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Maximizing Value and Minimizing Risk: Three New Intellectual Property Developments That Will Affect Your Business in 2007 . Corporate Counsel Series February 2007. “One Of The Most Important Intellectual Property Cases In A Generation” Pending Supreme Court Patent Case On Obviousness.
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Corporate Counsel Series
Challenge to the Federal Circuit’s“Teaching-Suggestion-Motivation” (TSM) Test
Presented by Rick Fladung,Partner, Strasburger & Price, LLP
Supreme Court Scraps Federal Circuits Patentability Test: 100,000 Declaratory Judgment Patent Cases Filed
July 30, 2007
Dallas Morning News
Texas Instrument Announces The Value Of Its Patent Portfolio Decreased 50% In View Of New Supreme Court Patentability Test
June 30, 2007
Wall Street Journal
Surge In Patent Licensees Filing Patent Declaratory Judgment Lawsuits To Test Licensed Patents While Protected By License Agreement
Using 1960’s to 1980’s Supreme Court precedent, patents will be harder to obtain from U.S. Patent Office and harder to uphold in litigation.
Federal Circuit’s “teaching-suggestion-motivation” test (not found in statute or Supreme Court’s decisions) has been described a “one-way rachet in favor of patentability”.
MedImmune v. Genentech ― 8-1 Supreme Court decision issued January 9, 2007.
Patent licensee’s can now challenge the scope, infringement, validity and enforceability of a patent licensed from a third party even when the licensee continues to pay royalties on the license.
Licensor Attack Thwarted
U.S. PatentProceedings In The Trial Court And The Federal Circuit
“Three imponderable nouns”
“I would say its [Federal Circuit’s] test is meaningless”
“…this is gobbledygook…”
“Federal Circuit jargon that is inflexible”.
“…it’s worse than meaningless because it complicates the inquiry rather than focusing on the statute.”
“In hindsight everybody says, I could of thought of that; and you need – if you don’t have the sort of constraint that their test imposes, its going to be too easy to say that everything was obvious.”
“And, to tip it over now is going to produce chaos. What’s the answer to that?”
Presented by Alan Thiele,Partner, Strasburger & Price, LLP
1. Text of the law itself
2. History of the language in the law
5. Impact on a party of not ruling as argued
6. Impact on those similarly situated
WHO – INSIDE/OUTSIDE COUNSEL and I.P. MANAGERS
WHAT – SCREEN PORTFOLIO
WHERE – INTERNAL/EXTERNAL
WHEN – NEXT MAJOR FINANCIAL STATEMENT (10k/10Q)
WHY – SARBOX PENALTIES
HOW MUCH – HAS VALUE BEEN AFFECTED
STEP 1. Recognize/evaluate ideas
STEP 2. Protection plan
STEP 3. Recognize changes in value
Comm’l Products or Services
Future Products or Services
Products or Services
or Business Methods
Presented by Charles M. Hosch,Partner, Strasburger & Price, LLP
(automated “tools” – plug in URL, engine suggests keywords; or personalized advice)
communicate the mark to the public is [like] “an individual’s private thoughts about a trademark”
(e.g., tortious interference)