1. Lessons learned – Lab IP Enforcement
erhtjhtyhy
Lessons learned – Lab IP Enforcement

2. Agenda
BACKGROUND
What
Who
Where
When
Why
How

3. Background
Dispute Resolution

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

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

6. 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

7. Licensee Investments in U.S.

8. 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

9. 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

10. 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

11. 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

12. Why
Two Presidents Recognized Contributions of ANL Team

13. 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

14. 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

15. 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

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

17. 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

18. 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!

19. Any questions