• Patent as Credentials

    By Jason Rantanen I’ve been taking a break from blogging for the past few months to focus on teaching, research and service at the University of Iowa.  That’s allowed me to experience new aspects of technological innovation and patent law, particularly in the context of a research university.  It’s also allowed me to work on […]

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  • IP Chat Channel Webinar: Asian FRAND and SEP Update

    Apologies for the short notice, but the IPO IP Chat Channel will be presenting a webinar titled FRAND and SEP Update:  Asia at 2 pm Eastern time tomorrow, August 8.  Here is a link, for those who might be interested in registering, and here is a description:
    Standard essential patents (SEPs) are a key part of global commerce. For instance, an Internet of Things or 5G mobile networks can only be built using standards that are licensed at rates that are fair, reasonable, and non-discriminatory (FRAND). Yet traditional jurisprudence has shown itself ill-suited for disputes involving SEPs.

    This webinar will consider the impact of recent developments in involving SEPs in China, Korea, Japan, and India. Our panel, which includes a senior competition lawyer at a SEP owner, an attorney who represents implementers, and a leading academic authority, will discuss topics including: 

    • The April release of the Beijing High People’s Court Guidelines for Patent Infringement Determination;
    • The decision of the Beijing IP Court in March finding Sony infringed a SEP and was an unwilling licensee, resulting in the first injunction in favor of an SEP holder in China;
    • The decision of the Korean Fair Trade Commission, now being appealed, to impose a $853 million fine on Qualcomm for FRAND violations; and
    • The ongoing assertion campaign by Japanese sovereign patent fund IP Bridge;
    • Ericsson’s campaign to win licensing royalties from local and Chinese phone makers in India.

    Speakers:

    • Jorge Contreras, University of Utah School of Law
    • James Harlan, InterDigital Holdings, Inc.
    • Paul Zeineddin, Zeineddin PLLC
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  • News from Abroad — EPO Applies Doctrine of Plausibility to Small Molecule Pharmaceuticals

    In Decision T 488/16, the Boards of Appeal of the European Patent Office (BoA) have revoked EP 1 169 038, which protected the blockbuster protein tyrosine kinase (PTK) inhibitor dasatinib (Sprycel®). The only request on file — a single claim directed to dasatinib per se or a salt thereof — was found to lack inventive step in view of the absence of evidence in the application as filed (and the common general knowledge) which rendered the activity of dasatinib in inhibiting PTK “plausible”. A general statement in the application as filed that “Compounds described in the following Examples have been…

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  • Conference & CLE Calendar

    August 8, 2017 – Patent Quality Chat webinar series (U.S. Patent and Trademark Office) – 12:00 to 1:00 pm (ET) on August 10-11, 2017 – Advanced Patent Law Seminar (Chisum Patent Academy) – Seattle, WA August 11-12, 2017 – Invention-Con 2017 (U.S. Paten…

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  • DATED ~日付の

                            目次はこちら

    DATED ~日付の

    –>as of

    $$ This application claims priority to and the benefit of GB 0324179.1 dated 15 Oct. 2003 and PCT/GB 2004/004135 filed 28 Sep. 2004. (USP7620235)

    $$ Another somewhat similar system is described in a White Paper by Lucent Technologies entitled "Internet Call Centre" and dated Dec. 15, 1997. (USP6502127)

    $$ This application is a 371 of PCT/GB96/03117 dated Dec. 20, 1996. (USP6146583)

    $$ British Search Report dated 27 Oct. 1994 (3 pages). (USP5507017)

    $$ See, in particular, "TCPA Main Specification", version 1.0, dated 25 Jan. 2001. (USP03051133)

                            目次はこちら

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  • FRCP 30(b)(6) inquiries are not objectionable solely because the designation would require testimony about a corporation’s opinion or the application of law to facts

    In the post Rule 30(b)(6) at 45: Is It Still Your Friend? , some issues with 30(b)(6) depositions are addressed:


    In Sigmund v. Starwood Urban Retail VI, LLC, 236 F.R.D. 43 (D.D.C. 2006), the court considered a motion to compel a 30(b)(6) corporate designee to respond to questions. The district court rejected the defendant’s argument that “legal opinions are more appropriately sought through contention interrogatories” as contrasted with 30(b)(6) testimony. The court noted that the advisory committee intended for Rule 30(b)(6) to address mixed questions of law and fact, such as the basis for interpretation of a provision of a contract. Id. at 45. The Sigmund court reviewed and summarized decisions evaluating the request to require an inquiring party to use contention interrogatories as opposed to proceeding by Rule 30(b)(6) and concluded that, while there should be a case-by-case determination of such requests, 30(b)(6) inquiries are not objectionable solely because the designation would require testimony about a corporation’s opinion or the application of law to facts.

    As to defendant government bodies:


    In High Five Investments, LLC v. Floyd County, Ga., 239 F.R.D. 663 (N.D. Ga. 2007), the court considered the defendant county’s motion for a protective order seeking to prevent a 30(b)(6) deposition. The 30(b)(6) notice contained the following designation:

    Such designated agent(s) will be prepared to testify with regard to the ordinance’s enactment process, each and every governmental interest meant to be furthered by the provisions of Floyd County Ordinance 2006-002A, how such interests are furthered by the regulations, and the origin, timing, and authenticity of all materials the County relied upon for enactment of said ordinance. Id. at 665.

    The county objected to this 30(b)(6) designation on numerous grounds. The court concluded that the information sought was relevant to the claims at issue and denied the defendant’s motion for protective order.


