IP Advisor - April 2013 April 11, 2013
In This Issue

Are the EPROMs Factors Still Relevant?

You are patent counsel for a major airplane manufacturer and you have just found out that your company is being accused of infringing a patent that covers the razor blade disposal slot in the airplane bathroom.  If that suit were brought in federal district court, you would expect that — if your company was found to infringe — any damages would be quite limited.  However, if the suit was brought in the U.S. International Trade Commission (“ITC”), might the airplane be excluded from entering the United States?

In the past several years, the ITC has always issued an exclusion order directed to so-called downstream products containing infringing components. On some occasions the full Commission or the Administrative Law Judge (“ALJ”) have considered a set of factors called the EPROMs factors, which include factors such as the technological value of the infringing component; on other occasions, however, the full Commission or the ALJ have not considered these factors. The ITC has not been presented with a scenario as extreme as that described above. This article explains the current uncertainty about whether the EPROMs factors apply, the resolution of which might determine whether an exclusion order would issue where an asserted patent relates to a truly insignificant component of a downstream product.

Exclusion Orders in ITC Actions

In the ITC, the main remedy available is an order excluding infringing products from entering the United States. Exclusion orders come in two forms, limited and general. A general exclusion order applies to infringing products from any company, regardless of whether that company is a respondent  – i.e., a named defendant in an ITC action. A limited exclusion order applies only to the infringing products of a respondent. A limited exclusion order that covers downstream products is particularly valuable because, in many cases, an infringing component is not likely to be imported as a stand-alone product into the United States. Rather, it will be incorporated into a downstream product overseas and then that product will be imported into the United States.

Prior to the Federal Circuit’s decision in Kyocera Wireless Corp. v. International Trade Commission, 545 F.3d 1340 (Fed. Cir. 2008), it was possible to obtain both a limited exclusion order that covered downstream products manufactured and imported by a respondent, and also a limited exclusion order that covered downstream products imported by someone other than a named respondent (as long as the downstream product contained an infringing component made by a named respondent). The ITC would analyze a set of factors to determine whether the limited exclusion order should cover downstream products that incorporated products adjudged to infringe.

Those factors were set forth by the ITC in Certain Erasable Programmable Read Only Memories, Components Thereof, Products Containing Such Memories, and Processes for Making Such Memories, Inv. No. 337-TA-276, USITC Pub. No. 2196, 1989 ITC LEXIS 122 (May 1989) (“EPROMs”). The factors are: (1) the value of the infringing articles compared to the value of the downstream products in which they are incorporated, (2) the identity of the manufacturer of the downstream products (i.e., whether the downstream products were manufactured by the party found to have committed the unfair act, or by third parties), (3) the incremental value to complainant of the exclusion of downstream products, (4) the incremental detriment to respondents of such exclusion, (5) the burdens imposed on third parties resulting from exclusion of downstream products, (6) the availability of alternative downstream products which do not contain the infringing articles, (7) the likelihood that imported downstream products actually contain the infringing articles and are thereby subject to exclusion, (8) the opportunity for evasion of an exclusion order which does not include downstream products, and (9) the enforceability of an order by Customs. The decision noted that this list of factors was not intended to be exclusive and that the ITC may identify and take into account any other factors which bear on whether to extend an exclusion order to downstream products.

The Impact of Kyocera on the Use of the EPROMs Factors

In Kyocera, the Federal Circuit held that a limited exclusion order could only apply to products manufactured and imported by named respondents. Thus, a limited exclusion order could not apply to downstream products manufactured by someone other than a named respondent, even if the downstream product contained an infringing component made by a named respondent. Several ALJs have questioned whether the EPROMs analysis continues to be relevant post-Kyocera. The results have been mixed.

ALJ Robert K. Rogers suggested in his Initial Determination in Inv. No. 337-TA-665 that the EPROMs analysis might no longer be necessary, although he considered the factors, “[a]ssuming, arguendo, that notwithstanding the holding in Kyocera, it remains necessary to examine the EPROMs factors … .”   Retired ALJ Carl C. Charneski stated in his Initial Determination in Inv. No. 337-TA-685 that an EPROMs factors analysis for a named respondent’s own products is “unnecessary.”

