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Divided Patent Infringement: Emerging Challenges

Strategies for Claim Drafting and Prosecution to Maximize Enforcement of Patent Rights

Recording of a 90-minute CLE webinar/teleconference with Q&A

Conducted on Thursday, April 1, 2010
Recorded event now available

This CLE webinar will discuss how courts are treating divided infringement claims and the actions patent owners and counsel can take in claims drafting to anticipate such infringement. The panel will outline strategies for prosecution and litigation of divided infringement allegations.

Description

The law of patent infringement addresses infringement by a single actor. However, modern technology has exposed a loophole in the statutory infringement scheme. Where patents require action by more than one actor, divided infringement claims are difficult to prove.

Recent decisions by the Federal Circuit raised the bar for proving infringement. Patent owners and counsel must take proactive steps in drafting patent claims to prevent divided infringement to successfully enforce patent rights.

When facing divided infringement prosecution or litigation, counsel must carefully advise the patent owner about the risks of such claims, and consider matters such as reissue applications, level of control of the alleged mastermind, and alternatives to litigation in U.S. courts.

Listen as our authoritative panel of IP attorneys examines court treatment of divided infringement claims and discusses steps that patent owners and counsel can take in drafting claims to protect patent rights. The panel will offer strategies for prosecution and litigation where divided infringement is alleged.

Outline

Court treatment
1. Pre-BMC case law
2. BMC Resources v. Paymentech (Fed. Cir. 2007)
3. Muniauction v. Thompson Corp. (Fed. Cir. 2008)
4. Emtel v. Lipidlabs (S.D. Tex. 2008)
5. Global Patent Holdings v. Panthers BRHC (S.D. Fla. 2008)
6. Keithley v. Homestore.com Inc. (N.D. Cal. 2008)
7. Centillion Data Systems v. Quest Corp. (on appeal Fed. Cir. 2010)
Patent claim drafting considerations
1. Steps in each claim satisfied by single actor
2. Claims for systems
3. Products of patented processes – 35 U.S.C. section 271(g)
Post-issuance considerations
1. Filing a reissue application
2. Pleading control of the “mastermind”
3. Targeting “control” issue in discovery
4. Alternatives to filing in district court

Benefits

The panel will review these and other key questions:

How are the federal courts treating the issue of divided infringement?
If a patent application is being drafted, what steps should counsel take to avoid divided infringement problems?
If a patent has been issued, what can be done to minimize the likelihood of divided infringement?
What are the key considerations for counsel when preparing for litigation on divided infringement claims?

Faculty

Michael A. Cicero, Member
Womble Carlyle Sandridge & Rice, Atlanta

He focuses on intellectual property litigation exclusively. He handles patent infringement litigation and participates in Markman hearings, trials, and motion proceedings. He has also prepared and prosecuted patent applications.

Richard S. J. Hung, Partner
Morrison & Foerster, San Francisco

He focuses on intellectual property litigation and counseling. He has litigated a variety of technology matters and advises clients on strategic patent issues. He also has been involved in trade secrets litigation in state court and in commercial arbitration before the American Arbitration Association.

Stephen Schreiner, Partner
Goodwin Procter, Washington, D.C.

He focuses on all aspects of intellectual property law including patent litigation, patent prosecution, counseling and due diligence related to electronics, signal processing, software, e-commerce, business methods, digital television, telecommunications, interactive media, the Internet and other areas.

Ordering

Online CLE

Includes audio streaming of full program plus handouts (available 24 hours after live seminar).

CLE: Pre-approved for participatory or non-traditional/alternate format credit in: CA, HI*, NY*, WV*. Pre-approved for self-study credit in: AK, AZ, FL, MO, MT, TX, UT, VT, WA.
Upon request, also available in: CO, CT*, GA, ID, KY, LA, ME, NC, ND, NE, NH, NM, NV, OR*, SC, TN, WI*, WY. If you are applying for credit in one of these states, make sure to select those states when placing your order.
(*Indicates that Strafford must report attendance.)

Online CLE Audio $148.50
Available 24 hours after the live event