Agenda for Patent Litigation CLE on March 2, 2007 at the Bellagio in Las Vegas
The Patent Litigation CLE was held on March 2, 2007 at the Bellagio hotel and casino in Las Vegas. The speakers included Sid Leach, a partner with Snell & Wilmer, Mark A. Miller, an attorney with Holland & Hart, Ryan A. Heck, Ph.D., an attorney with Klarquist Sparkman, Robert S. Rapp, a shareholder with Madson & Austin, Stephen M. Nipper, a shareholder with Dykas, Shaver & Nipper and author of The Invent Blog that focuses on intellectual property issues, and Frederick N. Samuels, a shareholder with Cahn & Samuels, LLP.
This CLE was held in the Bellagio Ballroom 3 conference room at the Bellagio hotel and casino. The Agenda for this CLE was as follows:
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March 2, 2007 (Friday)
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| 8:30 – 9:00 |
Registration & Continental Breakfast
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| 9:00 – 10:00 |
Post-Issuance Litigation Matters - Robert S. Rapp
After a patent has issued, patent owners can take significant steps, which either increase or decrease the value of their patents. Considering all the time and resources invested in obtaining a patent, consideration of these relatively simple issues is warranted. Marking the patented product is one such issue. Failure to mark can in some cases entirely eviscerate potential damages in a patent infringement suit.
Another issue of interest is correction of patents via a certificate of correction. Delay in correcting errors in a patent can create significant problems during litigation. Errors that are “subject to reasonable debate” generally cannot be retroactively corrected.
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| 10:00 – 11:00 |
The Consequences of Failing to Perform an Adequate Pre-Filing Investigation Before Filing a Patent Infringement Action - Sid Leach
In October 2006, a jury returned a verdict in the case of Verve LLC v. Hypercom Corp., awarding compensatory damages and punitive damages against a lawyer and his law firm for abuse of process and malicious prosecution based upon patent infringement actions that were filed without an adequate pre-filing investigation. That same month, in the case of Eon-Net, L.P. v. Flagstar Bancorp, Inc., an attorney and his law firm were sanctioned under Rule 11 for failing to conduct an adequate pre-filing investigation before filing a patent infringement action. In a recent investigation before the International Trade Commission, the administrative law judge entered an order imposing sanctions in the amount of $1,000,000 against Verve LLC and its lawyers based upon the failure to conduct an adequate pre-filing investigation and misrepresentations made in the complaint that was filed with the ITC. Although the ALJ’s order was ultimately remanded by the Commission for reconsideration of the amount of the sanctions imposed, the above decisions emphasize the importance of conducting an adequate pre-filing investigation before initiating patent infringement litigation.
Sid Leach served as lead counsel for Hypercom Corporation in the above-mentioned cases involving Verve, and discussed what is required to satisfy the requirement for an adequate pre-filing investigation in patent litigation. The courts have determined that Rule 11 requires certain steps to be taken that are unique to patent litigation. The propriety of filing first and investigating later was covered. The proper procedure for pre-filing investigations was described. He also detailed the consequences and exposure for a lawyer and his or her law firm if an adequate investigation is not performed, including case law on the issues of Rule 11 sanctions, sanctions under 28 U.S.C. § 1927, claims for abuse of process, and claims for malicious prosecution.
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| 11:00 – 11:15 |
Break
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| 11:15 – 12:15 |
The Interplay Between Patents and Trade Secrets - Mark A. Miller
Patent laws and trade secret laws provide essentially mutually exclusive methods of protecting technological developments. Understanding the two systems and how they interact is important in helping clients know how to protect their intellectual property as well as knowing how to approach litigation that will involve both patents and trade secrets. Sometimes trade secrets claims may provide benefits not found in the
patent laws, while other times a trade secrets claim may threaten the validity and enforceability of one's patents. This presentation briefly explored the basics of the two systems and provided litigation examples of how the two systems affect each other.
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| 12:15 – 1:30 |
Lunch Break
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| 1:30 – 2:30 |
Be Prepared for the Perfect Storm-Litigating Software Patents - Ryan A. Heck, Ph.D.
Recent legal trends implicate litigation strategy in all technology areas. However, these trends may be coalescing into a perfect storm for software and computer related technologies. We’ll discuss these trends, how to weather the storm if you are trying to enforce software patents, and how to harness the storm as a shield if you are defending against them.
Among the trends that will be discussed is the increasing use of functional claim language to narrow the scope of claims or find them invalid for lack of “corresponding structure.” Also discussed will be the Federal Circuit’s decision in IPXL Holdings, LLC v. Amazon.com, Inc. As software claims often recite methods to be performed on hardware components, the IPXL decision may be implicated in many computer patents. The written description and enablement requirements are also being used to invalidate or limit the scope of software patents. In addition to validity and claim construction, cases such as eBay Inc. v. MercExchange LLC and DSU Medical Corp. v. JMS Co. may limit the remedies available under software patents.
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| 2:30 – 3:30 |
ESI: Las Vegas -- A Primer on the FRCP's New Electronic Discovery Rules for Patent Litigators - Stephen M. Nipper
More and more of the documents that businesses are creating and handling today are in electronic formats. In response to that fact, on December 1, 2006, the Federal Rules of Civil Procedure were amended to include (among other things) changes to how parties are to treat electronic data during the litigation process. To comply with the rules, patent litigators must have a thorough understanding of the changes to the pre-trial "meet and confer" conference, how electronically stored information (ESI) is to be produced/disclosed, how to handle inaccessible documents, how to sequester/retrieve inadvertently produced privileged documents, and how to appropriately counsel your clients about document retention and ESI preservation.
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| 3:30 – 3:45 |
Break
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| 3:45 – 4:45 |
I Am an Assignee/Exclusive Licensee, Why Can’t I Sue for Infringement? - Frederick N. Samuels
Before embarking on litigation, patent licensees and assignees must be sure that they have sufficient patent rights to confer standing to sue. For assignees, the timing of patent acquisition is extremely important. If the patent is improperly assigned or is assigned too late, there is no recourse and the suit must be dismissed. An exclusive licensee must have all substantial rights in the patent in order to bring suit. This presentation will explore the standing requirements for assignees, exclusive licensees and non-exclusive licensees in view of Propat International Corp. v. Fink and other recent Federal Circuit precedent.
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| 4:45 |
Adjourn
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