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San Francisco Intellectual Property Law Blog

Judge denies Qualcomm another bite out of Apple

It doesn't matter if you are a small technology company working your way up through the business ranks or an entity with a massive mother ship in Silicon Valley like Apple, intellectual property litigation tends to be a high-stakes game. Protecting your IP interests represents one significant challenge when you are a patent holder. On the other end of the scale is the prospect of your company facing accusations of infringement.

Regardless of which side of the fence you be on, one thing that often remains a constant is that the complexity of the legal processes are going to be such that it demands he help of experienced counsel.

Finding a comparable license to assess damages can be tough

Assessing damages in any type of legal case can be a tricky proposition. Often the amount sought tries to encompass not only actual damages, but projected losses. In a personal injury case, the physical evidence can go a long way toward proving the loss. But damages in patent law can be harder to quantify.

Federal patent law clearly states that when infringement of a patent is determined, the claimant is entitled to "damages adequate to compensate for the infringement, but in no event less than a reasonable royalty." The issue then becomes, how do you determine adequate compensation? A loss of profits can be difficult to prove making the royalty option more common. But then, what constitutes a reasonable royalty?

A general overview of patent litigation

Obtaining a patent is one thing. Protecting the rights after assignment of a patent is another. Each are separate activities. The process in the first instance is patent prosecution. The functions associated with the second focus on defending a patent against infringement and fall under litigation, as do those associated with challenging the validity of a patent in the first place.

The array of steps involved in those processes and the different venues available for patent enforcement make for a complex maze, safe navigation of which depends on help of experienced legal pilots. In this post, our goal is to provide readers some insight into the different routes that can arise in the patent enforcement landscape.

Options for invoking assignor estoppel in IPR

The bifurcation of legal processes related to intellectual property prosecution can be frustrating. This was highlighted in a post late last year. It reported on a decision by the U.S. Court of Appeals for the Federal Circuit in which the panel said that a doctrine that prevents inventors granted a patent from later challenging the validity of that patent in federal court or before the International Trade Commission does not necessarily prevent such a challenge through inter partes review (IPR).

Language in the federal law that created IPR through the Patent Trial and Appeal Board says any person who doesn't own a patent can initiate a challenge against it. And in the case we discussed in that post, the appeals court said the challenger fit that bill because he had assigned the patent to his former employer.

Standing can be a defining element in an IP case appeal

One aspect of inter partes review (IPR) that has been a source of major contention is that it is an administrative judicial process that operates separately from the normal processes of the U.S. legal system. But, as we noted in an earlier post, the U.S. Supreme Court has ruled it doesn't violate the Constitution.

Another element of IPR that some find disconcerting is that the law allows any person who does not own a patent to petition the U.S. Patent Trial and Appeal Board (PTAB) to initiate an action. That means that any entity, even one with no actual standing, can seek to invalidate an existing patent. But, based on the outcome of one recent challenge, it's clear that lack of standing may limit the right of appeal to federal court at times.

Think about protecting it before selling it

Intellectual property lawyers see this issue often: people neglect to think about protecting their product before marketing it.

Let’s say your company created an innovative energy efficient product. Management and engineers are excited to spread the word. You and your colleagues attend a trade show and overindulge details about your new product to fellow industry innovators. This is a common mistake for two reasons:

Rock world trademark fight offers lesson for those in other areas

The rock band Boston has been around for decades. Over those years, the band has racked up a lot of name recognition. And every musician who has ever played with the group has likely sought to capitalize in some way or another on that association.

Intellectual property rights held in the form of copyrights, trademarks and otherwise can be leveraged to how affiliations are claimed and communicated, however. And that is something that is common to all businesses, whether the IP is associated with arts, ecology, biosciences, robotics, or any technology-related industry.

'Open innovation' era calls for solid IP licensing strategies

The term "open innovation" is not new to anyone in the technology sector. It reflects an attitude shared by many that traditional strategies related to intellectual property management don't always hold the water they once did. There is still a place for secrecy. Just ask Apple if you doubt that. But open innovation embraces the idea that greater, and perhaps speedier benefits come from collaborating with parties internally and externally.

Of course, that does not mean that protection of IP rights goes out the window. Rather, what it means is that to derive the greatest value from intellectual property, rights holders owe it to themselves to fully explore all their strategic options. Do you hold them? Fold them? Or do you spur new technology advancements through the calculated use of licensing?

Mass copyright expiration carries implications yet unknown

The coming of the new year brings with it one thing that hasn't been experienced in 20 years - the mass expiration of protections on materials that have been under copyright since 1923. Speculation about the implications of this happening has been on the rise since earlier this year and has reached new volumes in the past several weeks.

Such conjecture is fun, but the musings are little more than thought experiments at this stage. The real impact of what's to come is impossible to predict, especially considering how the world has changed in the 95 years since the expiring copyrights took force. What new technology and art could be created, warranting new intellectual property protection, is anyone's guess.

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