Intellectual Property Litigation

The Latest Thinking on Non-Practicing Entities

Synopsis

Knowing both your client and your opponent is crucial when developing a strategy for dealing with patent trolls. Among the many insights presented in the course are responding to demands from trolls; is your business a troll target and how do you address that; the cost of settling versus the cost of going to trial; and recent proposed legislation, including The Innovation Act.



Outline

I. What's New in the NPE World?
    A. What Is an NPE?
    B. History of the American Patent System
    C. Patent Licensing as a Secondary Market
    D. Issues to be Addressed
    E.  An Economic and Financial Perspective
         1. Business Models, Statistics, The ITC, and the Economic
             Effect
         2. NPE Business Models
         3. Special Purpose Entities
         4. Economic Modeling
         5. Statistical Data
         6. Trends in the NPE Market
         7.  NPE Damages Analysis
         8.  Economic Landscape 
    F.  NPEs and U.S. Patent Litigation
         1.  Basis for Approach to Litigation
         2.  Litigation and the Inherent Nature of NPEs
         3.  Treating NPEs as a Uniform Class of Litigants
         4.  Additional Litigation Strategy Issues
         5.  Selecting Defendants and Respondents
         6.  Forum Selection
    G.  Defending Troll Litigation
         1.  What Exactly Is a Troll?
         2.  Troll Defense Strategy
         3.  Know the Troll's History
         4.  Controlling Troll Risk
         5.  Moving Venue and Early Exit
         6.  U.S. Patent and Trademark Office Help
         7.  Unique Troll Defenses
    H.  Legislation Overview
         1.  Recent Activity Making an Impact
         2.  Proposed Legislation
         3.  Patent Ownership Disclosures
         4.  Patent Infringement Pleading Requirements
         5.  Fee-Shifting
         6.  Stays of Customer Suits
         7.  Discovery and Case Management
         8.  What's Next?
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The American Intellectual Property Law Association (AIPLA) is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community, with approximately 13,500 members. AIPLA represents a wide and diverse spectrum of individuals, companies and institutions involved directly or indirectly in the practice of patent, trademark, copyright, and unfair competition law, as well as other fields of law affecting intellectual property. Our members represent both owners and users of intellectual property.

AIPLA was formed in 1897 to maintain a high standard of professional ethics, to aid in the improvement in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues.

AIPLA is governed by a Board of Directors and has a staff of 25, headed by an Executive Director, located in Arlington, Virginia. AIPLA has more than 50 administrative and substantive committees which provide education to their members and formulate proposed positions for the Board of Directors to consider adopting as Association policy.

AIPLA is also actively involved in shaping US intellectual property policy through its work on legislation, federal regulations, and intellectual property cases in the US courts. Internationally, AIPLA has spearheaded a worldwide campaign to reduce the costs of procurement and enforcement of patents and trademarks, regularly participates in meetings of the Word Intellectual Property Organization, and maintains close relations with foreign IP officials and practitioners.

To qualify for membership, applicants must be members in good standing of the Bar of a court of record of the United States or any State. Foreign affiliate members must be able to practice in a court of general jurisdiction in their countries, or registered to practice before the Patent or Trademark Office in their country of citizenship or practice, to be considered for membership. AIPLA also has student affiliate memberships available for those regularly enrolled in a law school approved by the Association of American Law Schools and affiliate membership is available to patent agents who are registered with the USPTO. Approximately 63% of the regular members are in private practice, 33% in corporate practice, with the remainder in the government or academia. See our membership application for more information.

AIPLA conducts three regularly scheduled conferences a year, mid-winter, spring, and fall, at which the Association offers educational seminars on the latest developments in intellectual property law. In addition, AIPLA conducts several stand-alone seminars on specialized areas of intellectual property law throughout the year around the country, as well as online educational programs.

The Association produces a number of informative publications including the AIPLA Quarterly Journal (a scholarly law journal published four times a year), the AIPLA Bulletin (an overview of AIPLA meetings published electronically three times a year, and meeting papers from the regularly scheduled conferences and nationwide seminars. The Association also provides its members online access to a membership directory. Finally, AIPLA biennially publishes the Report of the Economic Survey, providing a significant benchmarking tool for compensation and charges in the intellectual property law field.


Learning Objectives:





Speakers / Authors:

Photo of Felicia J. Boyd

Felicia J. Boyd
Barnes & Thornburg LLP

Felicia J. Boyd is a partner with Barnes & Thornburg LLP in the firm’s Minneapolis office, where she is a member of the firm’s Intellectual Property Department. Ms. Boyd focuses her practice on complex intellectual property litigation and has led plaintiff and defense litigation on a large variety of claims related to patents, copyrights, trademarks, and trade dress.

