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A panel of experts discussed the concept of “freedom to operate” in the context of evaluating and mitigating third party patent infringement risk at a recent OCTANe OC event. The discussion focused on startup companies, and the topics included: How to analyze the third party patent landscape; How to set an appropriate budget based on the company’s objectives and milestones; Understanding the impact of litigation on the company; What to do if the company is sued.
Citation preview
Is “Freedom to Operate” Mission Impossible?
February 21, 2013
Irvine, CA
The recipient may only view this work. No other right or license is granted.
2 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
“FREEDOM TO OPERATE”
Can you make, use and sell your invention without being sued for patent infringement?
3 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
INFRINGEMENT VS. PATENABILITY
PATENT RIGHT TO EXCLUDE (§ 271)
PATENT RIGHT TO PRACTICE
4 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
INFRINGEMENT VS. PATENABILITY
Can Exclude #2 & #3 Can Exclude #3 Can Exclude Others
Can Practice Cannot Practice Cannot Practice
Can Practice Cannot Practice
#1 #2 #3
5 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
Is “Freedom to Operate” Mission Impossible?
IP5 Statistics Report, 2011 at 48
6 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
VITO CANUSO, Esq.
7 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
MARK J. KERTZ , Esq.
8 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
PRACTICE
Software / EE
Counseling & Litigation
BACKGROUND
Clerked for CD-CA
Software Engineer
AMY C. CHUN, Esq.
9 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
WHEN DOES THIS COME UP?
10 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
How do you
convince
investors you
have “freedom
to operate”?
11 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
HIGH LEVEL STRATEGY
Do advance work?
Impact of litigation on a company
Investor expectation
Risk mitigation strategies
Expired IP / "off the shelf" technology
12 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
NUTS AND BOLTS
Which features do you study?
Analysis limited to US Patents?
Pending Applications
Patents with broad disclosure, narrow claims?
What about on-going litigation?
13 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
ADDRESSING A PROBLEM REFERENCE
• Non-infringement
• Design Around
• Invalidity
• Licensing/Acquisition
14 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
POST-ANALYSIS
• Monitoring
• Tracking Design Changes
• Review Technical Materials
15 © 2013 Knobbe, Martens, Olson & Bear, LLP all rights reserved.
LAUNCH PAD EVALUATION
A. No searching or evaluation of 3rd party IP done; OR company has been sued or threatened or knows of significant infringement risk
B. Some informal searching done, but no legal analysis performed
C. Some formal searching done, legal analysis performed - results mixed to positive
D. Extensive searching done - no significant 3rd party IP found creating risk
MO
RE
RIS
K
LESS
RIS
K
Come meet the panel and bring your questions!
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