Perspectives • Analysis • Visionary Ideas

INTELLECTUAL PROPERTY AND TECHNOLOGY NEWS

Issue 8, Q4 2010 | www.dlapiper.com/ip_global

PAtents Down UnDer

CLAIM to stAnDArD: SIMPLIFYING PATENT INFRINGEMENT ANALYSIS?

the eVoLUtIon of PAtent LICensIng LAws In JAPAn

ProteCtIng YoUr BrAnD on A gLoBAL sCALe

An InterVIew wIththe honorABLe

RANdALL R. RAdER ChIEF JudGE oF ThE uS CouRT oF APPEALS FoR ThE FEdERAL CIRCuIT

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You are receiving this communication because you are a valued client, former client or friend of dLA Piper. The information contained in this newsletter is for informational purposes only and should not be construed as legal advice on any matter. To unsubscribe from this mailing list, send an email to communications@dlapiper.com or send your written request to: dLA Piper, Attention: Marketing department, 401 B Street, Suite 1700, San diego, California 92101-4297, uSA. Copyright © 2010 dLA Piper llp (us), dLA Piper uk llp and other affiliated entities. For questions, comments and suggestions, email us at IPTnews@dlapiper.com or contact diane Vislisel, Senior Practice and Industry Marketing Manager, T +1 619 699 3541, diane.vislisel@dlapiper.com. uS Chair – Intellectual Property and Technology, John Allcock: T +1 619 699 2828, john.allcock@dlapiper.com.Editor in Chief, Brent K. Yamashita: T +1 650 833 2348, brent.yamashita@dlapiper.com.dLA Piper llp (us), 401 B Street, Suite 1700, San diego, California 92101-4297, uSA.

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Many of the patent cases I worked on at the beginning of my career involved hard disk drives – incredibly complex devices that involve extensive electrical, mechanical and firmware designs. In the late 1990s, $100 could buy you around 5 GB of disk drive storage. Today, it can buy you over 1 TB.

Yesterday’s innovation often becomes today’s commodity. Consumers, who have come to take this kind of marketplace activity for granted, are the prime beneficiaries. Meanwhile, tech companies bear constant pressure to move on and create the next big thing. The brief acknowledgement by the marketplace of a technological innovation often does not do justice to the countless late nights that engineers and other professionals spent to design and launch the original product. And when technological advances couple with ever-shrinking margins, many industries are squeezed.

In this high-pressure global environment, patents have become all the more valuable. In most industries (with pharmaceuticals being a notable exception), patents outlive the original products whose designs were captured in the patents. Patent applications often are filed right before a product launch to protect patent rights outside of the US. By the time the patent issues two or three years later, the product usually has been replaced by the next iteration, or, every now and then, by a disruptive technology that completely alters the marketplace. But, interestingly, long after the revenue stream for a product ends, a patent holder – with the right kind of patent – can continue to reap the benefits of its patents through licensing revenue, court judgments and sales of the patents themselves.

The objective for patent attorneys is to draft and obtain patent claims that will read on tomorrow’s cutting-edge products as well as today’s. One of my partners at DLA Piper, Alan Limbach, sometimes tells clients that his challenge as a patent attorney is to draft claims that cover products that have not yet been built, to avoid prior art that has not yet been discovered and to comply with legal standards from cases that have not yet been written.

A patent attorney who is successful in that endeavor can obtain a patent of lasting value, one that will generate revenue years after the underlying product has become commoditized or reached the end of life in the wake of technological change and global competition. To me, that sounds like a powerful play.

brent.yamashita@dlapiper.com

EDITOR’S COLUMN

PATENTS CAN COUNTERbALANCE COMMODITIzATION

brent K. YamashitaPartner, Patent Litigation

Patents Down UnDerBy Tony Conaghan

Patent prosecution and litigation are alive and well in Australia. While the country is a smaller market in the global context, Australians keenly take up new technology. Most international companies “tick the box” for Australia when considering where to seek patent protection for inventive products or processes.

Obtaining an australian Patent

Patent applications are filed with IP Australia, a government entity that administers Australian IP statutes and grants IP rights, including patents, designs, trademarks and plant breeder’s rights (PBR). After IP Australia is satisfied that a patent application fulfills the requirements of the Patents Act 1990 (Cth), the patent application is publicly advertised. Interested parties are then able to oppose the grant of the patent within three months after publication. If there is opposition, IP Australia determines the issues, subject to the right to appeal to a prescribed court (usually the Federal Court of Australia).

To be granted, a patent must describe an invention – a “manner of new manufacture” as that term has been traditionally used in English and adopted in Australian jurisprudence. The subject matter must be patentable and new or novel and must involve an inventive step. If the application succeeds, IP Australia grants the patent, giving the owner the exclusive right to commercially exploit the invention.

enfOrcing a Patent

If a patentee believes its patent is being infringed, the patentee can initiate enforcement proceedings in court. A patent is infringed if the accused product or process practices all of the essential integers of a claim. Australia has a “purposive”

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On January 1, 2011, it will be six years since three firms – Gray Cary, Piper Rudnick and DLA – joined to form the first law firm with at least 1,000 lawyers on either side of the Atlantic – a truly global firm. We formed the firm because we knew clients’ needs would require it. The IPT group was global from the start, and has become more global as the years have passed, as the legal and technology worlds have become more global. This edition highlights this global movement of the legal and technology world as well as our group.

