, analyses the misconception thatmany patents are invalid, and its impact for businesses

How will this affect the intellectual property industry?

The Brexit decision


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The July/August 2016

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Ag-Biotechnologyprotection inSouth America


Intellectual property for ag-biotechnology inventions is turning more competitive

• Brazilian patent law • ARIPO patents • Opinions on the Brexit decision • Design patents

• Top news stories • Patent translations • Indonesian law update • Patent renewal services



The September/October 2016

PLUSSam Bergstrom, counsel for KARL STORZ Imaging, explores techniques foraddressing the differences in prosecuting patent applications before the major offices

Chemicalinnovationin patents:A winningformula fordiscovery


Dr. Rob Poolman,Minesoft Ltd,reviews

• Patent filing strategies • Future of automotive design • Patent protection in Cambodia• Russian patent litigation • Tech transfer pitfalls • International prosecution strategies


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The November/December 2015

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November/December 2015






ABOUT THE PATENT LAWYER MAGAZINEThe Patent Lawyer Magazine is a ‘need to read’ publication for all international patent professionals. Published bi-monthly in both hard copy and electronically via the latest page turning software, each issue of The Patent Lawyer Magazine is seen by over 20,000 patent professionals around the world.

The readership is split between in-house Patent counsel and private practice patent attorneys and lawyers; however our readership also covers heads of R&D, associations, and ‘C’ suite executives from all the major patent owing corporations around the world.

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Jurisdictional Case Law Reports are a regular (twice a year) round-up of key case law in a particular jurisdiction. The article will sit with our knowledge based articles within The Patent Lawyer Magazine. It will be a feature that provides a list of key cases in a given period; the article will provide a brief summary of the two main cases and then a 50 word summary of the remaining cases. The contributing law firm would be required to have a good breadth of patent knowledge and over a wide area not just within the country they practice. This will be a sponsorship opportunity and allows your firm to write twice in a 12 month period and is a great opportunity to show the breadth of your firm’s knowledge. Jurisdictions to be covered: North America, South America, Europe, Asia, Oceania.

For editorial enquiries please call +44 (0)20 7112 8862 or email [email protected]

CA

SE STUD

Y: SEPs

17CTC Legal Media THE PATENT LAWYER

Over the past year, several district courts have

issued significant decisions analyzing damages

for Standard Essential Patents (SEP). On

December 4, 2014, the Court of Appeals for the Federal

Circuit finally weighed in and addressed the issue of first

impression. In the case of Ericsson, Inc. v. D-Link Sys., Inc.,

the Federal Circuit provided guidance on which factors

should be considered during an SEP damages analysis.

These factors include: proper apportionment of the

value of the patent, consideration of RAND obligations,

patent hold-up, and royalty stacking. But the Federal

Circuit stopped short of endorsing any bright-line test

or standardized set of damages factors.

SEPs have received increased attention in recent years

because of the unique damages issues they present. Claims

of an SEP are necessarily infringed upon by products

that comply with an industry standard, such as the IEEE

802.11 wireless technology standard at issue in Ericsson.

Because the value of an SEP may be skewed by the value

of the standard as a whole, the following factors must be

considered:

• Apportionment - As with all patents, the patent

infringement damages for a feature covered by an SEP

must be apportioned from other, unpatented features

of the standard or product. But a royalty for an SEP

SEPs and theneed for standarddamages testsStandard Essential Patents (SEPs) are back in the spotlight,thanks to the Federal Circuit’s decision in Ericsson, Inc. v.D-Link Sys., Inc., where the court provided guidance on aproper damages analysis1, according to Kenneth R. Adamo,Brent P. Ray, Eugene Goryunov and Ryan M. Hubbard.

Eugene Goryunov

Ryan M. Hubbard

Brent P. Ray

Kenneth R. Adamo

RésumésKen Adamo, Partner, Kirkland & EllisKen is a partner in the Intellectual Property group in Kirkland’s Chicago and New York offices. His practice focuses on all areas of

intellectual property law, particularly including patent, copyright, unfair competition, trade secrets, and related antitrust matters. Ken

has extensive trial experience as lead counsel in jury and non-jury cases before state and federal courts and before the United States

International Trade Commission, as well as ex parte and inter partes experience in the U.S. Patent and Trademark Office. He has had

substantial experience as lead counsel in arbitrations and other alternative dispute resolution proceedings.

