Smallest Saleable Patent Practicing Unit (SSPPU) – Another Court Affirms the Obvious

In the topsy-turvy world of Standard Essential Patent (SEP) litigation, a court acknowledging the obvious often counts as news. Thus, when Judge Gilstrap in EDTX noted the other day in an order before trial (Doc 376) that the ETSI IPR policy does not require royalties being calculated on use by the smallest saleable patent practicing unit (SSPPU) as the base, it generated breathless headlines (Bloomberg).

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China’s anti-monopoly law as a weapon against foreigners

I am very pleased I can now share the article that I co-authored with Doug Clark. The article first appeared in IAM Issue 92, published by Globe Business Media Group – IP Division. To view the issue in full, please go to www.IAM-media.com

To read the article please click here.

Trade Secret Theft in China

trade-secret-theft-in-china

By David Cohen & Donal O’Connell

The headlines:

“China national charged with stealing trade secrets” – U.S. Justice Department

“Chinese battery expert is charged with stealing trade secrets from US employer, as he prepared to join mainland firm” – South China Morning Post

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John Marshall Law School SEP Licensing Program

In October I was honored to be part of the John Marshall Law School IP Executive seminar program run by the inestimable Daryl Lim, and to be part of an all-day, three-person panel on Standard Essential Patents (SEPs). My co-panelists were Graham Bell of Cubicibuc Ltd. and Randall Rader, former Chief Judge of the US Court of Appeals for the Federal Circuit.

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Meet the IP Thought Leaders: Robert Colao

Meet the IP Thought Leaders: Robert Colao by David L. CohenOver the course of my 20+ years practicing law, I have had the honor of working with many individuals who are involved 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.

My next interviewee, Robert Colao, is the founder and President of radiusIP®, Inc.  He is currently also the Chief Licensing Executive for SIPCO, LLC and IP Co, LLC, and is responsible for the overall licensing efforts and business aspects of the ESSENTIAL WIRELESS MESH™ portfolio/licensing program. Read more

Patent Demand Letters – Escalation or Litigation (Part 5)

Patent Disputes Part 2 - Escalation or Litigation by David L. CohenIf the patent demand letter situation escalates and you may be sued for infringement, you have options to consider.

  1. Consider filing a lawsuit for declaratory judgment (DJ).

In certain cases you may file a lawsuit against a patent owner for declaration that you are not infringing on any valid patents. Knowing the patent owner’s litigation history is crucial when considering this option. Read more

Using IP to Access Funding

Very interesting study from the UK Intellectual Property Office and the British Business Bank about using IPR (at least in part) as collateral for business loans.

Very odd, however, is that there is NO mention of trade secrets at all.  Which is quite surprising actually.  While analyzing trade secrets usage as collateral is (understandably) more challenging that for registered IPR, not to even mention it seems like a major flaw in the study.

Regardless, the conclusion seems promising and there is a lot of data included in the annexes to review.

Although there remain significant challenges to the
development of a sustainable commercial IP-backed loan
product, the lower rates of default and loss amongst
IP-rich firms suggests lenders could at least lower the
cost of lending to IP-rich firms, stimulating demand for
debt in this segment. Likewise there are opportunities to
stimulate the supply of finance by supporting the use of
intangible assets as collateral

https://www.british-business-bank.co.uk/wp-content/uploads/2018/10/502-IP-Report_singles.pdf

More on trade secret and company director liability

Donal O’Connell and I recently posted an article on trade secrets and director liability.   https://kidonip.com/news/company-directors-duties/

A great piece published by Columbia University Law School earlier this year http://clsbluesky.law.columbia.edu/2018/04/04/wachtell-lipton-discusses-risk-management-and-the-board-of-directors/  provides a good summary of the many issues related to risk management and the board of directors.

Another piece  https://pomerantzlawfirm.com/publications/2018/2/8/recent-derivative-actions-highlight-directors-obligation-to-monitor-and-prevent-employee-misconduct discusses a recent case In re Wells Fargo & Company Shareholder Derivative Litigation where the court refused to dismiss a shareholder derivative action against the board of directors holding that the numerous allegations of “red flags” of which the board was aware regarding the practices of the company bolstered the conclusion that the director defendants consciously disregarded their fiduciary duties to the company. http://www.wlrk.com/docs/InreWellFargoOrderonMotiontoDismissenteredMay42017.pdf

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Company Director’s​ Duties With Respect to Trade Secret Asset Management

Trade secret’s new found prominence:

As we both have written previously, the changing nature of technology, product development and sales, and the patent enforcement landscape, have given trade secrets a new-found prominence.

Trade secrets are now becoming a much more significant part of a company’s value. As a result, trade secret asset management is becoming (and if not, it should become) a regular part of company board discussions and review.

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Trade Secrets: What Are They Worth?

Owners of intellectual property are often rightfully curious as to the value of their IP. Anyone who has tried to assign a value to patents outside of a litigation context and in the absence of robust licensing market for similar patents knows very well how challenging it is. Figuring out the value of trade secrets, on the other hand, is not (always) as hard.  This is because what most trade secrets “are” on an ontological level are more readily ascertainable that patents. What is in the bills of materials; who are on the customer list; the process for connecting the machinery; the history and results of failed experiments; and last year’s profit margins are all knowable by a company in a way that the scope of a patent is not.[1] Because of this fact, it is much easier for a company to correlate a particular trade secret to the value-add that the trade secret brings to the company’s business. Moreover, whether a trade secret is in fact a protectable right is much more in the hands of the rights-owner that a patent. Patents, globally, have a high invalidation rate from third party prior art,[2] whereas whether trade secrets are generally invalidated only when the owner did adequately protect the trade secret as a secret.

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