Moving Away from Billable Hours in Patent Litigation

William Lee, patent litigator and co-managing partner at Wilmer Hale, will be discussing fixed fees and the state of patent litigation for clients and law firms on a webinar at November 12, 2009 at 2:00PM.

Intellectual Property Owners Association’s weekly one-hour webinar on current topics in IP, hosted by Pamela Sherrid, former editor of IP Law & Business magazine.

REGISTRATION FEE
$100 per user per webinar
To register, click: www.ipo.org/IPChatChannel

MOVING AWAY FROM THE BILLABLE HOUR
IN PATENT LITIGATION

Thursday, November 12, 2:00pm – 3:00pm ET

The demise of the billable hour has been predicted for years, but today’s economic woes are finally pushing alternative fee arrangements into the mainstream. Fixed fees seem an odd fit for high-stakes patent litigation, but that doesn’t mean they haven’t been tried. Hear how the experiment works out for clients and top law firms.

Speakers:

Kevin Rhodes is the President and Chief Intellectual Property Counsel of 3M Innovative Properties Company in St. Paul, Minnesota, where he is responsible for managing the intellectual property assets of 3M Company and its worldwide affiliates.

John Adkisson is a patent litigation partner in the Twin Cities office of Fish & Richardson. He has represented 3M in several cases, including 3M Innovative Properties Co. v. Avery Dennison Corp. which ended with a permanent injunction.

William Lee is a patent litigator and co-managing partner of WilmerHale. He has tried more than 50 patent cases to judgment and argued more than 30 appeals before the Court of Appeals for the Federal Circuit.

Raymond Van Dyke: Merchant & Gould partner in DC

Raymond Van Dyke is a partner at Merchant & Gould’s Washington, D.C. office and focuses his practice in technology and intellectual property counseling, procurement, licensing, and litigation.

Ray has nearly 20 years experience representing technology companies in the intellectual property area, including strategic counseling, patent and trademark litigation, expert witnessing, and IP licensing portfolio management. He represents domestic and international companies in addition to universities in the biotechnology, pharmaceutical, medical, chemical, software, financial services, telecommunications, Internet, voice over IP (VoIP), and digital industries.

Ray’s extensive technical background in both information-based and life sciences-focused technologies enables him to effectively counsel clients in emerging and converging disciplines, such as bioinformatics, cheminformatics, genomics, pharmacogenomics and personalized medicine, nanotechnology, proteomics, and computational analysis.

He represents clients in federal, state, and international intellectual property litigation, mediation, and dispute resolution in patent, trademark, unfair competition, copyright, antitrust, and trade secret cases. He also enforces and litigates intellectual property rights before the U.S. International Trade Commission and U.S. Customs, prepares clients for hearings before the Federal Trade Commission, and advocates intellectual property and regulatory positions before Senators and Representatives, domestic and foreign trade associations, and ambassadors.

Ray counsels clients in a variety of matters, including infringement, validity, freedom to operate, right to use, reissue, reexamination, appeals, artists’ rights counseling, and other patent and trademark opinion work.

His non-legal work in the software industry and during his graduate studies focused on a variety of cross-disciplinary software applications and techniques, including protein and molecular visualization, animation and modeling, computational optimization, graphics, stimulators, and virtual reality for pharmacological, biophysical, and biochemical research with real-time haptic interface with a robotic force-feedback arm (a nanomanipulator); modeling and analysis of steric forces in protein deformations; designing relational databases for complex proteins from X-ray crystallography data; designing enhancements to UNIX C-Shell; signal and image processing and pattern recognition; 3-D texturing; and SPICE modeling semiconductor chip architecture and performance.

Education

University of North Carolina

• J.D., 1990
• President, American Indian Law Student Association
• M.S., Computer Science, 1989
• B.S., Mathematics, summa cum laude, honors
• Minor in Classical Greek, 1985

Wilbur Wright College, Chicago, IL

• AA, with honors

Bar Admissions

District of Columbia
New York
New Jersey
Texas
Virginia (pending)
U.S. Patent and Trademark Office
U.S. Supreme Court
USCA – Federal Circuit
USCA – 2d Circuit
USCA – 3rd Circuit
USCA – 4th Circuit
USCA – 5th Circuit
Southern District of New York
Eastern District of New York
District of New Jersey
Northern District of Texas
Eastern District of Texas
District of Columbia
U.S. Court of International Trade
U.S. Court of Federal Claims

Professional Affiliations

Ray is active in a variety of legal and technical organizations, and also teaches at two universities. Chair, Greater Washington, D.C. Chapter of the Licensing Executive Society Chair, Emerging Technology Committee, American Intellectual Property Law Association

Speeches and Publications

Ray is a regular speaker to legal, university, and professional audiences on various technology, intellectual property protection, and litigation issues, both nationally and internationally. His recent presentations analyze Supreme Court cases affecting intellectual property rights, proposed changes and reforms to the U.S. patent system, nanotechnology, software patenting, ethics, International Trade Commission litigation and procedures.

Covidien ranked top innovator

MedicalDevices.com reports that Covidien, a leading provider of healthcare products, was ranked top innovator in the medical devices and services industry.

The Patent Board™, the official patent ratings partner of The Wall Street Journal,  ranked 122 companies in the industry by patent portfolio strength. The Scorecard is a tool to recognize that patent portfolios are measurable financial assets that can be market-value drivers.

Read more

Jury tells Microsoft to fork over $200M

A Texas jury sided with Toronto’s i4i and their US Patent 5,787,499 and ordered Microsoft to pay $200 million for patent infringement involving its Microsoft Office products.

i4i, a collaborative authoring and document-management software company, filed the case in March 2007. Karen Heater, President “felt vindicated” with the decision.