First of all, I want to personally thank Chief Judge Rader for giving the candid interview to our firm which is presented on pages 6-8. Part of that interview highlights the international dimension that IP law has today, with the Federal Circuit’s increasing interaction with Tokyo, and the Chief Judge’s vision of “an international standard of judicial performance.” The legal world is becoming more global.

In addition, I was at DLA Piper’s Global Tech Summit, reported on pages 10-11. Global connectivity and global demand for mobile devices and cloud services were at the heart of the discussion by major players on the world stage, like Ned Hooper of Cisco and Shane Robison of HP. The talk among the more than 200 attendees was all about the projected growth in the technology industry, driven by that kind of connectivity. The technology world is becoming more global.

I left the Tech Summit to go directly to Amsterdam, and attended a meeting comprising all of our IPT team from outside the US, including all of Europe and Asia. Of the nearly 300 IPT lawyers there – from Tokyo to Moscow – close to half of them were not at this firm on January 1, 2005, when it was put together. The global scope of our team has expanded dramatically since we started this venture, from steadily increasing patent litigation capabilities in Germany to our most recent additions of patent capabilities in Tokyo.

Technology and its associated intellectual property, as well as the companies producing them, are continuing to permeate every corner of the globe. Our group is right there with them.

john.allcock@dlapiper.com

SIx YEARS

John AllcockPartner global Co-Chair and Us Chair, Intellectual Property and technology

approach to patent interpretation, which in US patent terminology could be described as a combination of literal infringement and the doctrine of equivalents. The court will consider whether the product or process contains all of the essential integers of the claim. If so, there is infringement.

Overview Of the LitigatiOn PrOcess

Many of Australia’s legal principles are similar to those applied in the US, UK and other jurisdictions.

The Australian courts appoint a judge who actively case-manages:

■■ the statement of claim alleging infringement with particulars

■■ the defense and the usual cross claim for invalidity (e.g., lack of novelty, fair basis or obviousness)

■■ discovery (if allowed, could be limited to specific documents or document classes)

■■ written witness statements (usually sworn by affidavit) and expert reports

■■ trial within about 12 months (Victoria is testing an even faster “rocket docket”)

The court requires specificity early in the case. The patentee must provide details on the infringement, its interpretation of the claims and the particulars of why the product/process infringes, and the accused infringer must provide the particulars of invalidity relatively early in the proceedings. All trials are judge trials; there are no juries.

Our Australian team has acted in parallel patent litigation where the expert in the Australian court proceedings was the same expert to be used in the US. It significantly benefits parallel proceedings to have experts committed early to written and/or sworn affidavits or reports setting out their claim interpretations, the basis for infringement (or lack thereof) and patent validity (or invalidity).

Additionally, the Australian discovery process automatically provides confidentiality protection for documents disclosed for the purpose of litigation. However, in certain circumstances (under appropriate confidentiality agreements and/or joint defense agreements) processes can be put in place for access to these documents across borders.

Obtaining Urgent PrOtectiOn

Unlike in the US, courts in Australia often issue preliminary injunctions. Our analysis of the applications for preliminary injunctions in patent infringement matters in Australia over the last couple of decades shows that the prospect of successfully obtaining such an injunction lies at approximately 50 percent. In Abbott GMBH & Co. KG v. Apotex Pty. Ltd. (CAN 096 916 148), decided in November 2009, the judge granted a preliminary injunction after considering the fact that the defendant had known of the potential for patent infringement for more than a year and yet had not instigated action to have the patent declared invalid.

Consequently, those looking for a freedom to operate in Australia, and recognizing they have some potential to be recipients of a preliminary injunction, need to decide whether they will instigate invalidity proceedings before they commence the allegedly infringing conduct. This could be done by way of a re-examination application to IP Australia or a court application to have the patent declared invalid.

recOvering cOsts and fees in UnjUstified LawsUits

Australian courts have confirmed the viability of bringing an application to restrain unjustified threats, where appropriate. In Uniline Australia Ltd. v. SBriggs Pty. Ltd. [2009] FCA 222, where we acted for the successful applicant, the court issued a declaration of non-infringement and further ordered the defendant to pay the recoverable costs, including indemnity costs (e.g., attorneys’ fees) for the trial.

Australian courts typically award at least a portion of costs to the prevailing party following the dispositive event.

In sum, with its clear and reliable processes, the land down under is an exciting forum for obtaining and enforcing patents.

Tony Conaghan is a partner in the Brisbane office of DLA Phillips Fox (a member of the DLA Piper Group). He is the IPT Litigation practice group leader for Australia and New Zealand and the office managing partner for the Brisbane office. He focuses on litigation and counseling involving IP, IT and franchising. Reach him at tony.conaghan@dlaphillipsfox.com.

technologies. Id. at 3. Appellants alleged that Netgear infringed the patents by implementing wireless networking protocols for sending and receiving messages between a base station and a mobile station. The infringement allegations implicated two standards: the Institute of Electrical and Electronics Engineers 802.11 2007 Standard (802.11) and the Wi-Fi Alliance Wireless Multi-Media Specification, Version 1.1 (WMM). Id. The appellants were part of a licensing pool purporting to include patents that any manufacturer of 802.11 and WMM compliant products must license. Id.

