March 18, 2014

Last Chance to Register: Managing IP US Patent Forum March 25, 2014 in Washington, D.C.

There is still time to register for Managing IP's third annual US Patent Forum on March 25 at the Willard InterContinental, Washington D.C.

** Free for in-house patent counsel, academics and R&D professionals **

Supported by AIPLA and Delaware IP Law Blog, the forum will provide you with:

• a guide to improving your company’s patent application process post-AIA;
• an evaluation of post-grant proceedings;
• an update on litigation planning and forum shopping in Europe; and
• the analysis of the recent standard essential patent (SEP) litigation between Apple and Samsung

Speakers include Judge Sharon Prost of the U.S. Court of Appeals for the Federal Circuit and Lead Judge Michael Tierney of the USPTO Patent Trial and Appeal Board.

See the agenda below for a full list of presenters. Click HERE to register online, or by emailing alicia.sprott@legalmediagroup.com.

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January 30, 2014

Managing IP US Patent Forum - March 25, 2014

Managing IP invites you to the third annual US Patent Forum on March 25 at the Willard InterContinental, Washington D.C.
** Free for in-house patent counsel, academics and R&D professionals **

Supported by AIPLA and Delaware IP Law Blog, the forum will provide you with:

• a guide to improving your company’s patent application process post-AIA;
• an evaluation of post-grant proceedings;
• an update on litigation planning and forum shopping in Europe; and
• the analysis of the recent standard essential patent (SEP) litigation between Apple and Samsung

You will hear from:

• Michelle Lee, deputy under secretary of commerce for intellectual property and deputy director, USPTO
• Mark Guetlich, senior counsel, international policy & government affairs, USPTO
• Lisa McIntye, patent counsel, Google
• Denise Hickey, senior director, intellectual property strategy, AbbVie
• Jason Garbell, senior manager & senior patent attorney, Novozymes North America
• Joseph Contrera, patent counsel, Johns Hopkins Technology Transfer
• Vaishali Udupa, IP litigation counsel, Hewlett-Packard
• Adam Lerner, intellectual property manager, Qiagen
• Richard Rainey, executive counsel, IP litigation, GE
• Sherry Knowles, principal, Knowles Intellectual Property Strategies

You can view the agenda and register online HERE, or email msamra@euromoneyplc.com.

December 10, 2013

Supreme Court reiterates that a forum-selection clause should be “given controlling weight in all but the most exceptional cases.”

In Atlantic Marine Const. Co., Inc. v. U.S. Dist. Court for Western Dist. of Texas, 571 U. S. _ (2013), 2013 WL 6231157 (December 3, 2013), the Supreme Court not only reiterated that a valid forum selection clause must be given controlling weight, with rare exception - when considering a transfer motion under a 1404 analysis - but unamimously held that the analysis in those rare exceptions may give no weight to plaintiff's choice of forum and may only consider counterveiling public-interest factors. "When parties agree to a forum-selection clause, they waive the right to challenge the preselected forum as inconvenient or less convenient for themselves or their witnesses, or for their pursuit of the litigation. A court accordingly must deem the private-interest factors to weigh entirely in favor of the preselected forum."

Recognizing the applicability of Atlantic Marine to a forum selection clause in a patent license, yesterday the Supreme Court vacated and remanded a Federal Circuit decision refusing to enforce a forum-selection clause in an EDTX patent suit that, by the agreement, should have been filed in New York. See Broadcom Corporation v. USDC ED TX, et al., case number 12-1475.

Atlantic Marine settles a circuit split in authority. In the Third Circuit, guidelines for the applicability of a forum selection clause were established by Jumara v. State Farm Ins. Co., 55 F.3d 873, 883 (3d Cir.1995). Atlantic Marine, revises Jumara's guidance. It appears now that a forum selection clause is entitled to more than the "substantial consideration" - called for by Jumara - in a 1404 transfer analysis. It further appears that one may no longer rely on Jumara's reasoning that a forum selection clause is but "one facet of the convenience-of-the-parties consideration." Private-interest factors, as noted above, must now "weigh entirely in favor of the preselected forum."

