latest intellectual property issues affecting high tech companies
DESCRIPTION
On Monday, September 24, Knobbe Martens hosted an IP Impact 2012 seminar at the Four Seasons – Palo Alto. Over 85 attendees enjoyed a special presentation by keynote speaker, Mr. Raymond Chen, Deputy General Counsel and Solicitor at the USPTO. Following a short Q&A session with Mr. Chen, Knobbe Martens attorneys Ron Schoenbam and Amy Chun presented on "Latest IP Issues Affecting High-Tech Companies", one of three presentations given during the seminar. View this presentation to learn what hightech companies should be doing to implement the right IP strategy at your company.TRANSCRIPT
Latest IP Issues Affecting High-Tech Companies
Ron Schoenbaum and Amy Chun
September 24, 2012
IP Impact – Silicon Valley
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Apple. v. Samsung
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Apple Design Pat. D604,305
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Apple Design Pat. D604,305
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Apple Design Pat. D593,087
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Apple’s “Slide to Unlock” patent
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Apple Pat. 5,946,647
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Apple’s “word suggestions” patent
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Apple v. Samsung
A Patent Procurement Perspective
A Litigation Perspective
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Divided Infringement
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Divided Infringement - Akamai & McKesson
Akamai v. Limelight / McKesson v. Epic Systems
Method Claims:
Multiple steps where the steps were performed by different entities
Types of Entities:
Server/Content Providers
Healthcare Providers/Patients
EXAMPLE
Method Claim
Entity A Entity B
Step 1
Step 2
Step 3
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Divided Infringement - Direct Infringement
Requirements:
Infringer performs ALL of the steps
or
Agency relationship between the entities
Example:
No direct infringement by Entity A
No direct infringement by Entity B
EXAMPLE
Method Claim
Entity A Entity B
Step 1
Step 2
Step 3
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Divided Infringement - Induced Infringement
Requirements:
Knowledge of the patent
Induced the performance of the steps
All steps must be performed (but not necessarily by a single entity)
Example:
Infringement if induced Entity A and Entity B to perform the 3 steps
Infringement by Entity A if induced Entity B to perform Step 2
EXAMPLE
Method Claim
Entity A Entity B
Step 1
Step 2
Step 3
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Divided Infringement - Akamai & McKesson
A Litigation Perspective
A Patent Procurement Perspective
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Patent-Eligible Subject Matter
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Patent-Eligible Subject Matter
Noteworthy Decisions:
• Bilski
• Mayo v. Prometheus
• CLS Bank v. Alice
• Bancorp v. Sun Life
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Patent-Eligible Subject Matter
Where do we stand?
• Period of great uncertainty, especially for computer-implemented business methods.
• USPTO and courts apply different standards.
• Federal Circuit decisions very panel-dependent.
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Patent-Eligible Subject Matter
A Litigation Perspective
A Patent Procurement Perspective
Ron Schoenbaum and Amy Chun [email protected]