WHEN DOES COMPLYING WITH A STANDARD MEAN INfRINGING?

At the district court, the plaintiffs’ motion for summary judgment argued that by simply complying with the standard, Netgear infringed the asserted claims. In denying the motion, the district court found that the plaintiffs must provide evidence of infringement related to each accused product. Fujitsu Ltd. v. Netgear, Inc., No. 07-CV-0710, 2009 WL 36636, at *1 (W.D. Wis. Jan. 6, 2009). Subsequently, the district court denied the plaintiffs’ additional motions for summary judgment of infringement and granted Netgear’s cross motion for summary judgment of noninfringement. Fujitsu Ltd. v. Netgear, Inc., No. 07-CV-0710, 2009 WL 3047616, at *1 (W.D. Wis. Sept. 18, 2009). On appeal, the plaintiffs challenged the district court’s claim construction and its summary judgment rulings.

Netgear asked the Federal Circuit to establish a rule prohibiting the use of industry standards in assessing infringement, arguing that adopting a “claim to standard” comparison in place of a “claim to accused product” comparison would lead to an “automatic conclusion of infringement against all future accused infringers.” Fujitsu, slip op. at 6-7. The Association of Corporate Counsel

(ACC) expressed similar concerns in its amicus brief, stating:

■ Using an industry standard as a proxy for infringement is overinclusive – there can be a “significant gulf” between a technical standards document and how the technology is implemented

■ Many standard provisions are optional – a device can comply without actually practicing a particular requirement, and

■ As with the accused Netgear products, many users configure purchased equipment so it is never used in compliance with a standard’s technical requirements

In contrast, Philips asserted that a “claim to standard” analysis would be more efficient for the courts and would reduce the fact-finding burden.

LANDMARK DECISION?

In its September decision, the Federal Circuit substantially “split the baby.” On one hand, the court established new precedent, conclusively holding “that a district court may rely on an industry standard in analyzing infringement…If a court determines that all implementations of a standard infringe the claims of a patent, then it would be a waste of judicial resources to separately analyze every accused product that undisputedly practices the standard.” Fujitsu Ltd., slip op. at 8. On the other hand, the court gave credence to the concerns expressed by the ACC, recognizing that many times an industry standard does not provide “the specificity required to establish that practicing that standard would always result in infringement.” Id. Other times, “the relevant standard section is optional, and standards compliance alone would not establish that the accused infringer chooses to implement the optional section.” Id. at 8-9. In these situations, the court held that patent owners must compare

CLAIM To STANdARd: SIMPLIFYING PATENT INFRINGEMENT ANALYSIS?

04 | Intellectual Property and Technology News

By nicholas g. Papastavros and Melissa reinckens

In a recent opinion impacting a broad range of industries, the Federal Circuit addressed head-on the role that standards play in patent infringement analysis. In Fujitsu Ltd. v. Netgear, Inc.,1 the Federal Circuit held that “a district court may rely on an industry standard in analyzing infringement” instead of requiring proof of infringement for each individually accused device.

As quickly as the court established new precedent, however, it softened its impact,

stating that “[o]nly in the situation where a patent covers every possible implementation of a standard will it be enough to prove infringement by showing standard compliance.” Id. at 9. So while the decision crystallizes the role standards play in assessing infringement, the Federal Circuit stopped short of a blockbuster ruling.

Three appellants – U.S. Philips Corporation, Fujitsu Limited and LG Electronics, Inc. – asserted claims against Netgear based on individual patents. Each patent at issue claims a different feature of wireless communications

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By hajime Iwaki, Matthew Dougherty and Keiji nasuda

Companies that have licensed or plan to license Japanese patents should be mindful of Japan’s 2009 Amendment to its Patent Law, proffering greater rights to licensees of patents and patent applications.

bEfORE THE AMENDMENT

Prior to the Amendment, patent owners were required to register exclusive licenses (senyou-jisshiken) with the Japan Patent office for the licenses to be effective. for non-exclusive licenses (tsujou-jisshiken), registration was optional. however, if a non-exclusive license was not registered, a licensee could face the loss of considerable rights, such as its ability to assert its license rights against a third party if the licensor sold the patent to another entity. however, registration required extensive disclosures, raising concerns among potential applicants that they might reveal business secrets. these disclosures were the primary reason non-exclusive licenses often were not registered.

Additionally, it was not possible to register exclusive or non-exclusive licenses of pending patent applications. thus, licensees of pending patent applications also faced the potential loss of rights.