June 24, 2013

Delaware IP Law Bloggers Comment on Supreme Court's Myriad Decision

Delaware IP Law Blog Author, Greg Brodzik, and Contributor, Jim Lennon, were invited by IPWatchdog.com to comment on the Supreme Court's recent decision in Association for Molecular Pathology, et al. v. Myriad Genetics, Inc., et al., 569 U.S. ___, on the scope of patent eligibility in the context of DNA discoveries. Follow this link to their post on IPWatchdog.com: Myriad: Positive Implications for Genetic Research, but Some Questions Remain Unanswered

June 14, 2013

Supreme Court: Mere isolation of naturally occurring DNA segment is not patent eligible. AMP v Myriad Genetics, 569 U.S. _ (June 13, 2013)

The U.S. Supreme Court’s much anticipated decision in Association for Molecular Pathology, et al. v. Myriad Genetics, Inc., et al., 569 U.S. ___, issued June 13, 2013. In short, the Supreme Court analyzed whether an isolated DNA sequence is patent eligible in light of the fundamental principle that laws of nature, natural phenomena, and abstract ideas are not patentable. The Supreme Court held that mere isolation of an otherwise naturally occuring genetic sequence of DNA is not patent eligible but that a non-naturally occuring DNA sequence may be subject matter eligible for patenting, so long as the other conditions for patenting are met (e.g., novelty, non-obviousness, written description).

While many divergent views are forming on the impact this decision will have on the biotech industry, its impact on patent litigation in Delaware is broadly predictable. In appropriate circumstances, new patent validity challenges can be anticipated against DNA sequence claims asserted in this District and new litigation may flow from the entry of several new competitors expected to offer genentic tests for various diagnostics, some of which will undoubtedly be the subject of a patent controversy within Delaware’s jurisdiction.

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February 26, 2013

Managing IP's U.S. Patent Forum, March 19, 2013 in Washington D.C.

Dear Colleague,

Managing IP, in association with Delaware IP Law Blog, invites you to attend the second annual US Patent Forum March 19, 2013 at the Willard InterContinental in Washington D.C. www.managingip.com/USPatentForum2013

Free for in-house patent counsel, academics and R&D professionals.

One year on from the AIA, we will assess the patent landscape in the United States and look at strategies to achieve maximum value from your patent portfolio.

On the agenda:

• Two keynote addresses by USPTO’s Teresa Stanek Rea and WIPO’s James Pooley
• AIA and NPEs: one year on
• Lessons from Canadian reforms
• Monetization of patents: strategies for deriving maximum value from your patent portfolio
• Life sciences & ITC industries focus
• Doing business in China: how to ensure your patented assets in China are making you money

Speakers:

• James Pooley, deputy director general for innovation and technology, World Intellectual Property Organization
• Teresa Stanek Rea, acting director general, United States Patent & Trademark Office
• Jim Crowne, director of legal affairs, AIPLA
• Paul R Michel, Chief Circuit Judge (retired)
• Vanessa Bailey, IPR litigation, Nokia Siemens Networks
• Richard Rainey, executive counsel and IP litigation, GE
• David L Marcus, VP, deputy general counsel, Comcast Cable Communications
• Joseph G Contrera, patent counsel, Johns Hopkins Technology Transfer
• Andrew Hirsch, general counsel, Fuelcor
• Heather Boussios, senior intellectual property counsel, Emergent BioSolutions
• Henry Hadad, VP, deputy general counsel, IP, Bristol-Myers Squibb Company
• Vaishali Udupa, IP litigation counsel, Hewlett-Packard
• Camille-Remy Bogliolo, lawyer, international legal affairs, European Patent Office
• Raymond Niro, senior partner, Niro Haller & Niro
• Sherry Knowles, principal, Knowles Intellectual Property Strategies

For more details, visit http://www.managingip.com/stub.aspx?stubid=20311

Testimonials:

"Excellent overviews of AIA from those who wrote it, those who will implement it, and those who must live with it" - Graham Douglas, IDDEX (2012)

"Assessments and points of view you won't find any place else" - Jim Farmer, Georgetown University (2012)


You will network with:

Accuray Inc, Americas Bankers Association, Boeing Company, CIENA, Department of Homeland Security, Eldelman, El Cap Ventures, Eli Lilly & Company, Embassy of Canada, Emergent BioSolutions, Ex-Nokia, George Washington University, Google, IC2 Institute - University of Texas, Intel, Intellectual Property Owners Association, INVISTA, IPXI, JDSU Corporation, JLG Industries, Johns Hopkins Technology Transfer, Johns Hopkins University, Magna International, Nestle, Nokia Siemens Networks, Palo Alto Research Center, Panasonic, Personalized Media Communications, Privaris, Sharp, Siemens Enterprise Communications, Supernus Pharmaceuticals, Tredegar Corporation, USPTO, US International Trade Commission, US International Trade Commission, Widener Law School and many more.
________________________________________
EASY WAYS TO REGISTER:
Register online: http://www.euromoneysecure.com/orders/gen/start.asp?cIndex=1731
Email: mfabri@euromoneyplc.com
________________________________________

We look forward to meeting you on March 19.

