***Understand the Implications of Federal Circuit's San Disk v. STMicroelectronics Ruling***
CD of a Teleconference with an Q&A
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Conducted on Thursday, June 28, 2007
Now available on CD
This year, the legal landscape for patent licensing changed dramatically. The Supreme Court rejected the Federal Circuit's long-standing "reasonable apprehension of suit" test in MedImmune v. Genentech in January. Now, the Federal Circuit for the first time substantively applied that decision on March 26 in SanDisk v. STMicroelectronics.
In a decision that the Federal Circuit itself described as "sweeping change" to patent licensing law, SanDisk holds that a patent owner that asserts infringement against another entity to demand licensing and royalties cannot prevent the alleged infringer from then litigating the merits of these infringement assertions.
Listen as our panel of patent law specialists examine the Federal Circuit's first application of MedImmune and discuss the impact for patent holders and licensees - and best practices for IP asset owners to adapt to the latest developments in patent licensing law.
The panel includes:
Allen E. Hoover, Partner, Banner & Witcoff, Chicago, has substantial experience in intellectual property law, including patent, copyright and trademark. He negotiates and structures licenses and conducts related due diligence investigations. He handles patent infringement lawsuits in a wide range of technologies. He also provides counseling on complex IP matters, patent portfolio management, and patent and trademark prosecution experience.
Michael J. Sacksteder, Partner, Fenwick & West, San Francisco, focuses on patent litigation and litigation in other substantive areas of intellectual property law, including copyright, trade secret, trademark and unfair competition. His experience encompasses a variety of technological fields, including computer graphics, mainframe software tools, wireless messaging systems, semiconductors, optical networks and nucleic acid microarrays. He also has substantial experience in virtually all aspects of pretrial litigation, including claim construction in patent cases. He has participated in various forms of alternative dispute resolution.
Michael L. Kiklis, Partner, Akin Gump Strauss Hauer & Feld, Washington, D.C., focuses on software patent law and, in particular, software patent disputes, including litigation, cross-licensing and patent studies. He also creates and implements patent strategies for software/computer companies of all sizes.
The panel addressed these and other critical questions:
- What is the immediate impact of SanDisk for both patent holders and prospective licensees?
- What clues does SanDisk give patent owners and licensees on the continuing development of patent law in the wake of MedImmune?
- How does SanDisk alter how patent holders and licensees should approach patent licensing negotiations and agreements?
- What are the important considerations for pursuing infringement accusations and for filing declaratory judgments?
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