AMENDMENT INTRODUCES PROvISIONAL LICENSES

to protect licensees while the patent applications are pending, the Amendment introduces provisional licenses for both exclusive (kari-senyou-jisshiken) and non-exclusive licenses

(kari-tsujou-jisshiken). Under the provisional licensing system, both types of licensees can file for a provisional license before the underlying patent is granted, thereby protecting their license rights. once the underlying patent is granted, the Amendment deems the provisional license extinguished, and an ordinary license (exclusive or non-exclusive) established. A provisional license holder is protected even if the underlying patent application is transferred in connection with a business transfer, and a provisional license cannot be terminated by a bankruptcy trustee.

the Japan Patent office accepts applications for provisional licenses online; approval takes 10 business days; and the cost is ¥15,000 (about Us$180) per license application.

RELAxED DISCLOSURE REqUIREMENTS

In response to concerns that the previous disclosure requirements risked exposing business secrets, the Amendment has set boundaries on the information that must be disclosed during the process. Under the Amendment, the only required public disclosure is the licensor’s name and the patent number. other information, such as the license scope and license fees, is not made available to the general public. however, the Patent office will disclose the name of the licensee and the scope of the license to parties who have an interest in the license (e.g., bankruptcy trustees).

POSSIbLE fUTURE AMENDMENTS

the Japan Patent office expects an increase in licensing of other

companies’ patents, especially for core technologies, due to promotion of production modules for invention of new products, patent pools and open innovation. Under these circumstances, patent license protection is crucial.

Currently, registration with the Japan Patent office is still required for a non-exclusive licensee to assert license rights against third parties. the Japan Patent office is considering a proposal to implement an automatic perfection system for non-exclusive licenses, similar to the approach now in place in the Us and germany. Under an automatic perfection system, non-exclusive license holders need only certify the existence of a license agreement to assert their license rights against third parties (i.e., no registration is required). this proposal would certainly make it easier for non-exclusive licensees to assert their rights.

CONCLUSION

Companies that have licensed or are considering licensing Japanese patents or patent applications should be aware of Japanese registration requirements and the possible impact of failing to register their licenses with the Japanese Patent office, as well as the option of applying for provisional licenses to protect license rights in patent applications.

hajime Iwaki is a partner in dLA Piper’s Tokyo office. he focuses on corporate transactions, including M&A and corporate restructuring, and regularly counsels clients in copyright, licensing, cyberspace and privacy protection law. Reach him at hajime.iwaki@dlapiper.com.

Matthew dougherty, an associate in dLA Piper’s Tokyo office, focuses his practice on corporate law. You may reach him at matthew.dougherty@dlapiper.com.

Keiji Nasuda is an associate in dLA Piper’s Tokyo office, focusing his practice on corporate law. Reach him at keiji.nasuda@dlapiper.com.

patent claims to accused products or prove the accused products implement relevant optional standards sections. Id.

As to Philips’ infringement claim, the court concluded that the relevant patent covered optional “fragmentation” portions of the standard and that a more detailed infringement assessment was required to determine whether the accused technology fell within the ambit of the patent.

The impact of Fujitsu will best be observed retrospectively. From a plaintiff’s point of view, in the right case, the difficulty and cost of proving infringement could substantially decrease. Instead of establishing that accused products satisfy the “all elements” test, a patent owner could simply point to the standard. At the same time, however, it is uncertain how often the industry standard will be specific enough to establish that practicing that standard would always result in infringement or that the relevant section of the standard is mandatory. Both patent holders and implementers of standardized technology need to take heed of this new precedent because it has the potential to simplify complicated and prohibitively expensive patent cases.

Nicholas Papastavros is a partner in dLA Piper’s Patent Litigation group in Boston. he focuses on technology-related litigation and licensing matters. he can be reached at nick.papastavros@dlapiper.com.

Melissa Reinckens is an associate in dLA Piper’s Trademark, Copyright and Media group in New York. She focuses on intellectual property litigation and counseling. Reach her at melissa.reinckens@dlapiper.com.

1. No. 2010-1045, slip op. (Fed. Cir. Sept. 20, 2010).

IPT: How has your life changed since you became Chief Judge?

Rader: What has impressed me the most is the support and unrivaled dedication that I have received from my colleagues. To have people like Circuit Judge Newman, who is a legend in our field, offer to help in any way. Or to have former Chief Judge Danny Friedman make similar offers, even at the age of 94, is touching. I realize this is an institution blessed with very talented judges, and I am awed at what the Federal Circuit is and can become.

IPT: What is your favorite thing about your new chambers?

Rader: The view is sensational! Also, we have rearranged the chambers to accommodate the vast number of guests the Court receives. In recent months, many of those guests have been international guests. That reflects the importance the Federal Circuit has in the international arena. The Federal Circuit has a distinct place in international jurisprudence. Court delegations and officials from other countries see the importance of visiting here and

learning more from us. And we have the same obligation to learn more from them.

IPT: You have presided over several district court trials as a visiting judge. What did you learn?

Rader: Those trials have been some of the most important experiences for my work as an appellate judge. I have come to understand that narrowing issues and putting together a decent, comprehensible record is an enormous challenge. Presiding over trials as a visiting judge gives me an understanding of that trial process. Constantly ruling on motions is another challenge that most appellate judges do not have to confront. It has made me a better appellate judge.