After Kyocera, in three investigations involving semiconductor chips, ALJ Theodore R. Essex has relied upon the EPROMs analysis in some investigations but not others. For example, ALJ Essex did not conduct an EPROMs analysis in recommending the issuance of a limited exclusion order that covered downstream products in Inv. Nos. 337-TA-605 and -661, but he did conduct an EPROMs analysis in recommending the issuance of a limited exclusion order in Inv. No. 337-TA-753. The full Commission issued a limited exclusion order directed to the respondents’ downstream products in Inv. No. 337-TA-661, with no comment as to whether an EPROMs analysis should have been conducted.

Retired Chief ALJ Paul J. Luckern similarly conducted an EPROMs analysis in some investigations, but not others. In Inv. No. 337-TA-631, ALJ Luckern recommended the issuance of a limited exclusion order directed to downstream products, and the full Commission adopted that recommendation. However, in Inv. No. 337-TA-634, ALJ Luckern recommended a limited exclusion order directed to downstream products after conducting an EPROMs analysis, and the full Commission specifically adopted the EPROMs analysis as its own. ALJ Luckern also recommended the issuance of a limited exclusion order directed to downstream products after conducting an EPROMs analysis in Inv. No. 337-TA-709.

Chief ALJ Charles E. Bullock recommended the issuance of a limited exclusion order directed to downstream products without conducting an EPROMs analysis in Inv. No. 337-TA-664, citing to the full Commission’s opinion in Inv. No. 337-TA-661. He also recommended the issuance of a limited exclusion order directed to downstream products without conducting an EPROMs analysis in Inv. No. 337-TA-792, citing to the Commission’s opinion in Inv. No. 337-TA-661 and noting that the downstream products were specifically accused of infringement in the Notice of Investigation. ALJ Edward J. Gildea recommended the issuance of a limited exclusion order directed to downstream products in Inv. No. 337-TA-692 after conducting an EPROMs analysis. Finally, in contrast to his Initial Determination in Inv. No. 337-TA-665, ALJ Rogers recommended a limited exclusion order in Inv. No. 337-TA-772 directed to polyimide films and products containing the same without conducting an EPROMs analysis, rejecting the respondent’s argument that only the polyimide films (and not downstream products) should be subject to the limited exclusion order.

In two recent decisions, ALJ David P. Shaw not only determined that the EPROMs analysis was still applicable, but declined to recommend the issuance of a limited exclusion order directed to downstream products containing infringing components. In Inv. No. 337-TA-784, the accused products were LEDs incorporated into downstream products such as televisions, cell phones and computer monitors. Although he found that the respondents’ LEDs infringed every asserted claim of one of the patents-in-suit, ALJ Shaw, applying the EPROMs analysis, recommended that a limited exclusion order not issue with respect to the respondents’ downstream products. In particular, ALJ Shaw found that factors 3, 4, and 9 weighed against the issuance of an exclusion order directed to the respondents’ downstream products, noting that the vast majority of the respondents’ LEDs entering the United States were incorporated into downstream products and that the complainant sought to exclude a large number of downstream products, which would impose a “substantial administrative burden on [Customs.]”

In Inv. No. 337-TA-781,  the accused products were Intel microprocessors incorporated into downstream products such as computers, servers and workstations. ALJ Shaw recommended that  a limited exclusion order not issue with respect to the respondents’ downstream products. In particular, ALJ Shaw found that factors, 3, 4, 5, 7, and 9 weighed against an exclusion order directed to the respondents’ downstream products. The ALJ, noted that the detriment to the respondents from the exclusion of their products would likely be substantial, and that based on the record, it would be extremely difficult, if not impossible, to determine which downstream products actually contained the infringing microprocessors and which did not. Inv. 337-TA-784 was terminated prior to the issuance of an opinion from the Commission, and the Commission issued a notice in Inv. No. 337-TA-781 on Feb. 15, 2013 that it had reversed certain findings made by ALJ Shaw, but had nevertheless determined that there was no violation of Section 337. As such, the Commission will not be weighing in on these particular findings.


