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 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.

Medtronic accused AGA of infringing a pair of patents with AGA’s Amplatzer Occluder and vascular plug product lines. The decision also calls for AGA to pay 11% royalties to Medtronic on future U.S. sales of the devices through 2018.

AGA had a different outlook on the ruling. In a press release, AGA stated it looks forward to the second, non-jury phase “dealing with other issues of invalidity and unenforceability of the Medtronic patents”. Further litigation is slated to resume later this year and could affect the final outcome. The Medtronic patents in question cover self‐expanding medical devices using a metal alloy such as Nitinol, a shape memory alloy containing nickel and titanium that expands to its original shape after deployment.

The decision is a rare win for device giant Medtronic as recent weeks have brought a string of tough decisions to the company dockets. These include a nearly $180 million judgment against it in a pedicle screw patent dispute with DePuy Spine Inc., the recall of nearly 60,000 insulin infusion sets, its inclusion in a “qui tam” whistleblower lawsuit along with six other firms that stand accused of promoting the off-label use of microwave cardiac ablation products and bilking the Medicare system.

Also in the news, Medtronic made a $400 million settlement payment to Abbott Laboratories, preventing the companies from suing each other over heart stents or delivery systems for at least 10 years. The new agreement follows earlier deals this year resolving heart stent patent disputes with Boston Scientific and Johnson & Johnson, two other stent rivals. Medtronic now believes it has resolved or settled “substantially all” intellectual property litigation surrounding stent design and delivery.

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

SteveB isn't worried about the case

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.

Demand for antiviral increased in 2004 with the threat of the virulent bird flu, and so all 50 states and many other nations now have large enough  stockpiles of the drug for 220 million people. Roche has stated it could ramp up production to 400 million courses a year.

The Obama administration said it would seek $1.5 billion from Congress to combat the threat of a swine flu pandemic and is in talks with Roche about increasing production. Those with high fevers and consistent symptoms within 48 hours of illness are appropriate patients to receive the drug. Other vulnerable populations such as the elderly and home bound are also being considered candidates for the antiviral.

The flu sweeping Mexico and now appearing in several other countries is a strain never seen before by experts; it is a mix of genetic material from humans, birds and pigs. CDC officials told a Senate hearing Tuesday the agency was considering whether to develop a vaccine for just this strain of flu or a combination of flu viruses.

Gilead Sciences, Inc., Foster City, CA, is the patent holder, (Patent #5763483 for oseltamivir) having been assigned it by the five named researchers who invented this particular compound. Gilead Sciences’ patent on oseltamivir will not expire until December 26, 2016. Originally discovered by Gilead, Tamiflu was licensed to Roche for late-phase development and marketing. Roche produces and markets the anti-viral medication oseltamivir (as “Tamiflu®”)

Roche has made 5 million courses of Tamiflu available to the World Health Organization and has licensed other manufacturers to make the drug. Earlier this month, Gilead was denied patent protection for Tamiflu (formally known as oseltamivir) by India’s Patent Protection Office, and so the Indian pharmaceutical maker Cipla Ltd. has since moved its own version of the drug into production.

Similar issues arose with the 2005 avian flu threat, when Taiwan amidst a rising threat and frustrating negotiations with Roche, eventually moved forward with production of a generic version of Tamiflu. As a show of good faith, Taiwan’s National Health Research Institutes did not market the drug and  limited it to public use.  Arguments were that the NHRI could produce the drug more quickly and at lower cost, and being that negotiations fell apart they moved forward with their generic in the interest of their people. These past and present issues raise concern over the handling of these situations by the pharmaceutical Roche, still trying to strongly enforce patent rights abroad when threats are imminent. Only time will tell but let us hope that all parties involved handle the delicate situation and more delicate threat appropriately.

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.

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.

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.

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.