IPT: Have you encouraged other Federal Circuit judges to try cases as visiting judges?

Rader: Yes. I am, at present, arranging similar opportunities for my colleagues. I hope they will take advantage of these opportunities to obtain the same educational experience that I have profited so much from.

RANdALL R. RAdER ChIef JUDge of the Us CoUrt of APPeALs for the feDerAL CIrCUIt on hIs new roLe, hIs VIsIon AnD MUsIC

AN INTERvIEW WITH THE HONORAbLE

on november 18, 2010, the day before his Portrait Presentation, Chief Judge randall rader shared his candid thoughts about his plans for the federal Circuit with his former clerk, DLA Piper associate Laura robinson, and erin gibson, another DLA Piper associate, who tried a case before him when he served as a visiting judge in the northern District of new York.

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IPT: The Federal Circuit has had its own visiting judges in the past. Will that continue?

Rader: Yes, Judge Ron Whyte from the Northern District of California will be sitting with the Federal Circuit next month. He is among the best patent trial judges in the world. He will bring a vast amount of expertise and insight to our jurisprudence. We have three vacancies on the Court at the moment, which is one fourth of our judgeships. Judge Whyte will help us, and I think we will have another visiting judge following him a month or two later.

IPT: If you could give district court judges one instruction, what would you tell them?

Rader: I might tell them that patent litigation is really no different from any other form of complex civil litigation, such as complex antitrust, copyright, or contract cases. Any of those types of cases can delve into difficult legal and subject matter. The secret is to immerse yourself in the subject matter, in a patent case the technology, and with some learning it begins to take on some dimensions that can be managed.

IPT: Earlier this year, we interviewed David Kappos, Director of the PTO. Could you tell us about your interactions with the PTO?

Rader: Yes. I interact quite closely with the PTO. Deputy Director Sharon Barner was here yesterday during my meeting with the European Patent Organisation President. Commissioner of Patents Bob Stoll called me twice last week to discuss issues as well. Director Kappos is a very close friend, and we recently met about the Federal Circuit’s upcoming conference in Tokyo. Director Kappos sees the value of the conference for his international programs.

IPT: Can you tell us more about the Federal Circuit’s plans in Tokyo?

Rader: In May 2011, six Federal Circuit judges will travel to Japan for a joint judicial conference with the judges of the Tokyo IP High Court. For two days, the judges will join panels of company experts and attorneys for a discussion before an audience of hundreds, largely from Japan. Judges Gajarsa, Linn, Dyk, Prost, and Moore will join me in Tokyo from the Federal Circuit.

IPT: What is the purpose of the Tokyo conference and your outreach in Asia overall?

Rader: I have a vision of an international standard of judicial performance, where judges recognize that we cannot have widely divergent standards and results in similar cases, or international business will be inhibited by the legal system rather than facilitated by the legal system. A key to that is communication, as I have observed in my interactions with judges in Europe in the past 10 years. As we have talked to each other and have become friends, we have consulted each other’s jurisprudence as well. In some instances that has been beneficial for development of the law and has brought European and US systems closer together. That is the grand vision of what we will do in Tokyo. The conference will be educational, for us all to learn from each other, and it broadens our understanding of the reach of what the Federal Circuit does.

IPT: In your opinion, does the work of the Federal Circuit impact international business?

Rader: Yes. International corporations – whether in Japan, China, Europe or elsewhere – are affected by the work of the Federal Circuit, and it helps for us to recognize that. Not that this understanding would directly impact the outcome of cases. We, of course, decide cases according to the facts and law before us. But when you have a vision of all the consequences of particular rulings, it may have some influence on how those rulings would be expressed.

IPT: What can you tell us about the Federal Circuit’s Advisory Council?

Rader: The Advisory Council has a statutory role to give the Court comments on its rules changes. Any changes in the Federal Circuit’s procedures or rules go first to the Advisory Council for comments, and then to a public comment period. I will use the Advisory Council in an expanded role to undertake objectives that will help the Federal Circuit with certain achievements as we move into a new era.

IPT: What achievements do you have in mind?

Rader: A major objective will be to involve the court more in international activities. I mentioned the program in Tokyo in May. Also, I met with representatives from the Supreme People’s Court of China and the Ministry of Commerce in China, and we started to outline a similar program for Beijing.

IPT: Will the Advisory Council help you to advance other goals?

Rader: I have two major goals. The first is tackling the great weakness of the American system – the expense of litigation – and particularly the expense of discovery. The Advisory Council meets today and will appoint a subcommittee that will devise some proposed rules to limit the cost of discovery. The Advisory Council also is undertaking an encouragement of district judges to inquire early into the value of cases, including by conducting a damages Daubert hearing. That might entail a cure period if an expert’s testimony is excluded upon a Daubert motion. In other words, it would allow litigants a chance to repair the expert testimony that the judge has thrown out.

“The Federal Circuit has a distinct place in international jurisprudence. Court delegations and officials from other countries see the importance of visiting here and learning more from us. And we have the same obligation to learn more from them.”

