Intellectual Property Law and Strategy PRESENTED BY Brenna K. Legaard John J. Murphy September 6, 2017

industry focus Brenna K. Legaard Technology Industry Group Leader 503-796-2471 Direct blegaard@schwabe.com “I’m focused on understanding my clients’ businesses and their industries so we can hit the ground running with solid legal counsel around their business challenges.” Brenna Legaard, a registered patent attorney, helps established and emerging technology companies in the medical, software, high-tech manufacturing and ‎sporting goods industries create and enforce holistic intellectual property strategies that support ‎long-term business goals. She divides her practice between litigation and transactional ‎work in addition to leading Schwabe’s Technology industry group. ‎Whether through protecting innovations, licensing or acquiring ‎technology, Brenna assists clients in developing strong intellectual ‎property positions. industry focus Technology

John J. Murphy Intellectual Property Director John Murphy is the director of intellectual property at T-Mobile USA. John is responsible for all aspects of IP asset development, use and management for T-Mobile products. He joined T-Mobile in 2006, serving as chief IP counsel. As lead attorney, John was responsible for developing and managing the company portfolios for all forms of intellectual property. He also lead T-Mobile in establishing strategies and policies related to IP asset management and IP risk mitigation.

US IP LAW FAVORS COMPETITION “…free exploitation of ideas [is] the rule…” Bonito Boats, Inc. v. Thunder Craft Boats, Inc. 489 US 141 (1989) UNLESS a specific, typically federally-defined exclusive right applies. Rights are frequently available during a limited window.

Exclusive rights: Patent (design, utility or plant) Trademark Copyright Trade secret Other federal statutes (Vessel Hull Design Protection Act, Semiconductor Chip Protection Act)

Product attributes How the product works (why the product works) How you make the product How the product looks What the product is called How you describe the product

CONSIDER your customer education How have you taught your customers to understand the technology? How have you taught them to identify it? How have you taught them to use it? How do they interact with it? What have you taught them to value?

Columbia Sportswear’s OMNI-HEAT® Reflective

US Utility Patents Cover “any new and useful process, machine, manufacture, or composition of matter” 35 USC §101 That is not described in the prior art (§102) and not obvious (§103) Infringement is determined by the claims

OMNI-HEAT® Reflective US Pat. No. 8,424,119 “Patterned heat management material” 1. A heat management material adapted for use with body gear, comprising: a base material having a transfer property that is adapted to allow, impede, and/or restrict passage of a natural element through the base material; one or more heat-directing elements, each coupled to a first side of a base material, the one or more heat-directing elements being positioned to direct heat in a desired direction, wherein a surface area ratio of heat-directing elements to base material is from about 7:3 to about 3:7, and wherein the surface area ratio of heat-directing elements to base material permits the base material to retain partial performance of the transfer property.

US Design Patents Any new, original and ornamental design for an article of manufacture (35 USC §171) Infringement: Egyptian Goddess v. Swisa (Fed. Cir. 2008): does the accused design appear substantially the same as the claimed design to an ordinary observer

Design patents USD744245 USD670917 USD657093

Trademarks Words (and other things) that indicate source Arise through use in commerce under common law Can (and should!) be federally registered pursuant to the Lanham Act. Infringement: use in commerce of a colorable imitation of the trademark in a manner likely to cause confusion

OMNI-HEAT®

Trademarks are about consumer protection Trademark law seeks to protect consumers, not competitors If confusion of actual consumers isn’t likely, there is no trademark infringement

DOMAIN names An ounce of prevention is worth a pound of cure. www.omni-heat.com www.omniheat.com

Copyright Original works of authorship fixed in any tangible medium of expression (17 USC §102) But authors can (and should!) federally register Exclusive rights are reserved to copyright owners: reproduce, distribute…. (17 USC § 106) Very protective of authors (including independent contractors)

Copyright Infringement: copying (not independent creation) Proven through access plus substantial similarity determined by an ordinary observer

OMNI-HEAT® Reflective Reg no. TX 8-242-175

Manufacturing, distribution & RETAIL Natural resources healthcare Transportation, ports & maritime Real estate & construction technology