IP Advisor - April 2007 April 01, 2007
In This Issue

Offer for License or Offer for Litigation?

The Good Old Days (for Patent Holders)

For decades a patent owner has been free to correspond with potential licensees without the fear of a declaratory judgment action. A patent holder could contact a potential licensee and detail an infringement case, and despite these acts – provided the patent holder did not overtly threaten litigation – a potential licensee would not be able to acquire declaratory judgment jurisdiction. Thus, in the event the patent holder wanted to initiate litigation, it could select the timing of such litigation as well as the jurisdiction at its leisure. This is no longer the case.

The Supreme Court Ends the Party

In MedImmune, Inc. v. Genentech, Inc., 127 S. Ct. 764 (2007), the U.S. Supreme Court considered “whether Article III’s limitation of federal courts jurisdiction to ‘Cases’ and ‘Controversies,’ requires a patent licensee to terminate or breach a license agreement before it can seek a declaratory judgment that the underlying patent is invalid, unenforceable, or not infringed.” The MedImmune Court held that the “actual controversy” requirement does not require a patent licensee to expose itself to liability by breaching its licensing agreement in order to bring a declaratory judgment. Prior to MedImmune, the U.S. Court of Appeals for the Federal Circuit utilized a two-part test to decide whether a declaratory judgment action satisfied the ‘actual controversy’ requirement. The first part of this test examines whether the patentee’s conduct creates a reasonable apprehension on the part of the declaratory judgment plaintiff that it will face an infringement suit, while the second part examines whether the declaratory judgment plaintiff’s conduct constitutes infringing activity. Footnote 11 of the MedImmune opinion criticized the Federal Circuit’s “reasonable apprehension of suit” test for declaratory judgment jurisdiction as conflicting with Supreme Court precedent. The MedImmune Court stated that “the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.”

The Federal Circuit Tries Again

Following the MedImmune decision, the Federal Circuit in SanDisk v. STMicroelectronics, Inc., et al., No. 05-1300, (Fed. Cir., March 26, 2007) overturned its long-standing precedent and held that the apprehension of “imminent litigation” is no longer required for a prospective licensee to initiate a declaratory judgment action. Instead, “all of the circumstances” must be examined to determine whether a case and controversy exists under Article III of the Constitution. And “where a patentee asserts rights under a patent based on certain identified or planned activity of another party, and where that party contends that it has the right to engage in the accused activity without license,” the accused party may bring a declaratory judgment action.

This significantly lowered the standard required for a declaratory injunction action and injected uncertainty into even the most innocuous license discussions for patent holders.

The Facts

In SanDisk, STMicroelectronics sent a letter to SanDisk requesting a meeting to discuss a possible “cross-license agreement” and identifying numerous patents that “may be of interest” to SanDisk. At the requested meeting, STMicroelectronics first asked that the discussions be treated as “settlement discussions” under Federal Rule of Civil Procedure 408. STMicroelectronics then provided detailed infringement analysis regarding the manner in which it believed SanDisk’s products infringed its patents. At the conclusion of the meeting, a representative for STMicroelectronics stated that STMicroelectronics “has absolutely no plans whatsoever to sue SanDisk.” After further negotiations, through which the parties were unable to reach an agreement, SanDisk filed a declaratory judgment action seeking to have each of the patents STMicroelectronics presented declared invalid and not infringed.

At the district court, STMicroelectronics moved to have the declaratory judgment action dismissed for failure to provide a case or controversy under Article III of the Constitution. The district court determined that a case or controversy did not exist because SanDisk did not have a reasonable apprehension of litigation. Under the then-existing Federal Circuit standard, merely telling a prospective licensee that his or her products were covered by one’s patents would not give rise to reasonable apprehension of suit; some additional action on the part of the patentee indicating intent to sue was necessary. The district court reasoned that STMicroelectronics told SanDisk that it did not intend to initiate any litigation and that SanDisk “presented no evidence that STMicroelectronics threatened [SanDisk] with litigation at any time during the parties’ negotiations, nor has SanDisk shown that other conduct by ST rising to a level sufficient to indicate an intent on the part of ST to initiate an infringement action.” In light of this, the district court found that the totality of the circumstances did not evidence an actual controversy.