Prior to joining Barnes & Thornburg, Ms. Boyd practiced with Faegre & Benson LLP in Minneapolis. Her litigation experience spans several industries, including medical devices, software, music, pharmaceuticals, and manufactured goods. Her victories on behalf of clients have included preliminary injunction motions, summary judgment motions, favorable settlements, and jury verdicts at trial. She is a registered patent attorney with a bachelor's degree in chemistry and has represented clients in contested proceedings before the U.S. Patent and Trademark Office (USPTO).

Ms. Boyd has played a leading role in large patent infringement matters for several clients. As a result, she has had significant experience in complex case management; coordination of global discovery efforts; design and implementation of litigation strategy; investigation of underlying disputed issues; the selection and development of all experts, and Markman strategy, briefing and argument.

Ms. Boyd earned her J.D., magna cum laude, in 1987 from The University of Minnesota Law School. She received her B.A., cum laude, from St. Olaf College in 1984.

Photo of F. David Foster

F. David Foster
Foster Murphy Altman & Nickel

F. David Foster focuses on international intellectual property matters, particularly international licensing and litigation, including representing both complainants and respondents in litigating patent disputes under Section 337 of the Tariff Act. Section 337 permits the United States to impose an embargo against imports of products that infringe United States intellectual property, including United States patents, copyrights, and trademarks. He also has handled numerous international trade regulation matters involving antidumping and countervailing duties, customs, market access, import relief, and trade policy.

Mr. Foster's association with Section 337 has been long and varied. He began his work with Section 337 in 1974 while at the General Counsel's office of the U.S. International Trade Commission (ITC), where he assisted in transforming Section 337 into its modern form and preparing its legislative history while representing the ITC in its work with Congress in the passage of the Trade Act of 1974. He subsequently chaired the Commission group drafting implementing regulations and assisted the Chairman of the ITC in presiding over cases as the Chairman's principal legal assistant. He then served as International Trade Counsel for the Senate Finance Committee where his primary involvement was oversight of the Multilateral Trade Negotiations and passage of implementing legislation. In addition, he oversaw the work of the Commission under Section 337, and was responsible for its budget authorization. Since moving to private practice, Mr. Foster has represented clients in over 70 Section 337 cases, many involving billions of dollars in trade.

He has represented clients in a wide variety of industries, including integrated circuits, optical wave guide fibers, pharmaceuticals, steel, agricultural products such as sugar and orange juice, cellular telephones, electronics, and sophisticated manufacturing equipment.

Mr. Foster received his J.D. in 1972 from Arizona State University, his LL.M. in International Law in 1973 from Columbia University School of Law, and his B.A. from Arizona State University in 1969.

Photo of James E. Malackowski

James E. Malackowski
 
James E. Malackowski is the Chairman and Chief Executive Officer of Ocean Tomo, LLC, an integrated Intellectual Capital Merchant Banc™ firm providing financial products and services related to Intellectual Property (IP) expert services, research, investments, risk management and transactions. Ocean Tomo assists clients – corporations, law firms, governments and institutional investors – in realizing Intellectual Capital Equity® value broadly defined. Subsidiaries of Ocean Tomo include: Ocean Tomo Capital, LLC -- publisher of the Ocean Tomo 300® Patent Index (NYSE: OTPAT). Ocean Tomo is the founder of the Intellectual Property Exchange International, Inc. where Mr. Malackowski serves as Co-Chairman.

Mr. Malackowski is a founding and continuous member of the IP Hall of Fame Academy. He has been recognized annually since 2007 by leading industry publications as one of the fifty most influential people in intellectual property and /or one of the ‘World’s 250 Leading IP Strategists’. In 2011 Mr. Malackowski was selected by the World Economic Forum as one of less than twenty members of the Network of Global Agenda Councils to focus on questions of IP policy. Prior to forming Ocean Tomo, he served as a finance and investment advisor working with one of the Nation’s oldest investment banks, as well as one of Chicago’s largest private equity firms. He began his career spending 15 years as a management consultant and forensic accountant focused on intangible assets. In this capacity Mr. Malackowski served numerous roles as a founding principal including Chief Executive Officer of his firm, growing the practice to the nation’s largest before its sale.

