Who’s at Risk, Cause & Effect, Wait Until You're Sued

IT EXPO SUITS IP Breakout ConferenceTodd L. Juneau

Registered Patent Attorney

Patent Claims

• Patent claims are the most important part of a patent application.

• A patent application is similar to a research publication: o abstracto background problemo hypothesis and methodologyo materials and methodso resultso discussiono conclusion: EXCEPT it also includes CLAIMS.

Type of Claims

• Device Claimso the most valuable type of claimo It provides for the largest 'monopoly'o the ability to stop others from making, using,

selling, and importing.• Use Claims

o ideally claiming a single 'bottleneck step'o use claims are a challengeo are often not worth as mucho They only allow stopping others from one of the

four rights.

Claims Examples

• One-click claimso Amazon or eBayo Was the click offshore (and not an infringement)?

• USB as exampleo standard 8-pin plugo compatible with /drivers for 137 deviceso 5 V power supplyo universal plug(s)

Contingency Fee Litigation

• Law Firms• Law Firms + 3rd Party Investors• Corporations

• NOTE: Your lawyer is no longer your lawyer: waiver of conflict of interest requirement

• Litigation fee costso It depends on whether plaintiff or defendanto It is possible to litigate for $3000-$5000/month

Patent Industry Statistics

Median Patent Litigation Costs

Patent Litigation -Considerations for Decision-makers

– Top Ten Largest Patent Awards– Patent Damages by Industry– Patent Damages by Industry by Amount– Overall Patent Litigation Success rate by Industry– Success Rate By Industry by NPE or PE– Time to Trial by Location– Court Rankings– Overall Success Rate

Courtesy of PWC at http://www.pwc.com/us/en/forensic-services/publications/assets/2011-patent-litigation-study.pdf