SanDisk appealed the ruling of the district court.

The Federal Circuit Results and Reasoning

The Federal Circuit first rejected its reasonable apprehension of suit standard based on the Supreme Court’s decision in MedImmune, Inc. v. Genentech, Inc., 127 S.Ct. 764 (2007). The Federal Circuit noted that the U.S. Supreme Court in MedImmune “specifically addressed and rejected [the] reasonable apprehension of suit test.” After rejecting the reasonable apprehension of suit test, the Federal Circuit adopted a new standard consistent with the Supreme Court’s holding in MedImmune. Under this new standard a case or controversy for declaratory judgment purposes exists “where a patentee asserts rights under a patent based on certain identified or planned activity of another party, and where that party contends that it has the right to engage in the accused activity without license.”

After articulating the new standard, the Federal Circuit analyzed whether STMicroelectronics had asserted the right under a patent based on identified activity of SanDisk. The Court noted that STMicroelectronics had presented a “thorough infringement analysis . . . detailing that one or more claims of its patents read on one or more of SanDisk’s identified products.” The Court further noted that during its presentation to SanDisk, STMicroelectronics employed seasoned experts, who liberally referred to SanDisk’s infringement and need for a license. The Federal Circuit rejected STMicroelectronics’ arguments that its unequivocal statement that it did not intend to sue eliminated any actual controversy. It found by making “a studied and continued determination of infringement” and communicating such determination to SanDisk, STMicroelectronics’ statement that it does not intend to sue does not moot the actual controversy created by these acts.”

In light of all the circumstances, the Federal Circuit found that “ST communicated to SanDisk that it had made a studied and determined infringement determination and asserted the right to a royalty based on this determination. SanDisk, on the other hand, maintained that it could proceed in its conduct without the payment of royalties to ST.” Thus, under the new standard, the Federal Circuit determined that the district court had declaratory judgment jurisdiction over SanDisk’s complaint because “a substantial controversy, between parties having adverse legal interest, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment” existed.

The concurring opinion of Judge William Bryson noted that the new standard adopted by the Court “will effect a sweeping change in our law regarding declaratory judgment jurisdiction.” The opinion suggested that STMicroelectronics “was simply availing itself of the safe haven our cases had created for patentees to offer licensees without opening themselves up to expensive litigation.” Justice Bryson further opined that despite the references to the particular facts of the case the majority’s opinion will allow for declaratory judgment jurisdiction “in virtually any case in which the recipient of an invitation to take a patent license elects to dispute the need for a license and then to sue the patentee.”

Shoot First and Ask Questions Later

The Federal Circuit’s decision in SanDisk v. STMicroelectronics, Inc. injects uncertainty into licensee negotiations and patent owners must be careful to avoid potential litigations. The majority opinion, in a footnote, indicated that STMicroelectronics could have avoided the risk of a declaratory judgment proceeding by entering into a suitable confidentiality agreement. Such confidentiality agreement should not only contain standard clauses regarding the confidentiality of any presentations or information provided, it should also affirmatively state that any information provided under such agreement may not be used for purposes of obtaining declaratory judgment jurisdiction.

The concurring opinion correctly noted that a potential licensee could simply refuse to enter into a confidentiality agreement. In such event, the patent owner would be forced into a Hobson’s choice of either ending licensing discussions or continuing such discussions but exposing itself to a possible declaratory judgment action. Upon the potential licensee’s refusal to enter into a suitable confidentiality agreement, the patent holder who wants to keep control of the selection of jurisdiction to litigate, may institute an action by filing (but not serving) a complaint in the jurisdiction of their choosing thereby giving the potential licensee 120 days to enter into an agreement before the complaint needs to be served or re-filed. Thus, the practical result of SanDisk is likely to be an increase in anticipatory litigation due to the uncertainty that has been injected into licensing negotiations.

