1. A day in the life of a patent lawyer
Bradley IM – Fall 2018
Steven L. Baron

2. Patent Basics - Refresher
Elements of Patentability
New
Useful
Non-obvious to one who is skilled in the art
Patent owner can prevent others from making, using or selling a device the embodies the patent.
Patent owner need not use the patent to prevent others from using the patent.

3. A word about patent cases after Alice
Alice Corp. Pty. Ltd. v. CLS Bank, Int’l – 2014
Two-part frame work to determine patentabilty:
(1) Determine if the claim at issue is directed toward an abstract idea; and, if so,
(2) examine the elements of the claim to determine whether it contains an “inventive concept” sufficient to transform the abstract idea into a patent-eligible application.

4. A word about patent cases after Alice
Increase in challenges to validity of software patents
Defendants file motions to dismiss and motions for summary judgment
Courts have ruled in favor of defendants 60-65% of time

5. Case Example 1 Eclipse IP LLC v. Dick Blick Holdings, Inc. (ED Texas)
Parties:
Plaintiff = Eclipse (a/k/a “patent troll”)
Defendant = Dick Blick (art supply store)

6. Case Example 1 Are there other parties who may be responsible?
What is “indemnification”?
Who must indemnify?

7. Case Example 1 What is the patent?
US 7,876,239 – Secure Notification Messaging Systems and Methods Using Authentication Indicia

8. Case Example 1 Why is the case in Texas?
“Rocket Docket”
What are the challenges in defending a patent suit?
How did this suit resolve?

9. Case Example 2 Human Sciences v. Fed Ex Corp. Human Sciences owns:
‘138 and ‘037 Patents – System and Method for monitoring a security of an asset
‘479 Patent – Global Intelligent Remote Detection System
FedEx uses SenseAware Devices inside packages to monitor and track their security status
In 2016, Human Sciences sues Fed Ex for patent infringement in federal court in Chicago

10. Case Example 2 What is patent infringement? Literal infringement
Each element in of patent is literally infringed
Doctrine of equivalents
One or more elements of patent may not be literally infringed but are substantially the same

11. Case Example 2 What did Human Sciences seek:
Declaration of Infringement
Damages

12. Case Example 2 How did Fed Ex respond: Filed motion to dismiss
Filed answer, defenses and counterclaim (seeking to find the patents invalid or not-infringed)
Filed motion to transfer venue to Tennessee

13. Case Example 2 What happened?
Case transferred to Tennessee (a more convenient forum)
Case dismissed because Human Services admitted that it lacked ownership of the patents.
Fed Ex moved to hold Human Services in contempt.
The case was dismissed with prejudice.

14. Case Example 2 Litigation takes time
Case filed December 2016
Case dismissed August 2018
Procedural battles often win the day
Where to fight
Who owns patent

15. Take-Aways for Business Method Patent Litigation
For Plaintiffs:
Risk of invalidity
Cost of litigation
Procedural Traps
For Defendants
Trolls abound
Cost of litigation
Risk of owing damages and attorneys fees