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Lighting Fixture Design 2014 ”Patent battles: fight or pay ?” by Henrik Villumsen How to obtain the optimum outcome if faced with an approach over patent.

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Presentation on theme: "Lighting Fixture Design 2014 ”Patent battles: fight or pay ?” by Henrik Villumsen How to obtain the optimum outcome if faced with an approach over patent."— Presentation transcript:

1 Lighting Fixture Design 2014 ”Patent battles: fight or pay ?” by Henrik Villumsen How to obtain the optimum outcome if faced with an approach over patent infringement (or ”licensing opportunity…”)

2 The usual disclaimer… Half an hour available Only flavour of topic possible Only in general, non-exhaustive etc.: Basically two avenues: ”pay” or ”fight” Focus on how to ”fight” How to ”pay” (or ”stop”) is simple Power point not a core competence

3 Is ”Pay” the best outcome ? Why pay (or stop): - put it behind you and focus on your business -minimum ressources required -budget security -patent infringement IS illegal -fighting may be (very) costly (too)

4 ”Fight” Why fight: -you don’t infringe -you can’t (easily) afford to pay (what’s asked) -you don’t WANT to pay (what’s asked) -”what patents ? They were wearing diapers when we first did this” -” – and they know it, too”

5 If (some extent of) fight Not without risk: -you may loose (anyway), and bigger -it may end up being more expensive -it may tie up ressources in vain -it may deflect your focus -it may create uncertainty for your business

6 How to fight ? Leverage ! Buy time, investigate, maybe counter-attack Why and how buying time ? -probably discount for this period -the patent holder may get tired -you can investigate (other) defences -do nothing (for a while), then ask for time

7 Investigate defences Analyse nature of communication: how far up the escalation ladder is it (now) ? Are my products infringing ? Are the patents alive, valid and enforceable ? Are the license terms reasonable/legal ? How strong is the patent holder ? Does he infringe any of YOUR patents ?

8 Defences Infringement: compare the claims with your products – if no claim charts from patent holder, ask for them (make him work) Duration of patents yet: are they running out in the foreseeable future ? Are the patents valid/enforceable ? Look for invalidity, inequitable conduct, competition law-issues

9 Invalidity: non-novelty/obviousness Basically the invention made public - prior to the filing date of the patent - in a way enabling a ”person, skilled in the art”, to identify it out or to whom it would have been obvious Prior art oftentimes your own – or other’s – products Obviousness-standard reset in the US in 2007

10 Inequitable conduct/competition law Excessive number of, inconsistent or improper patents, priority claims, claims, continuations, divisionals, provisionals, prior art-citation Claims, previously opposed, but now asserted Claims, previously rejected, but now filed again with no fact disclosure Claims, known from a due dilligence or from the source of prior art to be invalid

11 Un-reasonable/illegal license terms Is the royalty rate/structure reasonable/legal ? Similar to competitor’s ? Does the royalty reflect the contribution of the patented technology to the product ? Is back-license mandatory ? Does an attack on the patents mean risk of termination of agreement ? Requirement to disclose future product portfolio ? Customers ? Suppliers ?

12 Nature of patent holder Wherewithal What outcome would be acceptable to him ? History of approaches/litigation Where on his radar are you ? How well is he organised for this ?

13 Own/other’s patents infringed ? Any patents, (potentially) owned or licensed, that are infringed by the patent holder ?

14 Counter-attack Re-examination Litigation - declaratory judgement Competition-/anti-trust authorities (abuse of market domination ? Equal treatment of licensees, incl. any owned by patent holder ?) Round up support Public

15 ”Optimum outcome” ? Pay and get over with ? Investigate/counter-attack to leverage and (maybe/probably) pay less/nothing ? Wipe out patents and destroy patent holder’s revenue stream ? Load the patent holder with cost ? Expose the patent holder to scrutiny/public ? It all depends on everything !

16 My time is up ! Thank you for attending ! Feel free to contact me Presentation uploaded at: lighting.html


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