While oftentimes a limited amount of space is devoted to briefing the EPROMs factors, the continuing applicability of the analysis could be important to a complainant who wishes to bring a complaint where the accused product is merely a small component that is imported into the United States only in a downstream product. On the other hand, respondents might benefit from the continued applicability of the analysis to prevent a complainant from obtaining a limited exclusion order directed to a downstream product that contains an infringing component, e.g., as ALJ Shaw recommended in both Inv. Nos. 337-TA-781 and -784. As the full Commission has adopted ALJ recommendations for the issuance of limited exclusion orders directed to downstream products both where the ALJs conducted and did not conduct an EPROMs analysis, it is up to the full Commission to clarify the current state of the law.

Federal Circuit to Revisit Standard Applicable to Meaning of Patent Claims

On March 15, 2013, the Court of Appeals for the Federal Circuit agreed to rehear a case en banc to revisit an issue that has been percolating in the court for a number of years: what standard should the appellate court apply in reviewing decisions by trial courts on the meaning of claim terms?  The case is Lighting Ballast Control LLC v. Phillips Electronic North America Corp. (2012-2014, 2015), and the Court of Appeals has asked the parties to submit briefing on the following issues, which are to be decided by all active members of the court:

(i)    whether the court should overrule its decision in Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998);

(ii)   whether the court should afford deference to any aspect of a district court’s claim construction; and

(iii)  if deference is afforded, which aspects of a district court’s claim construction should be given deference.

In Lighting Ballast, the district court concluded that the claim term “voltage source means” was not a “means-plus-function” claim subject to 35 U.S.C. § 112, ¶ 6, because the district court concluded, on the basis of expert testimony in declaration form and deposition testimony, that the claim term itself denoted sufficient structure to the person of skill in the art. In construing the claim, the district court credited the testimony of Lighting Ballast’s experts and rejected the argument by the alleged infringer that the claim was indefinite for failing to recite a structure. Following a jury trial, Lighting Ballast’s patent was found infringed.

On appeal, a panel of the Federal Circuit Court of Appeals reversed the district court’s decision and held the disputed claim term, “voltage source means”, was indefinite and, therefore, invalid. Applying its standard of review in Cybor, the panel of the Court of Appeals reviewed the district court’s claim construction de novo, without any deference to the decision or the findings of fact made by the district court incident to its claim construction determination. By its order granting Lighting Ballast’s petition for rehearing en banc, the Court of Appeals has not vacated the panel decision holding the claim term indefinite. Briefing on the en banc issues is due to be filed over the next 90 days, but oral argument has yet to be scheduled.

Lighting Ballast presents the Court of Appeals’ first opportunity to revisit the standard of review applied to claim construction decisions since Cybor, which was issued 25 years ago. During that time period, all but one of the judges who make up the active bench of the Federal Circuit Court of Appeals have changed. A decision by the Court of Appeals changing the standard of review for claim construction determinations, an issue presented in nearly every patent action, would have widespread ramifications for patent litigation and the current uncertainty surrounding the likelihood of reversal of claim construction determinations by district courts.

Supreme Court to Decide Important Biotechnology Patent Cases This Term: Myriad and Bowman

In what appears to be a permanent trend, the United States Supreme Court will once again address important issues of patent law this term. There are two cases before the Supreme Court this term that directly impact patent law: Assoc. of Molec. Path. v. Myriad Genetics, Inc., No. 12-398 (“Myriad”), and Bowman v. Monsanto Co., No. 11-796 (“Bowman”). The Supreme Court’s decisions in both cases could have widespread ramifications on biotechnology patents.

In Myriad, the Supreme Court is confronted with the issue of whether human genes are patentable. In this case, Myriad owns patents covering isolated human genes (BRCA1 and BRCA2), mutations in those isolated human genes associated with a predisposition to certain types of breast and ovarian cancers, and analytical methods for determining whether a cancer-causing mutation exists in the human gene. The plaintiffs in the case, medical organizations, researchers, genetic counselors, and patients, brought this lawsuit challenging the patentability and validity of Myriad’s patents. The federal district court concluded that the isolated human genes and methods of analyzing them were not patent-eligible under 35 U.S.C. § 101 and, therefore, Myriad was not entitled to its patents.

