Lessons learned – Lab IP Enforcement erhtjhtyhy Lessons learned – Lab IP Enforcement

Agenda BACKGROUND What Who Where When Why How

Background Dispute Resolution

Background Negotiation ploy? Example allegation issues: IP Ownership? Field of Use? Sovereign Immunity? (Florida Prepaid v College Saving Bank)

what Li-ion Positive Electrode (Cathode) Materials for Batteries

who Parties Plaintiff: Licensee of certain cathode material battery patents Argonne: Licensor (standing, discovery, witnesses) Licensee pursued the action to protect the patents, and had the right to include Argonne as a party in order to protect the patents Defendants: Defendant A: Based in Europe Defendant B: Based in Japan

Licensee Investments in U.S.

where International Trade Commission (ITC) Remedy: Exclusion Order to block infringing imports Delaware District Court “Stayed” pending ITC action Patent and Trademark Appeals Board (PTAB) IPR(s) to challenge validity of patents

when ITC and PTAB are FAST ITC PTAB February 2015: Filed Suit Discovery, Interrogatories July 2015: Markman Hearing Depositions Expert Witnesses October 2015: ITC Hearing February 2016: Initial Determination June 2016: Initial Commission deadline November 2016: Public Interest Hearing December 2016: Commission ruling February 2017: USTR review concluded July 2015: 1st Petition for IPR (Defendant B) – dropped as part of business resolution November 2015: 2nd Petition for IPR (Def A) March 2016: Response to IPR request June 2016: Petition for IPR denied by PTAB

When Commercialization Takes Time 1998 Research Funded by DOE 2000 Patents Filed 2004 Patents Issue 2005 Meeting with Defendant A 2008 License to another Company 2009 License to Licensee Plaintiff 2009 Meeting with Defendant A 2010 Licenses to other Companies 2013 Patent Confirmed after Patent Re-examination 2015 Lawsuit Filed 2016 Judge and Commission Rulings 2017 Business Resolution

why Pragmatic Optics Market size commensurate with potential costs/risks of patent lawsuit Licensee had performed reasonable investigation into infringement Licensee experience with patent litigation Licensee had financial wherewithal for potential costs of patent lawsuit (and willing to pay Lab’s costs) Licensee treated Argonne as value-added partner Division Management and PI supportive Licensee wanted to protect its investment in its factory and jobs in the U.S. to produce the licensed materials from infringing foreign imports. Reducing market uncertainty regarding the patents promoted the use of this material to improve energy storage performance and stability Infringer had (has) opportunity to obtain a license Publicly recognized value of technology

Why Two Presidents Recognized Contributions of ANL Team

How Amendment with Licensee Provided Licensee right to sue, subject to: Bear costs of litigation, including Licensor counsel fees and defense of countersuits or actions against patents Licensor input and approval regarding scope, validity, enforceability of patents Not abandon or settle without Licensor prior written consent Settlement and Litigation costs Non-cash value? Affirmation to sublicense technology Licensor retain limited rights to license for R&D purposes

How – teamwork Licensee Frequent and frank communication Treat with respect Listen to concerns Align interests to extent possible Minimize surprises Meet deadlines Build trust relationship

How – teamwork Outside Counsel(s) Frequent and frank communication Discuss roles of outside counsel(s) Advise versus manage Facilitate sharing between outside counsel(s) Surge resources Understand payment arrangements and incentives

How – teamwork Inventors Manage concerns wrt discovery, deposition, trial fact witness Build/maintain trust Minimize disruption Reaction to stress Each inventor unique

HOW – TEAMWORK Other Internal Constituents Management Other items of interest Frequent and frank communication Very supportive 30(b)(6) witnesses Scrutiny of Technology Transfer Manuals and licensing process Good reporting/electing records Lab Notebooks important (inventorship, credibility) Record retention Correspondence

How – teamwork DOE THANK YOU! Frequent and frank communication DOE participated in Public Interest Hearing to protect DOE investment in R&D to help U.S. Competitiveness “Allowing parties to import, use, and deploy DOE funded, patent-protected technologies without permission would seriously undermine DOE’s innovation pipeline and DOE’s ability to partner with universities and private industry to commercial DOE-funded technologies and earn a return on investments for taxpayers.” THANK YOU!

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