This week I’m reporting onTuesday’s Conference in Santa Clara CA: Patent Disputes 2011: Patent Reform and New Models for a New Market.
The audience, consisting of over 100 in-house counsel, outside counsel and company executives, proved to be a very rich landscape of thought leaders who are now playing in unfamiliar surroundings. Initial discussions surrounded the AIA Patent Reform Act and the impact affecting legal counsel in Patent Disputes. Such topics included: First to file, patent marking, damages and NPE lawsuits.
The first panel of patent litigators and corporate counsel agreed that there is a definite increase in pressure from corporate board members on their legal counsels to provide strategic direction for corporate patent portfolio monetization.
Such issues included:
- What should we do with our patent portfolio?
- What is the value of the company’s patent portfolio and what should be done moving forward both defensively and offensively?
- Why are we making such an investments vs. holding on to patent portfolio?
- Is there another way to convert our patents to value?
- What are the impediments that cause companies to hesitate or postpone monetization of patent portfolio?
The collective wisdom agreed that the impediments include:
- Cultural – Many companies have a traditional approach to grow IP portfolios, which is internal via their R & D departments.
- Going outside the company is an unchartered territory.
- Historical experience of being burned. Those companies are now gun shy having been sued by an NPE and now they do not want to partake of this process moving forward.
- Time Consuming – The process is time consuming due to company approval and buy-in.
- Transaction Value – Is it financially worthwhile to monetize?
- Physiological – Companies have not segmented their patent portfolio before, mainley caused by uncertainties.
In the afternoon session, Ocean Tomo’s own Andrew Carter, Managing Director of our Expert Testimony Practice, moderated a panel titled: Best Practices in A Patent Trial From the Judge’s And Bar Perspective.
Honorable Lee Yeakel, WD of Texas, and the Honorable Paul Grewal, ND of California, provided a lively exchange of war stories and antidotes from the bench’s perspective, which revealed a sea of change occurring at the CAFC.
Insular culture is being broken wide open with newly appointed judges along with additional appointments to come. The CAFC is looking for a new damages model without providing sufficient guidance beyond what not to do (i.e. 25% rule, EVM rule).
CAFC will likely increase its en banc decisions as it grapples with what standards it wants to adopt. More emphasis needs to be put on damages earlier in the case as lawyers spend far too much time on liability.
Lastly, the Americans Invent Act (AIA) will cause more work for lawyers over the next five years as the new landscape is developed. Judge Yeakel went a far to say— your (attorneys) job is not easy and will become more challenging as we move to a new area of patent litigation.
Following the conference and a reception hosted by Ocean Tomo, one of the attorneys commented that, as a result of this conference, he was able to “pick up several pearls of wisdom from the leading corporate and outside counsel panelists”.