In a 2-1 decision, the Federal Circuit Court of Appeals reversed the district court and held that the isolated human genes were patent-eligible because the isolated genes existed in a different form than the same gene found in a cell of the body. Writing for the Court, Judge Lourie reasoned that isolated DNA has been manipulated chemically so as to produce a molecule that was “markedly different” from that which existed in the body. Because the isolated DNA was “markedly different” from what was observed in nature, it was eligible for patenting as a composition of matter and did not fall into the “law of nature” exception to patentable subject matter. In a concurring opinion, Judge Moore explained her slightly different view that it was the combination of markedly different characteristics with the potential for significant utility, i.e., enlargement of the utility of the isolated gene sequence, that rendered the claimed isolated DNA to be patent-eligible subject matter. Judge Moore also explained that, had she been writing on a clean slate, she might have been inclined to find that some of Myriad’s claims to larger sequences of DNA were not patent-eligible because they did not have any enlargement in their utility as compared to the same DNA found in nature. However, given that the U.S. Patent and Trademark Office had a stated policy of allowing such patents to issue for nearly a decade (and had followed that policy for arguably a century or more), and because the settled expectation of the public (scientists, biotechnology companies, investors, etc.) was that human DNA was patent-eligible, that policy should not be disturbed in the absence of congressional action.

On Nov. 30, 2012, the Supreme Court granted the plaintiffs’ petition for certiorari limited to the following question: “Are human genes patentable?”  Briefing before the Supreme Court is underway, and a number of public interest groups, companies, academic institutions and individuals have submitted amicus briefs on that issue. The Supreme Court will hear oral argument in the case on April 15, 2013, and is likely to release its opinion by the end of June this year.

On Feb. 20, 2013, the Supreme Court heard oral argument in Bowman v. Monsanto Co. Monsanto initiated this lawsuit against Indiana farmer, Vernon Bowman, alleging that Bowman’s planting of second-generation soybean seeds (i.e., the progeny of genetically-altered seeds) purchased from a commodity supplier infringed Monsanto’s patents. Monsanto invented and developed technology for genetically modified “Roundup Ready®” soybeans that exhibit resistance to glyphosate-based herbicides, such as Monsanto’s Roundup® product. Monsanto sells its Roundup Ready® seeds with a limited use license that requires growers, among other things, “to use the seed containing Monsanto gene technologies for planting a commercial crop only in a single season” and “to not save any crop produced from this seed for replanting, or supply saved seed to anyone for replanting.”  Bowman argued that the authorized sale of second-generation seeds to the commodity seed suppliers, and those suppliers’ authorized sale of such seeds to Bowman, exhausted Monsanto’s patent rights with respect to the planting of such seeds under the Supreme Court’s analysis of the patent exhaustion doctrine, as set forth in Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008). The district court concluded that the doctrine was inapplicable and found that Bowman’s planting of seeds with Monsanto’s Roundup Ready® technology infringed Monsanto’s patents.

On appeal, the Federal Circuit Court of Appeals affirmed the district court’s finding of infringement. The Court of Appeals held that the doctrine of patent exhaustion was inapplicable to Monsanto’s patented self-replicating technology. The Court of Appeals reasoned that applying the first sale doctrine to subsequent generations of self-replicating technology would eviscerate the rights of the patent holder. The Court of Appeals further held that even if Monsanto’s patent rights in the second-generation seeds sold to commodity’s holders are exhausted, a grower like Bowman creates a newly infringing article when he plants the seeds containing Monsanto’s Roundup Ready® technology and a new generation of seeds is developed. According to the Court of Appeals, although growers like Bowman would be authorized to use the second-generation seeds purchased from commodity suppliers for other purposes, such as animal feed, they are not authorized to replicate Monsanto’s patented technology by planting those seeds to create newly infringing plants or more seeds.

The Supreme Court granted Bowman’s petition for certiorari to address the following issues:  “Whether the Federal Circuit erred by (i) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (ii) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?”  During oral argument in the case, the justices asked several questions of the lawyers for both parties trying to discern whether, in this area of self-replicating technology, a “first sale” was a sufficient incentive for commercial entities to invent and improve on existing technology. A decision from the Supreme Court is expected by the end of June 2013.

