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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.
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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!