08 | Intellectual Property and Technology News

IPT: Many believe that Congressional patent reform efforts may slow or stop, given the recent turnover in Congress. Do you agree?

Rader: When Congress is in transition, as it is after this last election, its business tends to slow down. I cannot predict exactly what will happen. Congress may surprise me and enact something tomorrow. But I doubt it. Congress has higher priorities and a lot going on, and it may delay patent reform into the next Congress and perhaps beyond. I observe that the main topics of patent reform have been the subject of Federal Circuit jurisprudence in past years. There might not be the same need for Congressional patent reform that existed in past years.

IPT: What should in-house lawyers know about the Federal Circuit?

Rader: The Federal Circuit has a great impact on their work. I think they understand that. I think they understand that intellectual property is vital to any enterprise. I think they understand that trade is the future of any market. I also think they understand that principles of contract and antitrust underlie business relationships always. All of those issues find their way to the Federal Circuit. I do not think you can do a good job of advising your business, whether in-house or outside, without a clear understanding of the Federal Circuit.

IPT: You soon will be speaking in the Eastern District of Texas. Can you give us a preview?

Rader: The Eastern District of Texas has some great virtues. Its juries are magnificent. Its judges are intelligent and well schooled in patent law. I do have some concerns that patent litigation is becoming too centralized in a few districts that I will address. I have a few other comments that I will reserve for my speech in Texas.

IPT: Will you talk about procedure?

Rader: Yes. One of the things you know, and that Ms. Gibson knows perfectly well, is the need to ascertain early in litigation the value of that litigation with some kind of judicial inquiry into what is at stake. Then you can tailor the amount of procedure to give to a case according to its value to the litigants. All cases aren’t equal. I think the judiciary can help parties see the value of their case earlier and tailor procedure to match what is really at stake.

IPT: What else will you discuss?

Rader: I have six ideas for the Eastern District of Texas. By the way, idea number six is better restaurants in Marshall! But the first five are substantive, and I only gave you a peek. At least you can see that I have a desire for us to improve the system – improve the way we handle all forms of litigation, but particularly patent litigation.

IPT: What is your opinion of the increase in patent reexaminations and stays pending reexamination in district court cases?

Rader: I am a little troubled. One of the virtues of the US system is that we keep validity and infringement together. It prevents artful litigating – that you might argue in one forum that a patent is narrow enough to escape prior art and argue in another forum that a patent is broad enough to capture accused products. I like our American system that keeps that in one forum, as district courts do. As we migrate toward a nullity proceeding elsewhere, we lose some of the virtues of our system.

We also have inevitable delays. I think that is damaging to business as well. Business needs a quick and definitive decision one way or the other. To have to wait – first to go through reexamination, which is quite delayed at this point, and then wait at the other end for a trial – that is not the way our system is supposed to work.

IPT: Do you still have time for your favorite hobbies?

Rader: Tennis and music, yes! It is interesting that my band, and yes it is a rock band, is getting a few invitations to play at events. Of course, these invitations are mostly for patent law conferences. So I have to question whether the invitations are based on our musical ability – or our providing a different form of entertainment!

IPT: How often do you win in tennis?

Rader: Always! (Quietly: That isn’t true.)

IPT: You grew up in Oregon and are a big fan of the Oregon Ducks. How do you like the Ducks’ chances for a National Championship in football this year?

Rader: I am so glad you asked that question! Other than our excellent track and field teams, it has been so many years since Oregon has had any vastly successful athletic program. We are basking in glory at the moment. Sadly in sports, pride often goes before the fall. But we have to hope that they make it to the National Championship.

Erin Gibson is an associate in dLA Piper’s Patent Litigation group, based in San diego. She has tried six patent cases in the International Trade Commission and united States district Courts, including a trial before Chief Judge Rader in the Northern district of New York. Reach her at erin.gibson@dlapiper.com.

Laura Robinson is an associate in dLA Piper’s Patent Litigation group, based in Washington, dC. Laura focuses her practice on patent litigation and counseling. Previously, she clerked for Chief Judge Rader at the Court of Appeals for the Federal Circuit. Reach her at laura.robinson@dlapiper.com.

“I have a vision of an international standard of judicial performance, where judges recognize that we cannot have widely divergent standards and results in similar cases, or international business will be inhibited by the legal system rather than facilitated by the legal system.”

AN INTERvIEW WITH THE HONORAbLE RANDALL R. RADER

www.dlapiper.com/ip_global  |  09

Back when products and services were sold via brick and mortar stores, only large corporations or conglomerates seriously considered seeking global protection for valued brand names. Now, however, in the age of the Internet and Cloud, goods and services can be delivered virtually anywhere. Seeking trademark protection on a global basis is often a logical option for even a small company. Yet the question inevitably arises: “How do I accomplish this in an efficient, cost-effective manner?”

In general, for countries never part of the British Commonwealth, trademark rights are attained only by holding a trademark registration, a process that can be time consuming and expensive. Unless the mark has become famous, or one can demonstrate extensive use, failing to hold a trademark registration can open a mark to being challenged or held hostage by another party. It is not unheard of for foreign partners to seek registration of one’s mark to “protect” it from potential infringers. But having one’s mark owned by another party is never a good idea: subsequent to termination, former partners have successfully sued the real trademark owner for infringement. All companies, especially those conducting business in Asia, Latin America and Europe, would be wise to carefully balance the risks of failing to protect marks via registration versus the costs of doing so.