Samsung Writes Check to Spansion for $70 Million

Earlier this afternoon, Spansion announced that it will receive $70 million from Samsung to settle current patent litigation.  The original lawsuit was filed in November 2008, and was centered around flash memory which retains data when an electrical device is turned off.  In addition, the two companies will also license their respective patent portfolios, according to Barron’s.  However, the deal is still subject to bankruptcy court because Spansion has filed for Chapter 11.

The history of the dispute between Samsung and Spansion may only be a few months old, but in that time it has spanned across continents.  Following the Spansion lawsuit in November, Samsung filed a patent infringement complaint last January in Japan.  Yet, both lawsuits will be dismissed in accordance with the agreement, and neither company will admit liability.

Spansion shareholders enjoyed a nice boost after the deal was announced, as shares jumped 70%, to 23 cents.

Apple Issued Solar Power Patent

The U.S. Patent and Trademark Office has just released a series of newly issued Apple patents.  While this may not come as a surprise – as Apple seems to patent something new every week – one of those patents is of particular interest as it applies to solar power technology.

As reported by MacNN, the patent was filed in 2006 and is titled “Portable Devices Having Multiple Power Interfaces.”  The application states that this solar power technology could be applied to a wide variety of devices, from the iPhone to the MacBook.

Before getting too excited about this patent, more details will need to come to light.  Leaving a phone or computer in the sunlight may not be the best idea (especially in high temperatures), so it will be interesting to see how/if Apple integrates this technology into their products.

Tate & Lyle Suffer Sweetener Setback

Tate & Lyle, the sugar and sweetener company, suffered a setback late yesterday when the U.S. International Trade Commission upheld an earlier ruling against the British company.  According to Reuters, the ruling confirms a September 2008 decision that Tate had infringed on patents held by certain manufacturers of Chinese sucralose, a zero-calorie sweetener.

This decision will impact Tate as a fifth of their profits come from the sale of sucralose, which is sold under the Splenda brand name.  It’s rumored that the case against the Chinese manufacturers was filed to test Tate’s patents on the sweetner.

After the decision, Tate stated that they will review that ITC’s ruling and evaluate any appeal options.

Universities Provide Ideas, Receive Licenses

When people think of inventors, often times they focus on individuals, disregarding the support that those inventors may have received along the way.  However, it should not be forgotten how colleges and universities also play an integral part in advancing technology by playing a supporting role.

A recent article on OnlineAthens brought to light how innovations at American universities result in a multi-million dollar business.  For example, researchers at the University of Georgia developed a new type of Bermuda turf grass, named TifSport.  This is so cutting edge, that it will actually be used during the semi-final matches of the 2010 World Cup in South Africa. 

While the listed inventor is Wayne Hannah, UGA was able to speak with industries that may be interested in commercializing TifSport.  Then, UGA was able to license the product and collect large royalties when the product hits the market.  This process is repeated by many colleges and universities throughout the country, and several products can attribute their roots to the collegiate level.

The top 10 list of Universities, as reported by the Association of University Technology Managers, are listed below.  In addition to the name of the school, the list also includes the number of deals they amassed in fiscal year 2007:

1. University of California System – 231

2. University of Washington – 203

3. University of Georgia – 125

4. Massachusetts Institute of Technology – 116

5. Iowa State University – 113

6. North Carolina State University – 106

7. Purdue Research Foundation – 99

8. University of Michigan – 91

9. University of North Carolina, Chapel Hill – 89

10. Stanford University – 88

While this list is impressive, it should be noted that the University of California System actually represents a number of schools and not a single university.

New Ford Engine Patent

A recent patent filing by Ford reveals that the automobile company has developed a new V8 engine.  The application, filed on March 26, describes a pushrod 4-valve per cylinder unit with inboard exhaust and outboard intakes, as well as turbocharging.  As Autoblog.com reported, this engine may actually be the new Scorpion diesel V-8, which will replace the Navistar engines used in Super-Duty trucks.

The application states that this engine focuses on the intake/exhaust layout and valvetrain configuration.  Also, the text of the application implies that this engine could be used for either gasoline or diesel engines.  For further reading on the patent application, click here.

However, this engine isn’t the first with this type of manifolding setup.  Recently, BMW came out with the 4.4-liter turbo V8, and GM produced the 4.5 liter diesel.  However, GM cancelled their model shortly after, as bankruptcy is probably more of an issue for that company than their newest diesel engine.

Pfizer Combating Patent Loss with New Drug

Pfizer knows that the days are numbered for its $1.2 billion drug, Detrol.  With Detrol’s main patent set to expire in September 2012, and patents on Detrol LA due to end between 2012 and 2020, Pfizer is looking to launch a new drug to replace the forthcoming loss of revenue.

As reported by Crain’s New York Business, Detrol is used to fight over-active bladder.  Pfizer’s new drug, Toviaz, is structurally similar to Detrol, but it has two doses instead of one.  Pfizer officials hope this characteristic will give physicians and patients more flexibility in treatment for the drug’s efficacy and tolerability.

The extended-release formulation of Detrol, called Detrol LA, is currently the market leader, with a 49% share.  But Pfizer is hoping Toviaz can take its place, and the company is actually introducing a printed support plan called “YourWay.”   This plan will be handed out to patients with sample packs of the drug tucked inside.  Pfizer is hoping that this idea will drum up awareness for the condition in 10 markets, including Boston and Atlanta. 

We’ll see if it works.

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