    AND


    in Fidelity Management & Research Co. v. Actuate Corp., 275 F.R.D. 63 (D. Mass. 2011), the court considered the plaintiff’s 30(b)(6) notice, through which it sought to discover the facts on which the defendant’s affirmative defenses were based. The court considered the issue of work product in the context of 30(b)(6) discovery directed at a defendant’s claims for damages and affirmative defenses. The court converted the plaintiff’s 30(b)(6) deposition notice into a deposition on written questions on its own motion. Id. at 64.

    **Separately

    from Wollin and Millsom, EVERYTHING YOU ALWAYS WANTED TO KNOW ABOUT DEPOSITIONS: BUT YOUR CLIENT COULD NOT AFFORD TO RESEARCH, 50 RI Bar Jnl. 5 (2002)

    A Rule 30(b)(6) deponent’s testimony represents the knowledge and opinions not just of the individual deponent, but of the governmental or business entity itself. n97 The testimony represents the entity’s “position” on the topics in the Rule 30(b)(6) deposition notice. In effect, the deponent is speaking for the entity, presenting the entity’s position on the listed topics, including for instance the entity’s interpretation of events or documents. n98 Generally, inquiry into an entity’s legal position is appropriate in a Rule 30(b)(6) deposition. n99 “The Rule aims to prevent a corporate defendant from thwarting inquiries during discovery, then staging an ambush during a later phase of the case.” n100
    n97 Canal Barge, slip op. at *1; Calzaturficio, 201 F.R.D. at 37; Smithkline Beecham Corp., slip op. at *9; Taylor, 166 F.R.D. at 361.
    n98 Canal Barge, slip op. at *1; Smithkline Beecham Corp., slip op. at *9; Taylor, 166 F.R.D. at 361.
    n99 Canal Barge, slip op. at *2.
    n100 Rainey, 26 F. Supp.2d at 95; see also Prokosch, 193 F.R.D. at 639 (“Any other interpretation of the Rule would allow the responding corporation to ‘sandbag’ the depositional process by ‘conducting a half-hearted inquiry before the deposition but a thorough and vigorous one before the trial.'”); Taylor, 166 F.R.D. at 362.

    Subjective beliefs and opinions are within the permissible scope of 30(b)(6) topics:

    From Taza Systems v. Taza, 2012 U.S. Dist. LEXIS 156339 (WD Pa 2012):

    Rule 30(b)(6), contrary to common belief, does not require a corporate party to identify the person “most knowledgeable” about a topic. Rather, the organizational entity has the duty to identify a witness to testify on its behalf and to prepare that witness to state the organization’s position, knowledge, subjective beliefs, and opinions on identified topics. Harris v. New Jersey, 259 F.R.D. 89, 92 (D.N.J. 2007); State Farm Mutual Auto. Insur. Co. v. New Horizon, Inc., 250 F.R.D. 203, 216 (E.D. Pa. 2008); United States v. Taylor, 166 F.R.D. 356, 361-62 (M.D.N.C. 1996) (cited with approval in Black Horse Lane Assoc., L.P. v. Dow Chem. Corp., 228 F.3d 275, 303-04 (3d Cir. 2000)).

    One notes that the list includes knowledge, subjective beliefs, and opinions, and the scope is NOT limited to first hand knowledge of facts.

    As to Monell claims

    It is understood that discovery can be detailed, rather than simple:


    from Jewells v. Casner, 2015 U.S. Dist. LEXIS 156627 (ED NY 2015)

    **
    The court acknowledges that Monell claims can often involve onerous discovery demands. See Carr v. City of N. Chicago, 908 F. Supp. 2d 926, 933 (N.D. Ill. 2012) [*12] (recognizing that Monell discovery “can add significant time, effort, and complications to the discovery process” (internal quotation marks and citation omitted)). But the information covered in the Rule 30(b)(6) Notice at issue here – considering also the magistrate judge’s limitations – is relevant to the plaintiff’s claims.
    **

    Information on policy and practice can be sought via 30(b)(6):

    from Walden v. City of Chicago, 2007 U.S. Dist. LEXIS 7400 (ND Ill 2015)

    In connection with the latter claim, plaintiff served a 30(b)(6) Notice of Deposition on the City, requesting that the City produce a knowledgeable witness to testify to the subject areas relevant to plaintiffs policy and practice claim. The City does not contest that the 30(b)(6) notice (“notice”) was proper.
    The subject matters contained in the notice include, for example:
    . Any investigation, evaluation, report, findings, analysis, or conclusions done or made

    Examples of 30(b)(6) witnesses in 42 USC 1983 cases:

    2015 U.S. Dist. LEXIS 148344
    2014 U.S. Dist. LEXIS 95987
    2014 U.S. Dist. LEXIS 65835
    62 F. Supp. 3d 1049 (N.D. Cal. 2013)
    977 F. Supp. 2d 738 (E.D. Mich. 2013)
    957 F. Supp. 2d 442 (S.D. NY 2013)
    2012 U.S. Dist. LEXIS 88079

    *
    Refusing to produce a 30(b)(6) witness is inappropriate:

    On the other hand, rather than simply saying that “Philips cannot provide a witness on this topic as written,” Philips could (and should) have responded that “Philips will produce a witness to testify [description].” If ZLC was not satisfied [*15] with that description, ZLC could have proposed an alternative.

    KONINKLIJKE PHILIPS N.V. v. ZOLL LIFECOR CORPORATION, 2014 U.S. Dist. LEXIS 131078 (WD Pa 2014)

    *

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  • You Need Defensive Patents But You Don’t Have Any. Now What? A Case Study

    When the corporate asserter arrived at our client’s door, the asserter wanted: (1) to obtain both a cross-license and revenue from a patent license and (2) to increase our client’s purchases of the asserter’s products. Our client had virtually no patents of its own. To shift the negotiation, the decision was made to purchase defensive patents (counter-assertion patents). The reasons were that invalidating the asserter’s 10,000+ patents would be expensive and would take too long. Also, putting…

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