Both the Myriad and Bowman decisions are likely to have important consequences for patents covering DNA and self-replicating genetic technologies.

Federal Circuit to Decide En Banc Patent Eligibility of Software Technologies in CLS Bank Corp. v. Alice Corp. Pty. Ltd.

Ever since the Supreme Court breathed new life into the question of patent eligibility under 35 U.S.C. § 101 in Bilski v. Kappos, __ U.S. __, 130 S.Ct. 3128 (2010), courts have struggled to consistently and clearly apply Bilski and its progeny to inventions implemented in software. The Federal Circuit sitting en banc recently heard oral argument in CLS Bank Corp. v. Alice Corp. Pty. Ltd. in a case that will likely have a profound effect on software patent cases and change the way courts analyze questions of patent eligibility in such cases.

The Problem with the Section 101 Framework in Software Cases

Faced with an invention implemented in software, courts must reconcile recent Supreme Court decisions on patent eligibility with the Federal Circuit’s traditional (and still preferred) “machine-or-transformation test.”  On the one hand, the Supreme Court has stated that section 101’s otherwise broad threshold for patent-eligibility is subject to three judicially-created exceptions:  (i) laws of nature, (ii) physical phenomena, and (iii) abstract ideas. In software cases, the question becomes whether the claimed invention is an “abstract idea” that is simply implemented in a computer. The Federal Circuit’s “machine-or-transformation test,” on the other hand, directs courts to analyze whether a particular patented invention “is tied to a particular machine or apparatus, or it transforms a particular article into a different state or thing.”  As will be discussed below, neither test is particularly well-suited for software cases.

Although the Supreme Court in Bilksi rejected the Federal Circuit’s “machine-or-transformation test” as the exclusive test to determine patent eligibility, it remains a “useful tool” and the Federal Circuit’s preferred starting point for any section 101 analysis. The problem, however, is that software patents are inherently tied to machines: computers. Moreover, the execution of software invariably results in some articulable transformation, whether it be an altered data structure, some change in memory, or other type of digital manipulation. Thus, at least at some level, a software patent will always satisfy the machine-or-transformation test. The Federal Circuit, however, has acknowledged that “[t]he mere implementation on a computer of an otherwise ineligible abstract idea will not render the asserted ‘invention’ patent eligible,” and over the last two years it has found a number of software patents invalid for failing to meet the section 101 test for patent eligibility. The analysis in such cases has turned on whether the computer played a “significant part in permitting the claimed method to be performed.”  See, e.g., Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1324 (Fed. Cir. 2012) (investment tool for real estate property owners); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011) (method and system for detecting fraud in a credit card transaction).

Thus, courts faced with section 101 challenges typically engage in a perfunctory machine-or-transformation analysis only to return to the core question:  is the patented invention simply the implementation on a computer of an ineligible abstract idea?  Unfortunately, the Supreme Court’s abstract idea test is even less defined. As the Federal Circuit panel in CLS Bank stated, “[a]ny claim can be stripped down, or simplified, removing all of its concrete limitations, until at its core, something that could be characterized as an abstract idea is revealed.”  CLS Bank Int’l v. Alice Corp. Pty. Ltd., 685 F.3d 1341, 1351 (Fed. Cir. 2012). There is no easy way to define an abstract idea. The Supreme Court has stated that an abstract idea is a “fundamental truth; an original cause; a motive.”  See Bilski, 130 S.Ct. at 3230 (quotations omitted). And, the Federal Circuit has explained that “abstract ideas constitute disembodied concepts or truths which are not ‘useful’ from a practical standpoint standing alone, i.e., they are not ‘useful’ until reduced to some practical application.”  In re Alappat, 33 F.3d 1526, 1542 (Fed. Cir. 1994) . These attempts to define an unpatentable abstract idea have provided little guidance to courts evaluating whether computer-implemented inventions are valid under section 101, and considerable confusion remains as to when such inventions cross the line from patent eligible to ineligible.