Top 10 Issues in Licensing Technology from Universities

Many successful products on the market today began as embryonic inventions in university research laboratories. Gene splicing, magnetic resonance imaging and atomic microscopy, for example, all had their beginnings in the university setting. Since the passage of the Bayh-Dole Act in 1980, universities have sought to license their core patents and technology to entrepreneurs and companies of all sizes, in the hopes of achieving commercial success. According to a 2007 report from the Association of University Technology Managers, member universities granted 4,932 new licenses in 2005, bringing the total number of current, active licenses to 28,349.

Obtaining a license to university patents and/or technology can benefit all parties involved. Below we offer a series of issues that companies (or individuals) should consider when reviewing and negotiating an exclusive university license. These matters are ones that universities and licensees can generally resolve in a manner that protects the university licensor’s interests while also giving the company licensee ample room to develop and commercialize the licensed technology.

1. Make sure the license grant contains all the university rights needed to commercialize the licensed technology.

One of the most important aspects of the license is definition of the rights that the license confers upon the licensee. In this regard, a company should ensure that the definition of the “Licensed Patents,” “Patent Rights” or other term used to describe the licensed rights, contains all of the patents and patent applications owned by the university needed to carry out the research and development plan. Moreover, companies should make sure to obtain a license or other right to use any other university technology or materials that are necessary for fully commercializing the licensed patents. For example, in the case of patents that cover inventions in the biotechnology industry, companies will often need to also obtain a license to the actual biological materials, such as cell lines or microbial strains, in order to be able fully exploit the licensed invention. In other areas, companies might need to obtain a license from the university to technology or know-how associated with the invention.

2. Consider broadening the license grant to include improvement inventions.

Companies may want to consider negotiating with university licensors for rights to future improvements. A company’s success with this request often varies with the university involved, because universities have varying policies on whether a license or option to future improvements is possible.

Ideally, companies should try to obtain rights to any improvements that might be developed after the effective date of the license agreement so as to avoid having to negotiate a new license when the situation arises. In contrast, universities often are concerned about licensing improvements on set terms before the actual improvements exist. Some negotiated outcomes include an improvements provision that covers inventions created in a particular university laboratory related to the licensed patents over a particular period of time, or that relate to any improvements that are dominated by the licensed patents. Regardless of how improvements are defined, the company typically will try to have the improvements automatically become part of the license grant. Alternatively, universities often prefer to offer an option to negotiate a license to the improvements, as opposed to an automatic license grant.

3. Consider the scope of the university’s retained rights.

In our experience, the university will ask to retain rights to practice and use, and allow other academic institutions and not-for-profit entities, to practice and use, the licensed rights. These clauses are typically limited to non-commercial research and educational purposes, and thus are generally acceptable to companies. One area of potential disagreement is whether such research could be funded by a for-profit commercial entity. Companies may have concerns that sponsored research by a competitor could allow a competitor to gain access to improvement inventions, whereas universities often insist on protecting their academic scientists’ freedom to conduct research no matter the funding source. Resolution of this issue will vary with the technology involved and in our experience can often lead to the company not only taking a license but also sponsoring research at the university.

4. Obtain commercially useful sublicensing rights.

To successfully commercialize products based upon the licensed patents, companies will often enter into collaborations with other parties who will need access to the licensed patents. Therefore, when negotiating a license agreement, companies should ensure that it grants them adequate sublicensing rights. Conversely, universities will be concerned with unfettered sublicensing rights and will want a variety of limitations on sublicensing activity. For example, companies will not want to be required to obtain the university’s approval to enter into any specific sublicensing agreement, whereas universities may want to review the identity of the proposed sublicensee and ensure that the sublicensing terms are at least consistent with (if not the same as) those in the license agreement. In our experience these provisions are often heavily negotiated to take these different interests into account.

