Intellectual Asset Management Magazine (IAM) today published a short excerpt of my and Doug Clark’s forthcoming, longer piece on China’s anti-monopoly law (AML) and how it has been applied to standard essential patents (SEPs). The published excerpt concerns China’s National Development and Reform Commission’s (NDRC) investigation of Vringo undertaken at the behest of ZTE. The piece focuses on two hair-raising meetings I had with NDRC officials in Beijing where all manner of explicit and implicit threats to my life, liberty, and property were made. Read more
Over the course of my 20+ years practicing law, I have had the honor of working with many individuals at the cutting edge of all aspects of intellectual property. I consider myself very lucky that most of these folks, in addition to being luminaries in the industry, are good people and have welcomed me into their professional world with open arms. To celebrate these individuals, I am inaugurating a series of interviews. Read more
This article is the next piece of my series discussing patent demand letters. Part one, reviewed the initial considerations and steps one should make upon receiving a patent demand letter. Part two explored the subject or content of the letter — i.e., what is the sender asking for? Part three addresses evaluating the merits.
At this stage it might not be worthwhile to perform a full analysis of the letter’s claims, but it is definitely worth performing at least a high-level review. Read more
This paper was originally written as a source material for my presentation at the ABA’s 2017 IP West as part of the The China Paradox – October 11-12, 2017, Long Beach, CA, and subsequently edited and supplemented.
I. The Vringo Background
The following paper is a short history of the thirty-nine-month battle between Vringo, Inc. and ZTE Corporation. Vringo (now called FORM Holdings) was a technology company that became involved in the worldwide patent wars. The company won a 2012 intellectual property lawsuit against Google, in which a U.S. District Court ordered Google to pay 1.36 percent of U.S. AdWords sales. Analysts estimated Vingo’s judgment against Google to be worth over $1 billion. The Court of Appeals for the Federal Circuit overturned the District Court’s ruling on appeal in August 2014 in a split 2-1 decision, which Intellectual Asset Magazine called “the most troubling case of 2014.” Vingo also pursued worldwide litigation against ZTE Corporation in twelve countries, including the United Kingdom, Germany, Australia, Malaysia, India, Spain, Netherlands, Romania, China, Malaysia, Brazil and the United States. The high profile nature of the intellectual property suits filed by the firm against large corporations known for anti-patent tendencies has led some commentators to refer to the firm as a patent vulture or patent troll. Read more
The seminar is designed for IP attorneys, licensing professionals, and technologists interested in gaining valuable insights into the why and how of SEP development and licensing. It will be taught by a renowned former jurist, a respected licensing executive, and an innovative IP strategist who will bring their perspectives to bear on this fascinating field.
Read more about the seminar and register here.
In my previous article, I discussed the initial considerations and steps one should make upon receiving a patent demand letter. Particularly, identifying the allegations and sender. In part two, I discuss the subject or content of the letter — i.e., what is the sender asking for? As with most things, infringement letters come in a number of flavors. Read more
While not as prevalent as it may have been in the go-go days of the early 2000s, in certain industries in the United States, it is only a matter of time before a company will receive a patent demand or cease and desist letter. Read more
This past April, I participated in a 7-person panel at the Fordham IP Institute comprised of lawyers with significant interest in the telecommunications industry. The primary focus of the discussion centered around the various issues facing Qualcomm within the context of antitrust law, as well as with a broader perspective. The discussion was timely in light of the current US trade issues with China where Qualcomm appears to be a major bargaining chip. Read more
During the course of a United States litigation — whether under the new, federal Defend Trade Secrets Act (DTSA) or the older state-adopted Uniform Trade Secrets Act (UTSA) — it is required that a plaintiff provide a description of the trade secrets allegedly stolen. What constitutes an adequate identification of the stolen or misappropriated trade secrets depends on the nature of the trade secrets, the facts of the case, and the relevant jurisdiction. Read more
Contrary to popular belief — especially among business owners — trade secrets are not only found in top secret, highly-secure research labs. Rather, almost every business possesses trade secrets, regardless of whether the business is small, medium or large.
A trade secret is anything that is:
- Not generally known or readily accessible to the relevant business circles or to the public;
- Gives some sort of potential or actual economic benefit to its owner where the benefit derives from the fact that the thing is not generally known, and not just from the value of the thing itself; and
- Is subject to “reasonable steps,” depending on the specific circumstances, to keep it secret.
Historically, trade secrets, if even considered, were treated as an afterthought. If there was some sort of non-disclosure agreement on file somewhere, companies were satisfied and turned their attention to patents, copyrights, and designs.
This attitude is changing for a number of reasons.