CLS Bank v. Alice Corp. – The Federal Circuit Panel’s Solution

In CLS Bank, the asserted patents covered systems, methods and computer products for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate settlement risk. In essence, the patents claimed the use of an intermediary in a financial transaction to reduce the risk that one party fails to perform after it has received the consideration from the other party. At summary judgment, the district court held that all claims were invalid for failing to claim patent eligible subject matter because they were directed to abstract ideas. On appeal, the panel was presented with two questions:  (i) are the method claims directed to patent ineligible abstract ideas and (ii) should the test for patent eligibility of system and products claims be different than method claims because they are tangible physical objects (and therefore literally not abstract)? 

The majority in CLS Bank held that the method claims were not abstract ideas and were patent eligible under section 101, and all three judges on the panel agreed that the test for patent eligibility does not depend on whether the claims are drafted as system, product or method claims. The majority opinion, authored by Judge Linn, recognized the current problems in the framework for the section 101 analysis for inventions implemented in computers. According to the panel, “[m]any patents [] drawn to inventions implemented in computer hardware or software … are argued not to pass the machine-or-transformation test,” requiring courts to “sometimes look beyond the machine-or-transformation test to distinguish eligible from ineligible computer-related claims.”  CLS Bank, 685 F.3d at 1350-51. The panel also acknowledged that “[t]he abstractness of the ‘abstract test’ to patent eligibility has become a serious problem….”  Id. at 1348.

In light of this uncertainty, the panel articulated a new test of patent eligibility of software claims:  “when—after taking all of the claim recitations into consideration—it is not manifestly evident that a claim is directed to a patent ineligible abstract idea, that claim must not be deemed for that reason to be inadequate under § 101.”  Id. at 1352. The panel went on to state that to be ineligible the “abstract idea” (loosely defined as a “fundamental truth” or “disembodied concept”) must be “the single most reasonable understanding” of the claim. If, however, the claim is directed to a “specific application” or a “practical application,” then it will pass muster under section 101. In reaching its conclusion, the majority rejected the dissent’s argument (authored by Judge Prost) that in order to be patent eligible under section 101, the claims must include an “inventive concept.”  Id. at 1357 (Prost, J. dissenting).

En Banc Review

On October 9, 2012, the Federal Circuit granted CLS Bank’s petition for rehearing en banc and vacated the panel’s decision. The parties were requested to file new briefs addressing two questions: 

a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible “abstract idea”; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea?

b. In assessing patent eligibility under 35 U.S.C. § 101 of a computer-implemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for § 101 purposes?

Oral argument was held on Feb. 9, 2013. Questioning from the judges focused on the definition of an abstract idea; how systems and products can be “abstract” when they claim physical, tangible objects; the role of claim construction in the section 101 analysis; and whether the patented inventions preempt other methods of using third-party intermediaries in financial transactions. If anything, oral argument revealed an en banc court that is sharply divided on the role of section 101 as a threshold inquiry of patent eligibility and the application of section 101 to software patents. Further complicating the analysis is the number of and differences among the claims at issue in CLS Bank, which include systems, methods and products as well as claims that both expressly recite and do not recite the use of computers. Given this complexity and uncertainty, it could very well be that this will be the third section 101 case to reach the Supreme Court in three years.

SHIELD Act of 2013: Congress Considers New Limits to Patent Infringement Lawsuits Brought by Non-Practicing Entities

On Feb. 26, Representatives Jason Chaffetz (R-UT) and Peter DeFazio (D-OR) filed the “Saving High-Tech Innovators from Egregious Legal Disputes Act of 2013” in response to pressure from the high technology sector and shortly after President Obama suggested new legislation was needed to “crack down on patent trolls.”  The stated goal of the legislation is to address frivolous patent claims brought by non-practicing entities (“NPEs”), defined as entities that own patents but neither developed the technology nor produce any products that use the patented technology. The bill provides a mechanism by which a defendant may ask a court to award its full costs, including attorneys’ fees, to defend the suit if the defendant proves noninfringement or invalidity of a patent being asserted by an NPE. Similar provisions had been introduced in previous legislation, but either failed to make it through Congress or were stricken from what eventually passed as the Leahy-Smith America Invents Act of 2011. The new bill makes plaintiffs immune from such an award if they are the original inventors, a company employing the inventors and owning the patents, a company that exploits the patent through production or sale of an item covered by the patent, or a university or technology transfer organization.

