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Lighting Fixture Design 2014 ”Patent battles: fight or pay ?” by Henrik Villumsen

Lighting Fixture Design 2014 ”Patent battles: fight or pay ?” by Henrik Villumsen. How to obtain the optimum outcome if faced with an approach over patent infringement (or ”licensing opportunity…”). T he usual disclaimer…. Half an hour available Only flavour of topic possible

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Lighting Fixture Design 2014 ”Patent battles: fight or pay ?” by Henrik Villumsen

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  1. Lighting Fixture Design 2014”Patent battles: fight or pay ?”by Henrik Villumsen How to obtain the optimum outcome if faced with an approach over patent infringement (or ”licensing opportunity…”)

  2. The usual disclaimer… • Half an hour available • Only flavour of topic possible • Only in general, non-exhaustive etc.: • Basically two avenues: ”pay” or ”fight” • Focus on how to ”fight” • How to ”pay” (or ”stop”) is simple • Power point not a core competence

  3. Is ”Pay” the best outcome ? • Why pay (or stop): - put it behind youand focus on your business • minimum ressources required • budget security • patent infringement IS illegal • fighting may be (very) costly (too)

  4. ”Fight” • Why fight: • you don’t infringe • you can’t (easily) afford to pay (what’s asked) • you don’t WANT to pay (what’s asked) • ”what patents ? They were wearing diapers when we first did this” • ” – and they know it, too”

  5. If (some extent of) fight • Not without risk: • you may loose (anyway), and bigger • it may end up being more expensive • it may tie up ressources in vain • it may deflect your focus • it may create uncertainty for your business

  6. How to fight ? Leverage ! • Buy time, investigate, maybe counter-attack • Why and how buying time ? • probably discount for this period • the patent holder may get tired • you can investigate (other) defences • do nothing (for a while), then ask for time

  7. Investigatedefences • Analyse nature of communication: how far up the escalation ladder is it (now) ? • Are my products infringing ? • Are the patents alive, valid and enforceable ? • Are the license terms reasonable/legal ? • How strong is the patent holder ? • Does he infringe any of YOUR patents ?

  8. Defences • Infringement: compare the claims with your products – if no claim charts from patent holder, ask for them (make him work) • Duration of patents yet: are they running out in the foreseeable future ? • Are the patents valid/enforceable ? Look for invalidity, inequitable conduct, competition law-issues

  9. Invalidity: non-novelty/obviousness • Basically the invention made public - prior to the filing date of the patent - in a way enabling a ”person, skilled in the art”, to identify it out or to whom it would have been obvious • Prior art oftentimes your own – or other’s – products • Obviousness-standard reset in the US in 2007

  10. Inequitable conduct/competition law • Excessive number of, inconsistent or improper patents, priority claims, claims, continuations, divisionals, provisionals, prior art-citation • Claims, previously opposed, but now asserted • Claims, previously rejected, but now filed again with no fact disclosure • Claims, known from a due dilligence or from the source of prior art to be invalid

  11. Un-reasonable/illegal license terms • Is the royalty rate/structure reasonable/legal ? Similar to competitor’s ? • Does the royalty reflect the contribution of the patented technology to the product ? • Is back-license mandatory ? • Does an attack on the patents mean risk of termination of agreement ? • Requirement to disclose future product portfolio ? Customers ? Suppliers ?

  12. Nature of patent holder • Wherewithal • What outcome would be acceptable to him ? • History of approaches/litigation • Where on his radar are you ? • How well is he organised for this ?

  13. Own/other’s patents infringed ? • Any patents, (potentially) owned or licensed, that are infringed by the patent holder ?

  14. Counter-attack • Re-examination • Litigation - declaratory judgement • Competition-/anti-trust authorities (abuse of market domination ? Equal treatment of licensees, incl. any owned by patent holder ?) • Roundup support • Public

  15. ”Optimum outcome” ? • Pay and get over with ? • Investigate/counter-attack to leverage and (maybe/probably) pay less/nothing ? • Wipe out patents and destroy patent holder’s revenue stream ? • Load the patent holder with cost ? • Expose the patent holder to scrutiny/public ? It all depends on everything !

  16. My time is up ! • Thank you for attending ! • Feel free to contact me • Presentation uploaded at: www.henrik-villumsen-consult.com/intelligent-lighting.html

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