Kind regards,

James Nurton
Managing editor
www.managingip.com

Pilar Kraman
Managing editor
www.delawareiplaw.com

Continue reading "Managing IP's U.S. Patent Forum, March 19, 2013 in Washington D.C." »

September 27, 2012

Trends in Delaware post-Twombly

Managing editor and co-author of Delaware IP Law Blog, Pilar G. Kraman, is a featured author in the latest issue of Managing IP’s, Intellectual Property Focus. This special “Americas IP Focus 2012” showcases commentary and analysis from IP lawyers throughout the Western Hemisphere, and is distributed to IP Owners and IP lawyers around the world. The publication will also be distributed to attendees of major IP conferences in October including: the AIPLA annual meeting; the LES US & Can annual meeting; and the AIPPI world congress. You can read Pilar’s article below, “Trends in Delaware post-Twombly,” which discusses recent developments in the District of Delaware regarding the sufficiency of pleadings alleging indirect and direct patent infringement.

Continue reading "Trends in Delaware post-Twombly" »

March 9, 2012

Managing IP's US Patent Reform Forum, Washington, D.C. March 27, 2012

Dear Colleague,

As a supporter of the event, Delaware IP Law Blog invites you to attend the US Patent Reform Forum on March 27th in Washington D.C.

** Limited complimentary places left **

New speaker additions at the forum include Douglas Graham, executive director of IDDEX. Douglas is a fervent IP expert and author of books and many articles on Intellectual Assets. He also has had three patents granted and has two further patents pending. Douglas will be giving insight into the ways in which SME's will be affected by the reforms, confronting an issue which often doesn't see much coverage but which will affect many business owners and their counsel.

You will also be hearing from Teresa Stanek Rea, deputy under secretary of commerce for intellectual property and deputy director of the USPTO. Teresa will be giving the rule making overview and delivering perspective of the USPTO in a discussion which is to be chaired by the AIPLA's Todd Dickinson.

The forum’s exciting finale will consist of a debate between Daniel McCurdy and Raymond P. Niro who will be discussing the contentious topic of NPEs or Patent Trolls. Going head to head and engaging directly with this matter from opposing perspectives, these charismatic speakers will provide a unique opportunity to hear from both sides of the fence in the wake of the AIA.

Dan McCurdy, CEO of PatentFreedom, is devoted to the protection of companies against NPEs. His conviction in this defence against the trolls passionate and Dan plays a key role in collating and sharing relevant intelligence with the ‘operating companies’ which he strives to defend.

Conversely, Raymond Niro is known to some as an ‘Original Troll’. Raymond is devoted with equal fervour to the advancement of the NPE cause and can speak with charm and eloquence on the controversial stance which he takes. Together these men will offer a unique opportunity to scrutinise the issues at stake allowing time for audience participation and discussion with the floor also. This is an opportunity not to be missed.

Other speakers include:

• David Kappos, undersecretary of commerce for intellectual property and director, USPTO
• Judge Paul Michel
• Gary Griswold, president and chief intellectual property counsel, 3M Innovative Properties Company and former chairman, 21st Century Patent Reform
• Bob Stoll, former commissioner, USPTO and partner, Drinker Biddle & Reath
• Robert Armitage, senior VP and general counsel, Eli Lilly
• Steven Wood, patent licensing associate, Brookhaven National Laboratory
• Phil Johnson, chief intellectual property counsel, Johnson & Johnson
• Sherry Knowles, principle, Knowles Intellectual Property Strategies
• David T. Beck, Patent Attorney, JDS Uniphase Corporation
• F. Scott Kieff, professor of law, George Washington University
• Brent Bellows, Knowles Intellectual Property Strategies
• Steven I. Weisburd, partner, Dickstein Shapiro
• Gene Quinn, president & founder, IPWatchdog, Inc

For more information about the agenda, please see the brochure here: http://www.managingip.com/pdfs/USPatentForum.pdf.

Easy ways to register
Visit www.managingip.com/USPatentforum2012
Email mfabri@euromoneyplc.com
Call +1 212 901 3828

* Please note that complimentary places are allocated on a first come, first served basis.