Currently, NPEs face less risk in asserting questionable patents or claiming their patents cover a broad spectrum of seemingly unrelated products, as courts usually do not penalize such behavior; further, because NPEs do not make or sell any products, they are effectively immune to counterclaims in which the defendant asserts its own patents. The primary risk to NPEs is having their patents invalidated, which requires either litigation or a long and expensive process at the PTO – processes that typically cost much more than settling. While NPEs with strong patent portfolios will still be able to assert their rights and profit from successful lawsuits, NPEs looking for small, nuisance-value settlements may be deterred under legislation such as the SHIELD Act, as even a remote risk of paying litigation costs may force them to think twice before initiating cases with the hope of collecting settlements based on dubious patents.  

At this time it is unclear whether the proposed SHIELD Act will advance through the legislative process, but the introduction of this bill following the President’s comments reflects a continuing congressional interest in this issue. If your company receives a letter suggesting that it needs a license to a patent or that its products or services infringe a patent, or your company is considering sending such a letter, please contact your patent attorney immediately to discuss the implications of this legislation.

Publications and Upcoming Speaking Engagements


"Beware: Patent Malpractice Suits Are on the Rise; Patent and Trademark Law

New York Law Journal

January 23, 2013

Author: Parker Bagley

Speaking Engagements

Joint Patent Practice CLE Program

April, 16, 2013

New York, NY

This full-day CLE seminar will include panels on USPTO Practice, Pharmaceuticals/Life Sciences, Licensing/Foreign Practice/ITC, Ethics, and Litigation.  Ira Levy will lead a panel titled Rates Technology v. Hicks:  Sanctions for failure to respond to contention interrogatory.

2013 BIO International Convention

April 22, 2013


The BIO International Convention brings together thousands of companies innovating in the spectrum of life science innovations and application areas. Ted Pitcher will be speaking on the Wednesday panel titled “IP Strategies for the Developing World,” which will outline strategies that both for-profit and nonprofit groups in developing countries are taking to prepare for the globalization of their innovative products.

AMITA: Tales from the Land of Entrepreneurship

April 22, 2013

Cambridge, Mass.

Goodwin Procter is proud to be the lead sponsor of the Association of MIT Alumnae (AMITA). This month they will be hosting “Tales from the Land of Entrepreneurship,” a panel of female entrepreneurs from the MIT community who have taken a company public, have helped found a company with annual revenue of at least $500,000, or who have achieved a comparable level of success.  They will share their stories about the routes they took to achieve their goals and what they learned along the way. PLI’s Advanced Licensing Agreements 2013

April 25, 2013


The Advanced Licensing Agreements program is designed to address some of the more complex and practical issues that arise in drafting and negotiating IP licenses, as well as provide tips for specific industries. This program will feature updates on current legal developments, present case studies highlighting best practices, provide tactics for negotiating frequently contested issues, and provide guidance on identifying and avoiding common pitfalls, keeping the relationship on track, litigation planning and avoidance, and addressing ethics concerns.  Ira Levy is co-chair of the seminar.

Computer World Open Source Business Conference

April 29, 2013

San Francisco

This conference, hosted by Computer World, offers attendees the chance to connect with the developers, users and companies behind the most significant open-source Big Data technologies. Participants will learn the experts' strategies to make their businesses more effectively data-driven. Robert Blasi will be delivering a presentation entitled “Innovating at the Edge of Copyright - Oracle v. Google and its implications for open source.

IP Monetization 2013: Maximize the Value of Your IP Assets

May 1, 2013

New York, NY

At the IP Monetization 2013 conference, leading players from operating companies, investment and consulting firms will provide comprehensive updates on the latest IP monetization techniques, review key trends and developments, and discuss and analyze important recent transactions and other market developments.  Ira Levy will present “Patent Law Developments Impacting on Patent Monetization.”

Prior Art, Obviousness, and the America Invents Act in 2013

June 3, 2013

New York, NY

Intellectual Property Partner Anne Hassett will present at this program, seeking to explain changes in patent reform under the America Invents Act of 2013.