Best Practices for Challenging Bad Patent Claims by Non-Practicing Entities - Presenation: Dana Rao,...
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Transcript of Best Practices for Challenging Bad Patent Claims by Non-Practicing Entities - Presenation: Dana Rao,...
D R | Vi P id t I t ll t l P t & Liti tiPatent Trolls in 2014Dana Rao | Vice-President, Intellectual Property & Litigation
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential.
Who are we?
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 2
What are they?
A patent troll, also called a patent assertion entity (PAE), is a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees, but does not manufacture products or
A patent troll, also called a patent assertion entity (PAE), is a person or company who enforces patent rights against accused infringers in an attempt to collect licensing fees, but does not manufacture products or supply services based upon the patents in question, thus engaging in economic rent-seeking.supply services based upon the patents in question, thus engaging in economic rent-seeking.
P t t A ti E titi S i l P t t Pl i tiffsPatent Aggregation Entities sSerial Patent Plaintiffs
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 3
It’s growing
NPEs filed 58.7% of lawsuits in 2012, up from 24.6% in 2007
One study estimated $29B impact to economy – beyond techOne study estimated $29B impact to economy beyond tech
For Adobe, represents 80% of our litigation budgetGranted over 30 indemnification requests since 2012
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 4
Over 55% of NPE litigation targets those making less than $10M in revenue
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 5
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 6
What is fueling the industry?
Easy MoneyCapital Investment
Vague patentsRise of the Patent MarketplaceRise of the Patent Marketplace
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 7
What to do about patent trolls
FightManage your budget
AIA Tools Legislative Reform
Patent QualityPatent Quality
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 8
Manage your budget
Pre-negotiated price for six months
Alternate Fee Arrangements for Patent Litigation
“All you can eat” for that time period
No true up but can adjust for significantly changed circumstances
Fix price for next six months to ensure both sides are getting benefit of bargainFix price for next six months to ensure both sides are getting benefit of bargain
Requires trust relationship
Side benefit: gets in house attorneys out of low value invoice review
Consolidate Law Firms
Allows you to take the cases to trial as
Use JDG/shared counsel whenever possible
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 9
Allows you to take the cases to trial as necessary
AIA Tools
Inter Partes Review500 petitions in FY13 (early FY14 indicates could double
Covered Business Method Review• Can be filed any time in the life of the
patent (outside of PGR)
Must be sued or charged with infringementCan be filed up to a year after a complaint is filed (outside PGR window)
• Must be sued or charged with infringement
• Limited to business method patents, but interpreted broadly
• Can use any sort of prior art
Can use printed publication or patent prior art
If granted, will typically get you a
• Only estopped for art that was actually raised.
• Test for eligibility appears to be conflated with 101
stay
You are estopped from raising any printed publication or patent prior art afterwards (raised or could have
• 48 petitions in FY13
Post Grant Review• Can only be filed in the 9 months after a
post AIA patent is grantedafterwards (raised or could have been raised)
$23K filing fees; multiple petitions may be required, typical cost is
post AIA patent is granted
• Any ground of prior art
• You are estopped for any art that was raised or could have been raised
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential.
may be required, typical cost is $600K-$800K
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Legislative reform
Provision Description BillProvision Description BillFee Shifting Raises current fee shifting
standard to require court to shift fees unless substantially justified
House Act; Cornyn/Hatch Senate
y jJoinder/Bonding Attach fees to an interested party Hatch; House and Cornyn have
a joinder provisionCustomer Stay Enables manufacturers to get Leahy, HouseCustomer Stay Enables manufacturers to get
stays on behalf of customersLeahy, House
Heightened Pleading
Requires additional information in complaint
Cornyn, Houseg
Discovery Cost Shifting
Requires either party to pay for discovery requested beyond core documents
Cornyn, House
Discovery Stay Stays all discovery other than Markman related until Markman
Cornyn, House
CBM Expansion Expands CBM program to include Schumer
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 11
software
Fee Shifting
The court shall award, to a prevailing party, reasonable fees unless the court finds that the position and conduct of the nonprevailing party was reasonable justified in law and fact or that special circumstances (such as severe economic hardship to a named inventor) make an award unjust
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 12
Software Patent Quality
101 is the wrong focus101 is the wrong focus
Why are claims not tied to the specification?
.Whoever discovers that a certain useful result will be produced, in any art, . p , y ,machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent for it; provided he specifies the means he uses in a manner so full and exact, that any one skilled in the science to which it appertains can by using the means he specifies without any addition to orappertains, can, by using the means he specifies, without any addition to, or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void. And if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more.And it makes no difference, in this respect, whether the effect is produced by chemical agency or combination; or by the application of discoveries or principles in natural philosophy known or unknown before his invention; or byprinciples in natural philosophy known or unknown before his invention; or by machinery acting altogether upon mechanical principles. In either case he must describe the manner and process as above mentioned, and the end it accomplishes. And any one may lawfully accomplish the same end without i f i i th t t if h b t ti ll diff t f th
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 13
infringing the patent, if he uses means substantially different from those describedwww.patentprogress.com
Software Patent Quality part II
Increase 112 analysis at examination
Require declarations of support in the specification
Declarations throughout prosecution
Technical dictionaries
Allow claims to be interpreted in light of specificationAllow claims to be interpreted in light of specification
Crowdsource prior art
Novelty/Non-obviousness is the proper tooly p p
Does everyone really need all those patents?
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 14
In conclusion...
Tactics:
Manage Budget; Fight; Use the AIA; Litigation Reform; Improve Patent QualityQuality
!Join the Fight!
© 2014 Adobe Systems Incorporated. All Rights Reserved. Adobe Confidential. 15