We look forward to meeting you on March 27th.

Kind regards,

James Nurton
Managing editor
www.managingip.com

Pilar Kraman
Managing editor
www.delawareiplaw.com

Continue reading "Managing IP's US Patent Reform Forum, Washington, D.C. March 27, 2012" »

December 9, 2011

District Court Adopts New Default Standards for E-Discovery and Access to Source Code

Yesterday, the District Court adopted new default standards, the Default Standard for Discovery, including Discovery of Electronically Stored Information ("ESI"), and the Default Standard for Access to Source code.

Default Standard for Discovery, Including Discovery of Electronically Stored Information

Default Standard for Access to Source Code

December 5, 2011

Recent Mandamus Rulings from the Federal Circuit in Delaware Cases

On December 2, 2011,the Federal Circuit granted a petition for a writ of mandamus reversing the District of Delaware’s denial of a motion to transfer venue. In re Link_A_Media Devices Corp., Misc. Doc. No. 990 (Fed. Cir. Dec. 2, 2011). The Court of Appeals ordered the District Court to transfer the case to the Northern District of California, finding that the exacting standard for a writ of mandamus had been satisfied.

In Marvell Int’l v. Link_A_Media Devices, C.A. No. 10-869-SLR (D. Del. June 8, 2011), a Bermuda plaintiff brought suit against a defendant incorporated in Delaware. The District Court denied defendant Link_A_Media Devices’ motion to transfer. The court found that transfer was not warranted in part because “the plaintiff’s choice of forum is still of paramount consideration.” Id. at 3. The court also stated that “because [the defendant] is a Delaware corporation, it has no reason to complain about being sued in Delaware” and noted that it was not “persuaded by [the defendant’s] arguments regarding convenience.” Id. at 4-5. (Read more about Judge Robinson’s denial of the motion to transfer here.) The Federal Circuit, however, granted mandamus and ordered transfer. The Federal Circuit specifically held that “the district court placed far too much weight on the plaintiff’s choice of forum.” In re Link_A_Media Devices Corp., Misc. Doc. No. 990, at 4 (Fed. Cir. Dec. 2, 2011). The Federal Circuit also found that the district court’s “heavy reliance on the fact that [the defendant] was incorporated in Delaware was similarly inappropriate” and that the “district court also erred when it found that consideration of the public interest factors did not favor either forum.” Id. at 5-6.

Earlier this year, the Federal Circuit denied a petition for a writ of mandamus in In re Xoft, Inc., Misc. Doc. No. 983 (Fed. Cir. Aug. 19, 2011). In that case, New York and German plaintiffs brought suit against a defendant incorporated in Delaware. Judge Stark accepted Magistrate Judge Thynge’s report recommending that defendant Xoft’s motion to transfer to the Northern District of California be denied. Carl Zeiss Meditec, Inc. v. Xoft, Inc., C.A. No. 10-308-LPS-MPT (D. Del. Mar. 30, 2011). Judge Thynge found that the scales were not sufficiently tipped in favor of transfer where Delaware was the plaintiff’s choice of forum, the defendant was incorporated in Delaware, and the location of witnesses and evidence were neutral or weighed only slightly in favor of transfer. Judge Stark agreed with this recommendation and rejected Xoft’s “proposition that Judge Thynge placed too much weight on the fact that Xoft is incorporated in Delaware and too little weight on the fact that Zeiss’s headquarters is in Northern California.” Id. at 2. Judge Stark found that “Judge Thynge thoughtfully explained that the convenience of witnesses and location of sources of proof -which are considered only to the extent that they are ‘unavailable’ - were either ‘neutral’ or weighed ‘only slightly in favor of transfer’” and “made clear that, in the Third Circuit, a plaintiff s choice of forum -which Xoft concedes is a ‘paramount consideration’ - should not be lightly disturbed.” Id. at 3. (Read more about Judge Thynge’s denial of the motion to transfer here.) The Federal Circuit considered the argument that “the district court placed too much emphasis on the plaintiff’s choice of forum” and refused to grant mandamus. See In re Xoft, Inc., Misc. Doc. No. 983, at 3 (Fed. Cir. Aug. 19, 2011). The Federal Circuit specifically ruled that “[i]n the Third Circuit, that choice is afforded considerable weight and should not be lightly disturbed. The district court properly considered the relevant factors for a transfer motion and determined that the factors did not strongly favor transfer.” Id.

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