Brent P. Ray, Partner, Kirkland & EllisBrent is a partner in Kirkland & Ellis LLP's Chicago office and concentrates his practice on patent litigation. He litigates patent matters

for a wide variety of clients in federal courts across the country and in the United States International Trade Commission.

Eugene Goryunov, Intellectual Property Litigation Partner, Kirkland & EllisEugene is also based in the Chicago office of Kirkland & Ellis LLP. He is an experienced attorney who represents clients in complex

multi-patent, multi-party patent litigation matters involving many diverse technologies.

Ryan M. Hubbard, Intellectual Property Litigation Associate, Kirkland & EllisRyan is also based in Kirkland & Ellis LLP’s Chicago office. He concentrates his practice on complex patent litigation in federal courts

across the country.

1 This article reflects only the present considerations andviews of the authors, which should not be attributed toKirkland & Ellis LLP, or to any of its or their former orpresent clients.

Kirkland & Ellis Article:Layout 1 24/6/15 15:47 Page 17

34 THE PATENT LAWYER CTC Legal Media

Patent knowledge share - Germany

Dr. Thorsten Bausch

Dr. Dirk Schüßler-Langeheine

Patent knowledge share focuses on Germany, with Dr.Thorsten Bausch (Patent Attorney) and Dr. Dirk Schüßler-Langeheine (Attorney-at-Law) answering questions aboutpatent litigation and management in this key Europeanjurisdiction.

Find and sharethe knowledge

RésumésDr. Thorsten Bausch, Hoffmann • EitleThorsten is both a German and European Patent Attorney and heads the

chemistry department of Hoffmann • Eitle. He studied chemistry at the

University of Wuerzburg, the Technical University of Munich and the

Massachusetts Institute of Technology. He concentrates on chemical,

pharmaceutical and biotech patents, with a particular emphasis on litigation

(both cross-border and national), oppositions, appeals and legal opinions.

Thorsten has been involved with cases before the EPO, the German patent

courts, the German Federal Supreme Court, and the European Court of

Justice. He is the editor of a book series on German case law in patent

invalidation matters.

Dr. Dirk Schüßler-Langeheine, Hoffmann • EitleDirk is a German Rechtsanwalt (attorney-at-law) and heads the legal

department of Hoffmann • Eitle. He studied law, politics and Japanese

language and culture and has a Ph.D. in law. Dirk’s main fields of expertise

are patent litigation and licensing law. He is a patent litigator in Germany,

and he organizes and co-ordinates multi-jurisdictional patent disputes in

Europe. He is co-editor of the compendium “Patent Practice in Japan and

Europe. Liber amicorum for Guntram Rahn” and author of several

publications on German, European and Japanese patent and licensing law.

The court system 1. When are disputes heard by the national patent

office?

The German Patent Office and the European Patent

Office (EPO) can only hear oppositions, no infringement

cases. However, due to Germany’s bifurcated system with

infringement proceedings being separate from invalidity

or opposition proceedings and due to the fact that an

invalidation court action in Germany cannot be filed

while opposition proceedings are pending, they still play

an important role in the patent dispute resolution system.

2. Where are the trial courts (centralised or regional)?

The infringement trial courts in Germany are regional

(12 courts; the most popular courts being located in

Düsseldorf, Mannheim and Munich), whereas invalidation

actions are heard centrally before the Federal Patent

Court in Munich.

3. Are validity and infringement trials heard together?

No. An infringement court cannot invalidate a patent,

and the Federal Patent Court is not entitled to adjudge

infringement questions. If an infringement court believes

the patent will likely be invalidated in opposition or

invalidation proceedings, it may stay the infringement

proceedings pending resolution of the opposition or

invalidation action. However, such stays are discretionary

and most infringement courts require a very high

threshold to be overcome before ordering a stay.

4. What is the composition of the trial panel (one or

more judges/ are they specialists)?