One additional issue that often arises when granting sublicenses is what happens to a sublicense upon termination of the license agreement. Sublicensees will likely want some assurance that they will have access to the licensed patents over their entire life. Therefore, companies often ask the university to assume the sublicensing agreements if the license agreement with the university terminates before the sublicense term has expired. Alternatively, universities often are more comfortable agreeing to negotiate a direct license with any sublicensee upon license termination as opposed to committing in advance to taking on a sublicensee as a direct licensee. This issue is often deferred until there is a sublicense agreement in the works, whereupon the company may approach the university for additional protections for the proposed sublicensee. At this point, the university is often willing to grant the additional protections, since the sublicensee’s identity and proposed sublicense use are then known.

5. Structure reasonable royalty provisions given the proposed business.

Companies should use royalty calculation methods that will allow them to make commercially reasonable payments possible given their proposed use of the licensed technology. Some typical methods used for calculating royalties include stream of fixed payments, per-unit royalty based upon fixed costs, or percentage of total sales of licensed products (often defined as net sales). Universities are typically open to different payment approaches, if those approaches match the proposed business and result in a reasonable return for the university. Companies and universities are often willing to combine these different methods in the same agreement, if justified by the company’s commercial operations.

Companies often also want to consider including clauses that will help them lower their overall royalty burdens on licensed products. For example, companies often request a royalty stacking provision, whereby a company has the right to decrease the total amount of royalties paid to the university in a royalty period by a specified percentage, typically 50%, if the company needs to obtain licenses from third parties to practice the licensed technology or commercially develop the licensed product. As another example, if royalty payments are calculated based on a percentage of total sales, companies will often ask that the license specify a formula for calculating net sales of licensed products that contain more than one product, i.e. combination products, as the company would like to only pay royalties based upon the net sales on the portion of the product that is covered by the licensed patents. In our experience, if properly framed, universities are often willing to consider these company requests.

6. Review closely the payment obligations.

Companies should carefully scrutinize all defined terms that relate to payments to be made to the university under the license. For example, if royalty income is to paid based upon the percentage of sales method, the company should make sure that the definitions of “Net Sales” and “Sublicensing Income” are customary and do not contain any surprises. For example, the Net Sales definition typically excludes trade and cash discounts; amounts repaid or credited by reason of price adjustments, returns or rejections; and any sales taxes or government imposed charges paid for by the licensee. Moreover, companies may want to have set aside a certain portion of the licensed products for marketing and promotional purposes, which should not be used in calculating Net Sales. Finally, if a company is going to pay royalties on sales by its sublicensees, then sublicensing income shared with the university should specifically exclude Net Sales by sublicensees to make sure there is no double counting.

7. Develop commercially reasonable performance milestones.

Companies should develop performance milestones that they feel meet with a reasonable amount of commercial diligence. In our experience, universities understand this need and are typically chiefly concerned with a licensee not using the licensed technology at all or only in a narrow field when the licensed technology has broader application. For early stage companies licensing nascent technologies, companies will often want the milestones to be fairly broad and open-ended as it is likely too early in time to determine the events that will occur over time. For example, a performance milestone can be linked to obtaining a certain level of financing over a specified period of time, or to setting aside a certain amount of money for research and development each year. When licensing a more advanced technology, the milestones are often more detailed. For example, in the case of a potential pharmaceutical product that has passed initial testing, performance milestones may be linked to the outcome of clinical studies or selling a certain percentage of products over a specified period of time.

Attention should also be directed to defining the consequences of failing to achieve performance milestones. In our experience, universities are often willing to provide for reasonable cure periods, provided the company licensee is continuing to develop the licensed technology and working to cure any diligence failures.

8. Managing patent prosecution and dealing with regulatory agencies.

Companies should give some thought to the role they would like to play in patent prosecution. University licenses typically grant this role to the university and provide for some sort of input right on the part of the licensee. If a company is uncomfortable with this situation, it should consider adding a provision whereby it will be able to designate patent counsel to assist in these filings or suggest that outside patent counsel, acceptable to both parties, be hired for patent prosecution and maintenance purposes. As an alternative, companies may request control over patent prosecution, a request that some universities will grant if there are sufficient protections in place to ensure that the licensed patents are prosecuted to the fullest extent possible (and if not, then returned to the university’s control). In almost all cases, companies typically pay patent prosecution costs for the licensed patents.

