"$17M for a Patent “Franchise”? - IPRs and “Oil States” Impact on Patent Owners"
Panel Discussion and Networking Lunch
Online registration ends Monday, June 18, 2018.
Prior to June 15:
LES Member: $40.00
LES Student Member: $25.00
After June 15:
LES Member: $50.00
LES Student Member: $35.00
Josh Malone (Bunch of Balloons) has spent $17M on patent litigation now totaling six patents, five patent suits, five PTAB petitions/trials, four preliminary injunctions, and eight appeals at the Federal Circuit. According to the U.S. Chamber of Commerce 2018 study, the U.S. innovation economy has declined from first to twelfth place, mainly because of uncertainties created by IPRs and patentable subject matter challenges in the USPTO and District courts.
Further uncertainties arise from the recent Supreme Court’s decision in “Oil States” which ruled that issued patents are not private property rights but rather public rights in the form of a franchise granted by the Government that can be withdrawn by executive branch action without resort to the courts.
What are potential consequences of patents as franchises? What happens to patents issued before the AIA? Are they also franchises subject to IPRs? “Oil States” also explicitly left open whether patents franchises can be confiscated with notice and the opportunity to be heard and with just compensation under the Fifth Amendment’s due process and takings clauses. Christy, Inc. has already filed a class action lawsuit alleging the PTAB violates takings and due process.
Most recently, the USPTO has proposed abandoning the “broadest reasonable interpretation” claim construction standard used in IPRs in favor of the “Phillips” standard used in Federal Court proceedings. Will “Phillps” make a difference at the PTAB?
At this June meeting, you will hear a panel of experts discuss the consequences of these developments on patents as business tools and on the innovation economy nationally and here in Silicon Valley.
Justin Hendrix, Partner, Finnegan, Palo Alto
Justin litigates IP cases that often involve technologies relating to medical devices, semiconductors, telecommunications, and consumer electronics. He is experienced in licensing matters and drafting settlement agreements to resolve disputes, and in all aspects of patent litigation, including discovery and depositions, motions practice, examining witnesses at trial, and post-trial briefing and appeals. Justin has litigated cases in forums across the U.S., including U.S. district courts, the U.S. International Trade Commission, the U.S. Court of Appeals for the Federal Circuit, state courts, and private arbitration. Much of the technical knowledge he has developed in his practice is built on his experience as an engineer in the U.S. Navy’s submarine force.
Ron Katznelson, Ph.D., Founder and President, Bi-Level Technologies
He is a technology entrepreneur, named inventor on 24 U.S. patents and applications and an independent scholar of the patent system. Bi-Level Technologies is an image and signal-processing technology company in Encinitas, CA. From 1990 to 2005, he was at Broadband Innovations, a San Diego digital RF technology company he founded, where he served as Chairman, Chief Technology Officer and a contributor to the DOCSIS® cable modem specifications. Prior to 1990, Ron was the Director, New Technology Development at the VideoCipher Division of Linkabit Corp., later acquired by General Instrument Corp., where he directed the R&D in Advanced Television Systems that led to the MPEG standard and managed the Division's intellectual property portfolio, patent litigation matters, and representation in industry groups and standards organizations. Ron also advises high technology startups.
Josh Malone, Founder, Bunch O Balloons
Josh quit his corporate job in 2006 to take his shot at the American (Inventor’s) Dream. Eight years later, savings depleted and orthodontics and college unfunded, he took one last swing before trudging back to the corporate world. And hit the homerun with Bunch O Balloons. His solution to the 63 year old problem of filling and tying water balloons instantly became the number one selling spring/summer toy. It was just as quickly knocked off resulting in a patent litigation now totaling six patents, five patent suits, five PTAB petitions/trials, four preliminary injunctions, and eight appeals at the Federal Circuit. He is currently a Fellow with US Inventor working to restore the patent system.
Moderator: Bob Weber, Managing Director, Patent Kinetics, LLC
Bob is an intellectual property professional, inventor, serial entrepreneur, senior executive, and management consultant. Patent Kinetics, LLC helps entrepreneurs and patent owners build and monetize valuable patent portfolios. Bob is an inventor with 29 issued U.S. patents and a number of foreign counterparts assigned to Intertrust Technologies (presently a joint venture of Sony and Philips) where he previously served as SVP Business and Technology Strategy. The Intertrust portfolio was characterized in the Wall Street Journal as a “once in a generation billion dollar licensing opportunity.” He has also been a Principal Consultant at Northeast Consulting Resources, Inc., where his consulting practice focused on the intersection of business and technology strategies; with a number of Fortune 500 company clients. Bob divides his time between Silicon Valley and Boston, serving on the IEEE Boston Entrepreneurs Network Advisory Board, organizing and moderating its “Legal Issues for Entrepreneurs” annual meetings, and has served as its Vice Chair, Programs. He also served on the organizing committee for the very successful ConnectedThings2015 and ConnectedThings2016 IoT conferences produced by the MIT Enterprise Forum.
MCLE: An application requesting MCLE credit for this activity is pending for approval by the State Bar of California.
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