The trial panels in infringement matters are composed of

three judges with legal backgrounds. These judges do not

normally have technical university degrees, but despite this

they usually have significant experience in understanding

even difficult technical inventions and deciding infringement

cases, thus they are specialist judges in this sense. The

composition of the Federal Patent Court in invalidation

actions is a five-member specialist panel composed of

two regular judges and three technical judges who have

technical education and practical experience in the field

at stake.

5. Where is/are the appeal courts?

The infringement appeal courts are specialised panels at

the higher regional courts. Each regional court is assigned

to a higher regional court that hears appeals from this

court. A further appeal on points of law may be filed

against decisions of the higher regional courts and these

are heard by the Federal Court of Justice in Karlsruhe.

The Federal Court of Justice also hears appeals against

decisions of the Federal Patent Court in invalidation actions.

6. What is the composition of the appeal panel (one or

more judges/ are they specialists)?

Panels of three judges with no technical specialisation

Patent Knowledge Share:Layout 1 2/10/12 10:19 Page 34

22 THE PATENT LAWYER CTC Legal Media

FOCUS: BUYING PATENTS

RésuméJohn Boyd, Product Manager, Patent Brokerage, TechInsights John has worked with TechInsights, a technology consulting firm that helps

the world’s leading patent owners protect and grow their businesses, since

2007. In the patent brokerage team he supports clients’ patent acquisition

or divestment strategies using proprietary tools to identify relevant assets.

John specializes in applying his deep technical background and understanding

of the global technology industry to help clients achieve their goals.

John has a BSc in Chemistry from the University of Ottawa and is the

inventor of over 180 patents in the semiconductor technology domain and

has worked extensively with patent attorneys as both an inventor and

consultant.

The patent transaction market has been

transforming over the last decade. Gone are the

‘Wild West’ days when companies would buy

portfolios almost sight unseen, and then begin the job

of identifying the value drivers in the portfolio they just

purchased.

Value is no longer measured ‘by the patent pound’.

Instead, it is demonstrated quantitatively using documented

Evidence of Use (EoU) and the requisite financial models

to support a licensing program or defensive negotiation.

These requirements are now the de-facto standard and,

for all practical purposes, mandatory for any portfolio

to be considered by potential buyers, or by an infringing

defendant and court at a later date.

From Intellectual Property (IP) creation, reassignment

and monetization, Fig. 1 (opposite) shows the many forms

and models that are currently in play in today’s market.

Fig. 2 (opposite) shows that Non-Practicing Entity

(NPE) litigation peaked in 2013 and has been in decline

since then. In fact, NPE cases filed dropped 24% in 2014

from their high point in 2013. The reasons for this will

be discussed in more detail in the following sections.

LandscapeIP monetization has become an industry over the last

decade. Business models for IP holders have evolved, both

for operating companies and the many variants of NPEs.

These NPEs may include: Patent Assertion Entities, Patent

Aggregators, Patent Defence Funds (both private and

government sponsored), Privateers, Research Institutions

and Universities, to name just a few. Patent Licensing and

Engineering companies can bridge both sides of the

Operating/Non-operating models.

Patent Reform:Shifting of the balance of terrorPrior to 2012, NPEs (the legitimate ones and the trolls)

were able to approach licensees with seeming impunity.

For clarity, patent trolls are those companies which extort

fees from operating companies by asserting dubious

patents without compelling EoU and at a settling price

point which is much lower than the operating company’s

legal cost to fight their baseless assertions. This created a

demand for patents and with many patents changing

hands - lawsuits followed.

Most of the cases that were launched by patent trolls

were without merit. But other cases which were launched

by legitimate licensing entities were with merit - their IP

was being used without their permission. According to

data processed by defense fund AST, in 2014 more than

8,000 patents changed hands between entities1. While these

numbers indicate that the patent transaction market is

still healthy, patent prices have, on average, fallen. The

primary reasons for reductions in patent prices are:

1. Deflation in the value of Standards-EssentialPatents (SEPs) and inability to get an injunction oninfringers who refuse to take a license.

Why now is agood time tobuy patentsChanging laws, political reform and new monetization modelsmeans that there has never been a better time to invest inUS and EU patents. Just as long as you understand the riskinvolved…

1 This data was based on the available top-20 patent buyerreassignment information.

John Boyd

TechInsights Article:Layout 1 25/6/15 15:50 Page 22

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