Pursuing Trademark regisTraTions in numerous JurisdicTions

Changes in the international landscape over the past 15 years help to craft a filing strategy. The

1993 formation of the European Union – a single market for the free movement of people, goods, services and capital – was the first step in creating a more accommodating structure for international filings. The EU’s Community Trademark (CTM) system allows unified trademark registration covering all EU members,. A single CTM application can result in issuance of a registration that is fully enforceable not only in each of the 27 current EU member states, but also in its future members. Before the CTM was created, a company would have to file in each individual country to obtain the same level of protection throughout Europe. Because Switzerland, Norway and Iceland are not EU members, individual country applications must still be filed in those jurisdictions.

The most significant development in international filing was the November 2003 accession of the US to the Madrid Protocol, a treaty whereby trademark registration in member countries is initiated by filing through the World Intellectual Property Organization (WIPO). The process is simple: an applicant submits its application to WIPO, which reviews it for filing requirement compliance, then forwards the application to those trademark offices the applicant designates. Currently, the Madrid Protocol covers 83 jurisdictions, with others joining all the time. The most recent member is Israel. Using the Madrid Protocol reduces the cost of filing, renewals and assignments because WIPO removes the need to hire local counsel in each country; instead, upon direction, WIPO notifies each affected national office. Local counsel is necessary only when an application is

rejected by a trademark office or when a third party challenges a mark’s registration.

While there are clear savings in using the Madrid Protocol system, there are also constraints. First, there must be a valid home application or registration forming the basis of the WIPO filing; second, that home registration must remain valid and outstanding for five years. If it is abandoned or cancelled before the five years elapse, the entire filing program can be compromised, requiring either abandonment or transformation of the mark into individual national applications.

Where should a global comPany File?

Clearly it makes sense to use the Community Trademark and Madrid Protocol systems in any filing program. A good rule of thumb is to follow the money. Jurisdictions should be categorized into Priority One, Two and Three filings. Priority One should encompass those jurisdictions where the company currently receives revenue and/or where it has offices and active business partners or distributors. Priority Two should include those countries into which the company intends to expand or where it may face serious piracy. Priority Three should include remaining countries where the company may do future business. Once priority lists are created, the company should determine how to phase filings, spreading out costs.

Another treaty, the Paris Convention, makes it possible to schedule Priority One filings over a six-month period dated from the home filing date, yet have all of these filings treated as having been filed on the same date as the home application.

Because many countries base trademark rights on filing dates, maximizing the use of the Paris Convention can result in according marks early rights dates without incurring the full cost of filing all at once. Rights to marks have been won or lost by as little as one day, so this approach can be quite valuable.

Any company operating on the Internet should seriously consider whether its brand names are being sufficiently protected. A strategy using the Community Trademark, Madrid Protocol system and Paris Convention should help ensure that filing programs are efficient and cost effective.

Allyn Taylor is a partner in DLA Piper’s Silicon Valley office. She concentrates on developing and managing global company trademark portfolios by means of domestic and international trademark clearance, prosecution and enforcement. Reach her at allyn.taylor@dlapiper.com.

PROTECTING YOUR BRAND ON A GLOBAL SCALE By Allyn Taylor

dLA Piper brings together more than 200 industry leaders, VCs and experts for its biannual Global Technology Leaders Summit in Silicon Valley

DLA Piper’s biannual global technology Leaders summit took a close look at the issues affecting the technology sector and its place in the world today.

the summit, held in october, featured keynote speeches by two prominent industry leaders – ned hooper, Chief strategy officer and senior VP at Cisco, and shane robison, Chief strategy and technology officer and executive VP at hP – as well as two distinguished former public servants, the honorable tom Daschle, former Us senator and current DLA Piper senior Policy Advisor, and the honorable william Cohen, former Us secretary of Defense and current Ceo of the Cohen group.

the prevailing tone of the summit was one of cautious optimism – the tech world and the general economy, many agreed, are growing at a steady pace.

ned hooper of Cisco focused on global connectivity, noting that the world is more connected than ever before: network traffic is growing at a torrid pace and the overwhelming majority of that traffic is now video content. significantly, he said, the demand for technology is now being driven primarily by the consumer market rather than the business enterprise market.

shane robison of hP highlighted global demand for mobile devices and cloud services. he noted that the populations of China, India and Latin America (led by Brazil) are fueling an explosion in consumer demand for mobile devices, connectivity and information. he discussed the convergence of cloud computing and mobile devices that allows consumers to access the cloud through their personal devices.

In a panel discussion moderated by terry o’Malley, DLA Piper’s Us Managing Partner, senator Daschle and secretary Cohen discussed many issues impacting the tech industry and the Us, including the mid-term elections, fiscal policy, immigration, the

growth of China and India and the competitive position of the Us in the world.

timely and engaging panel discussions, featuring numerous industry leaders, VCs, academics and DLA Piper lawyers, centered around cloud computing, renewable energy, new models for traditional media, strategies for managing innovation, global privacy and changes to the venture capital model.