In other regulatory areas, companies often take the lead. For example, typically university licenses grant the companies the right to control and assume responsibility for any regulatory filings for commercial approvals, such as filings with the FDA for medical devices or pharmaceuticals. This approach makes good sense, for universities are usually not in the business of commercializing products.

9. Make sure the termination provisions work for the business.

License termination provisions vary based upon the technology and industry, however, companies typically have the right to terminate the license for convenience upon giving prior written notice. This allows a company licensee to return a license it is not using without penalty.

Companies should consider whether other termination provisions are appropriate. Clearly there are certain situations where the university should have the right to terminate the license, such as if a company fails to pay royalties when due after a reasonable cure period. However, there are other situations that are more debatable. For example, does the company wish to allow the university the right to terminate the agreement if the company does not meet certain performance milestones within a specified period of time?  Such termination rights are often closely watched by both the university and the company, to make sure the university is adequately protected and the license cannot be revoked unfairly from the company.

Even in situations where termination is appropriate, it is important for both parties to make sure that the language used to describe the terminating event is clear because the stakes can be so high. For example, termination for bankruptcy is an occasion when disagreements can arise, such as whether the university should be able to immediately terminate the license if a petition in bankruptcy is filed against the licensee, or whether the university should only be able to terminate if a petition in bankruptcy has not been removed within a specified period of time after filing. Clear, specific drafting will help to avoid disputes in the future.

10. Carefully review all sections of the agreement, even the seemingly routine.

Companies should also carefully review all other sections of the license agreement to see if there are any unacceptable or unusual provisions. For example, companies should make sure they are comfortable with dispute resolution causes, assignment provisions and publicity rights. Universities are typically open to modifying these seemingly routine clauses if there is a good business reason. One area in which universities generally show more caution is indemnification, because universities do not want to put any university assets (such as the endowment) at risk. Universities will often refuse to accept company proposed changes to indemnification and limitations on liability provisions.

One way to address specific company concerns is to draft around the particular circumstance. For example, university licenses typically state that the licensee cannot use the name of the university in any promotional material without the prior written approval of the university. Here, a company could seek an exception whereby it would not need university approval to disclose the fact that the university has exclusively licensed the company.

Update on Global Efforts to Fight Movie Piracy

Recent reports from the Motion Picture Association of America (“MPAA”) calculate total losses to the studios from piracy at around $6 billion annually and total losses to the global motion picture industry (including domestic and foreign producers, distributors, theaters, video stores and pay-per-view operators) at $18.2 billion. It is widely believed that most of this lost revenue arises from piracy outside of the United States.

Though the MPAA has been successful in fighting movie piracy with a multi-pronged approach of legislation, litigation, education and enforcement, scores of industry players feel that the problem is getting worse. In response to this growing threat, the MPAA, media companies and others continually urge the private and public sectors to step up current efforts to attack movie piracy around the world.

The international nature of this problem encourages a global perspective on current developments in the effort to fight movie piracy. Accordingly, here is a summary of recent notable developments in domestic and foreign anti-piracy legislation, technology and enforcement actions as of April 20, 2007.

Legislation

United States  

United States Files WTO Actions Against China (April 2007). The United States filed two trade related challenges against China with the World Trade Organization in an effort to stimulate progress on China’s anti-piracy effort and to open access in China for U.S. films, music and software. According to U.S. Trade Representative Susan Schwab, “piracy and counterfeiting levels in China remain unacceptably high” and “because bilateral dialogue has not resolved our concerns, we are taking the next step by requesting WTO consultations.” A request for WTO consultations is the first step in a WTO dispute. If the parties do not resolve the matter within a 60-day consultation period, then the United States may refer the matter to a WTO dispute settlement panel. If a panel is convened, the decision would be expected to be delivered in May 2008. Note that the European Union did not join the U.S. challenge and Vivian Reding, the EU Information Society and Media Commissioner, stated on April 12, 2007 that “we will not join this complaint.”