Mr. Malackowski is President for The Licensing Executives Society International, Inc. and PastPresident of LES USA & Canada, Inc. Today, Mr. Malackowski focuses his non-for-profit efforts with organizations leveraging science and innovation for the benefit of children or lesser developed countries. He is a Director of Children’s Memorial Research Center, an affiliate of Children’s Memorial Hospital in Chicago and has served since 2002 as a Trustee or Director of Invent Now, Inc., an organization providing summer enrichment programs for more than 70,000 students annually. He is the Founder of the Chicago based Center for Applied Innovation (CAI), an Illinois non-profit corporation created to manage education, public policy outreach and related economic activity around applied technology and intellectual property rights. CAI is the organizing entity for the Invent for Humanity™ Technology Transfer Exchange Fair taking place each January in Geneva, Switzerland.

Mr. Malackowski is a frequent speaker on emerging technology markets and related financial measures. He has addressed mass media audiences including Bloomberg Morning Call, Bloomberg Evening Market Pulse, Bloomberg Final Word, CNBC Closing Bell, CNBC On the Money, CNBC Street Signs, CBS News Radio and Fox Business National Television. Mr. Malackowski has also appeared as a judge on PBS’s Everyday Edisons.

As an inventor, Mr. Malackowski has 16 issued U.S. patents. He is a frequent Adjunct Instructor for graduate studies on IP management and markets. Mr. Malackowski is Certified in Financial Forensics, a Certified Licensing Professional and a Registered Certified Public Accountant in the State of Illinois.

Mr. Malackowski is a summa cum laude graduate of the University of Notre Dame majoring in accountancy and philosophy.

Photo of Adam Mossoff

Adam Mossoff
 
Adam Mossoff is Professor of Law and Co-Director of Academic Programs and a Senior Scholar in the Center for Protection of Intellectual Property at George Mason. He teaches and writes in the areas of patent law, trade secrets, property law, and internet law. He has published extensively on the theory and history of how patents and other intellectual property rights are fundamental property rights, with his articles appearing in the University of Pennsylvania Law Review, Cornell Law Review, Boston University Law Review, and other journals. His article on the very first patent war, the Sewing Machine War of the 1850s, has become an important part of the public policy debates concerning today’s “smart phone war.” He has presented his research on patent litigation, patent licensing, and patent pools at many academic conferences, law firms and commercial firms, as well as spoken at conferences or colloquia held by the PTO, the FTC, the DOJ, and the Smithsonian Institution.

Professor Mossoff is a member of the Public Policy Committee of the Licensing Executives Society, the Academic Advisory Board of the Copyright Alliance, and is Vice Chairman of the Intellectual Property Committee of the IEEE-USA. On behalf of these and other organizations, such as the Innovation Alliance, he has spoken at numerous congressional briefings on topics relating to patent and copyright law.

Professor Mossoff graduated with honors from the University of Chicago Law School, where he was a research assistant to Richard A. Epstein and held the Bradley Governance Fellowship. Following law school, he was a John M. Olin Fellow in Law and Visiting Lecturer at Northwestern University School of Law, and he clerked for the Honorable Jacques L. Wiener, Jr. of the U.S. Court of Appeals for the Fifth Circuit. He holds an M.A. in philosophy, specializing in legal and political philosophy, from Columbia University and a B.A. with High Distinction and High Honors in philosophy from the University of Michigan.

Photo of Kevin Rhodes

Kevin Rhodes

Kevin Rhodes is the President and Chief Intellectual Property Counsel of 3M Innovative Properties Company in St. Paul, Minnesota, where he is responsible for managing the intellectual property assets of 3M Company and its worldwide affiliates.

Mr. Rhodes is a member of the Executive Committee of the Board of Directors of the Intellectual Property Owner’s Association, and serves as Chair of the Amicus Committee. He also serves as the Treasurer of the Board of Directors of the Intellectual Property Owner’s Association Educational Foundation. He is also a member of the Board of Directors of the American Intellectual Property Law Association. and serves on the Executive Committee of the Association of Corporate Patent Counsel.

Mr. Rhodes chairs the Board of Advisors of the William Mitchell College of Law Intellectual Property Institute. He also serves on the Steering Committee of the PTO Pro Bono Inventor's Assistance Program. He has spoken widely on issues of intellectual property law and policy. Mr. Rhodes joined 3M in 2001. Prior to joining 3M, Mr. Rhodes was a partner at Kirkland & Ellis in Chicago, where he specialized in intellectual property litigation.

Mr. Rhodes received his J.D., magna cum laude, from Northwestern University and his undergraduate degree from Grinnell College.

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Details

Course Code : 772592

Release Date : 03/31/2014


Length : 2hr 14min
Recorded Date : 10/24/2013


Format Type : eLearning


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