WOMEN IN IP LAW

Judicial Patent reform: how the Courts are Beating Congress to the Punch

More than 150 lawyers representing

major tech companies in silicon Valley

attended DLA Piper’s fourth annual

women in IP Law CLe event in late

september. open to men and women,

the program showcases women as

leaders in the IP field.

this year’s panel discussion featured

three topics: patent damages and

the status of eMVr law; inequitable

conduct and the federal Circuit’s

en banc review of TheraSense; and

the supreme Court Bilski decision’s

impact on different industry

sectors. DLA Piper thanks our loyal

co-sponsors, the Association of

Corporate Counsel, san francisco

Bay Area Chapter, which won

ACC’s Chapter of the Year 2010,

and women in Licensing Bay

Area (wILBA).

speaking were Julie Ann stephenson,

Associate general Counsel and Chief

IP Counsel, synopsys, Inc.; susan

Marsch, former senior Vice President,

general Counsel and Chief ethics

officer, Utstarcom, Inc.; Ambreen

salters, Partner, Intellectual Property,

stoneturn group; and DLA Piper IPt

partners Kathryn riley (san Diego

and DC) and Christine Corbett

(silicon Valley).

L to R: David Yarnold, President and Ceo, Audubon (former executive editor, San Jose Mercury News); Lisa frazier, President and Ceo, the Bay Citizen; Krishna Bharat, Principal scientist, google, Creator of google news; Dan gillmor, Director, Knight Center for Digital Media entrepreneurship, Arizona state University; Columnist, salon.com; Katie tamony, editor in Chief, Sunset magazine.

L to R: senator tom Daschle speaks with C.s. Park, Director, and stephen J. Luczo, Chairman of the Board, Ceo and President – seagate technology.

shane robison of hP delivers plenary session address.

L to R: terry o’Malley moderates a discussion between senator tom Daschle and secretary william Cohen regarding washington’s impact on silicon Valley.

TOP TECH LEADERS CONvENE AT DLA PIPER SUMMIT

Panelists (L to R): Ambreen salters, stoneturn group; Kathryn riley and Christine Corbett, DLA Piper; susan Marsch, formerly Utstarcom; Julie stephenson, synopsys, Inc.

ECONOMIC AND TECHNOLOGY INDUSTRY OUTLOOK

Sales growth forecast

In a survey of attendees and invitees, 72 percent of tech companies reported they expect sales increases in the next six to twelve months, with small tech companies expecting the strongest growth.

Will the economy undergo a double-dip recession or will we see a sustained economic recovery?

A strong majority of respondents predicted an economic recovery, while a minority predicted a double-dip recession. the strong agreement that a forthcoming recovery will be weak but sustained reflects the guarded optimism of the sector.

Which of the following sectors presents the most promising growth opportunities for the technology industry?

the largest cited area of concern in Cloud Computing is security. Close to half of all respondents (49 percent) to that survey believed that security concerns are the biggest challenge to broad adoption of Cloud Computing.

Please visit www.dlapipertechleaderssummit.com for webcasts of the keynote speeches, more photos and the full results of our tech survey and other information from the summit.

www.dlapiper.com/ip_global | 11

TWO CUTTING-EDGE PANELS AT DLA PIPER

In partnership with the german

American Chamber of Commerce

and friends of Bucerius Law school,

DLA Piper hosted two lively CLe

events on cutting-edge IP issues.

“the entertainment Industry and the

new technology Paradigm,” held in

Los Angeles in november, looked at

challenges new technologies present

to both the entertainment industry

and the law, how these challenges

are being met and what lies ahead.

Moderated by Dana Beldiman, board

member for American friends of

Bucerius and partner at Carroll

Burdick & McDonogh, the event

featured speakers Julia hohl, Counsel,

Legal & Business Affairs, warner Bros.

International television Distribution

Inc., and J.D. harriman, Partner,

DLA Piper.

the June 2010 silicon Valley panel,

“software Patenting: Perspectives

from the Us and europe,” discussed

the evolution of software patenting

and compared europe’s technical effect

requirement with the Us machine-

or-transformation test. Moderated

by BJ watrous, Vice President and

Associate general Counsel of hP’s

Intellectual Property Licensing group,

the panel featured speakers Julia

schoenbohm, David Alberti and John

Kinton (DLA Piper Patent Litigation

partners from frankfurt, silicon Valley

and san Diego).

resPonses PerCentAge of totAL resPonDents

expect strong increase 16%

expect moderate increase 55%

expect no change 23%

expect moderate decrease 5%

expect strong decrease 0%

resPonses PerCentAge of totAL resPonDents*

Double-dip recession 13%

weak but sustained economic recovery 79%

sustained economic recovery 5%

L to R: BJ watrous (hP), moderator, and Julia schoenbohm (DLA Piper, germany), panelist, speak at silicon Valley event.

* CorreCtIon: the numbers in this graph have been updated to correct information that appears in the print edition of this issue. we apologize for the error.

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