Campus Anti-Piracy Bill (March 2007). U.S. Representative Ric Keller (R-FL) introduced the “Curb Illegal Downloading on College Campuses Act” which would give universities and colleges the opportunity to use federal funds to reduce student bootlegging. Under the proposed legislation, colleges and universities could apply for grants of money from the Fund for the Improvement of Postsecondary Education Program under the Department of Education to fund “innovative on-campus, anti-piracy pilot programs designed to reduce digital piracy.”

New York City Anti-Camcording Bill (April 2007). The New York City Council approved a bill which makes secretly videotaping movies in a theater for illegal sale on the street a misdemeanor crime punishable by up to six months in jail and fines of up to $5,000 (an increase from a $250 violation). NYC Mayor Michael Bloomberg supports the bill and is requesting support from the New York State legislature for a state bill that would similarly classify theater videotaping as a misdemeanor and make the second offense a felony.

Russia

Stronger Anti-Piracy Laws (April 2007). President Vladimir Putin approved amendments to Russia’s criminal code which result in tougher penalties on pirates. The amendments make piracy offenses a more serious crime under Russian law, punishable by up to six years in prison (up from five years) and maximum fines of up to $20,000 (up from $10,000).

New Law Bans Street Sales of DVDs (April 2007). The Russian government issued a new law banning the sale of DVDs, CDs and videocassettes from its street markets and kiosks. The Russian Anti-Piracy Organization welcomed the new law as a key component in Russia’s ongoing war against piracy. The new law is expected to be a valuable weapon in upcoming police campaigns aimed at stopping sales of pirated DVDs and CDs.

China

Top Court Strengthens Piracy Rules (April, 2007). The highest court in China lowered the threshold for prosecuting movie, television, music and software pirates, and counterfeiters. The new judicial interpretation gives prosecutors the ability to punish makers and sellers of pirated discs caught with 500 or more counterfeit discs (reduced from 1,000 counterfeit discs under the old rules) with three years of prison.

European Union

Parliament Approves Plans for Piracy Bill (March 2007). Members of the European Parliament’s legal affairs committee approved draft legislation which would implement standard criminal penalties across Europe for counterfeiting and intellectual property piracy. The proposal represents an increase from most of the financial penalties and custodial sentences under the various national laws in Europe.

Technology

Copyright Infringement Detection Automation Software - Autonomy Corp. (April 2006). Autonomy Corporation Plc., an enterprise infrastructure software company, announced the release of Virage Automatic Copyright Infringement Detection (ACID). Autonomy claims that Virage ACID automates the detection of illegal distribution of copyrighted material on the Internet and thus eliminates the need for content owners to spend hours trawling through video sharing websites, or manually scanning p2p file contents.

Digital Fingerprinting Software - MySpace.com/Audible Magic (February 2007). MySpace.com announced that it implemented a pilot program to block videos containing unauthorized copyrighted content from being posted in its community. With the program’s launch, MySpace becomes the largest Internet video site to offer free video filtering to copyright holders. Using digital fingerprinting technology licensed from Audible Magic, a content rights management company, MySpace’s filter screens video uploaded by users and blocks any video matching a fingerprint in MySpace’s database.

Enforcement Actions

MPA Dog Raids in Malaysia (March/April 2007). In a revolutionary approach by the Motion Picture Association (the “MPA”) in Malaysia, two specially trained dogs uncovered pirated DVDs and computer games in recent raids. Lucky and Flo, Labrador Retrievers, are the first dogs in the world trained to detect polycarbonate and other chemicals used in optical discs. In March, Lucky and Flo led investigators to 1 million pirated DVDs, CDs and computer discs worth approximately $2.8 million. In April, officials from the Ministry of Domestic Trade and Consumer Affairs used the dogs to sniff out and unearth a stash of approximately 150,000 pirated optical discs from video shops in Kuala Lumpur which are reported to be worth more than $430,000.

