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Steps to Take if You Receive a Patent Demand Letter (Part 3)

Steps to Take if You Receive a Patent Demand Letter (Part 3) by David L. Cohen

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

A Short History of Vringo’s Battle with ZTE

A Short History of Vringo’s Battle with ZTEThis 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.[1] 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.[2] 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,[3] which Intellectual Asset Magazine called “the most troubling case of 2014.”[4] 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.[5] 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.[6] Read more

Standard Essential Patents: What Every IP Attorney and In-house Counsel Should Know Seminar

Standard Essential Patents: What Every IP Attorney and In-house Counsel Should KnowDavid L. Cohen is thrilled to be a panelist at the Standard Essential Patents seminar for IP executives at the John Marshall Law School in Chicago, IL.

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.

Steps to Take if You Receive a Patent Demand Letter (Part 2)

Steps to Take if You Receive a Patent Demand Letter (Part 2) by David L. CohenIn 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

Steps to Take if You Receive a Patent Demand Letter

Steps to Take if You Receive a Patent Demand Letter by David L. CohenWhile 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

The Importance of Trade Secret Metadata at a Trade Secret Misappropriation Court Case

The Importance of Trade Secret Metadata at a Trade Secret Misappropriation Court Case by David L. CohenContrary 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.

Read more

Will the IoT Patent Wars be like the Smartphone Wars? Part 2

Will the IoT Patent Wars be like the Smartphone Wars? Part 2 by David L. CohenIt is worth noting that many of the use cases for IoT that are currently receiving much attention (like connected cars), likely won’t fall into litigation because of SEP enforcement challenges. Frankly, I don’t see a scenario where the number of cars being sold and the proportionate value that IoT will bring to those cars (with the possible exception of self-driving cars) are such that high value licensing will make sense. On a volume basis, a connected car manufacturer like BMW probably sells fewer cars than the smallest smartphone manufacturer and the absolute value of any apportioned royalty base is likely smaller than that of a smartphone. Additionally, it is worth noting that many of the higher value IoT products and services will have wireline connections to the Internet, and wireline has traditionally had a less contentious licenses ecosystem than wireless connections. Read more

Will the IoT Patent Wars be like the Smartphone Wars?

I believe we may be due in the next two to three years for a large-scale re-eruption of the patent wars that have been a constant presence in the telecommunications industry since at least 2005. Unlike the prior iterations of those wars, I believe these wars will not only be international, but much of their driving force will occur ex-USA.  Moreover, they will be across multiple industries. They will be much more impacted by direct government policy and will be much broader in impact than just mobile cell phones and terminals.

I believe that the playing field of this war will be the Internet of Things often abbreviated as IoT. Read more

You’ve Decided to Conduct a Trade Secret Audit. Now What? Part 2

You’ve Decided to Conduct a Trade Secret Audit. Now What? Part 2 by David L. Cohen{5:35 minutes to read}  We all know what a ‘trade secret’ is, but legally speaking let’s be clear. And how about a ‘trade secret audit’? It’s probably safe to say it’s a review of all policies, procedures, and agreements in place surrounding a company’s trade secrets, to ensure they are in accordance with current best practices, in order to legally protect company intellectual property (IP) and assets.

There are five key areas of focus that a company performing a trade-secret audit must consider as they navigate this crucial undertaking. The following article outlines the five areas in full detail. Read more