Chinese Seizure of 1.64 Million Discs (March 2007). Chinese officials seized 1.64 million illegal DVDs in southern China in the country’s largest anti-piracy raid of the year. According to the MPAA, the raid on the DVD factory and storage center in Guangzhou discovered pirated versions of Chinese, American, Korean and Japanese movies and TV shows.

Operation Trident (February 2007). The MPA managed the launch of “Operation Trident,” a new anti-piracy enforcement operation in Asia, in early December 2006. Operation Trident reported that by the end of January 2007 it had performed 1,874 raids resulting in seizures of 4.8 million pirated discs, 749 optical disc burners and 870 arrests of suspected movie pirates.

Publications & Conferences

Publications

Jacqueline Klosek and Andrew P. Lurié published “The Case for Factoring Data Privacy and Security Considerations into a Company’s Outsourcing Strategy” in Metropolitan Corporate Counsel’s March 2007 issue.

Benjamin Hershkowitz and Robert D. Carroll published “10 Steps to Ensure Software Licensing Compliance” in IPLaw360 on February 28, 2007.

Joel E. Lehrer published “Patenting the Money Machine” in The Deal on February 19, 2007.

Joel E. Lehrer published “Trends in Financial Services Patents” in IPFrontline on February 9, 2007.

Jacqueline Klosek and Andrew P. Lurié published “Privacy in the New Congress: Predictions for 2007” in the February 2007 issue of Privacy Advisor.

Agnes Bundy Scanlan, Jacqueline Klosek and Laurie A. Burlingame published “Massachusetts Bill: Shifting the Cost of Data Breaches” in the March 2007 issue of Data Protection Law and Policy.

Steven J. Frank published “Surviving Intellectual-Property Due Diligence” in Metropolitan Corporate Counsel’s February 2007 issue.

Deborah S. Birnbach and David J. Goldstone published “Privacy Rules and Board Investigations” in The Corporate Board’s January/February 2007 issue.

Ira J. Levy was interviewed about “Blocking Strategies for Intellectual Property” in IncreMentalAdvantage’s January 2007 issue.

Steven J. Frank, Christopher W. Stamos and Duncan A. Greenhalgh published “Proposed U.S. Patent Office Rule Changes Could Significantly Affect Portfolio Development” in IPLaw360 on November 7, 2006.

 

Upcoming Conferences

ABA Section of International Law - Spring 2007 Meeting
Dates: May 1-5, 2007
Location: Fairmont Hotel, Washington, D.C.
This event is organized by the ABA’s Section of International Law and will provide several days’ worth of programming targeted towards the specific needs of international lawyers and legal professionals. Jacqueline Klosek will moderate the “Government Access to Customer Data and Data retention” panel.

AIPLA Spring Meeting 2007
Dates: May 9-11, 2007
Location: Seaport Hotel & World Trade Center, Boston, MA
This event is the annual spring meeting of the American Intellectual Property Law Association. The meeting will provide a forum for IP professionals in the legal industry to discuss the latest developments in and interpretation of intellectual property law and professional ethics. Ira J. Levy will speak on the panel entitled “Expert Witnesses: Finding Them, and the Proper Care and Feeding of Them Once You Do.”

NSTI Nanotech 2007
Dates: May 20-24, 2007
Location: Santa Clara Convention Center, Santa Clara, CA
This event is the annual meeting of the Nano Science and Technology Institute. William R. Haulbrook and Natasha C. Us will present a paper entitled “Nanotech Patents: Tips for Getting the Patent Protection You Need.”

Fundamentals of Patent Prosecution 2007: A Boot Camp for Claim Drafting & Amendment Writing
Dates: June 20-22, 2007
Location: PLI New York Center, New York, NY
Louis S. Sorell and Marta E. Delsignore will speak at this event, which Lou is also chairing.