Video ~ Patent Wars, New Kind of Competition
This video looks at patent laws and whether they are encouraging or hindering the advance of science and innovation.
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Video ~ Mark Lemley Perspectives ~ Part 1
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Video ~ Mark Lemley Perspectives ~ Part 2
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Read Patents, Cloaks & Daggers, Pages 8-22.
Core to understanding the patent business is an appreciation of the nature of patents. A patent is a weapon of litigation, a right to ask a court to award damages for infringement, and prevent future infringement by blocking the sale of infringing products. Although inventors often prize their patents as trophies of technical prowess, patent industry insiders appreciate that the only substantive right a patent holder enjoys is the right to exclude others from unauthorized practicing of the invention. A patent is more of a dagger than a shield.
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Video ~ Monetizing Your Patents
This voice narrated slideshow looks at various methods of patent monetization.
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Video ~ Do Patents Make Products?
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Silicon Valley Trends Podcast ~ Patenting by Numbers
Understand the bizarre patent marketplace through looking at the numbers. For example, 98.5% of patents are never asserted. This translates to $60bn spent on patents that are never used. Podcast covers cost of prosecution, maintenance, litigation, inter-parte review (IPR) as well as statistics on fee shifting and other topics.
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Silicon Valley Trends Podcast ~ Selling Your Patent
This episode explains why companies buy patents, what they're looking for in a patent, what patents are most sellable, and what prices patents collect on the market. It guides patent holders through the process of selling a patent, and helps them navigate the legal minefields along the way.
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Silicon Valley Trends Podcast ~ Monetizing “Trophy Patents” from Research Labs, Corporations and Large Organizations
Patents that were not designed for litigation or licensing may still hold some potential for monetization if they have open continuations that can be built into bulletproof portfolios that will stand up in court.
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Download Book: Patents, Cloaks & Daggers
The book, Patents, Cloaks & Daggers, written by David Smith, explains the role of patents in business today, discussing the strategies adopted by corporate decision-makers involved in various aspects of the patent wars with special emphasis placed on the high-tech sector and the patent trading marketplace.
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Slideshow Handout ~ Monetizing Your Patents
PDF slides for the learning material titled: " Video ~ Monetizing Your Patents”.
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Read Patents, Cloaks & Daggers, Pages 19-20.
Innovative new ideas often come from small independent inventors, but frequently need the resources of large corporations to bring them to market. Successful commercialization of new products requires a combination of finance, management, sales, marketing capabilities, perseverance and not an insignificant amount of luck.
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Video ~ The Patent Wars
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Video ~ Calculating Patent Damages
How are damages calculated in Patent infringement suits?
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Video ~ China's Patent Arms Race
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Video ~ Patent War Lawyers Assemble in Silicon Valley
Santa Clara University hosts conference to discuss strategies for patent infringement defendants, and how to address the growing tide of lawsuits from non-practicing entities.
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Video ~ Apple / Samsung Verdict
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Video ~ Apple / Samsung Damages Set at $119m Page
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Slideshow Handout ~ The Patent Wars
PDF slides for the learning material titled: "Video ~ The Patent Wars".
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Reading ~ Patent Litigation Study
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Reading ~ Summary of Apple/Samsung Case
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Page ~ Apple v. Samsung Case
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Reading ~ Apple / Samsung Verdict
This article explains the verdict in the Apple/Samsung case. August 2012.
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Reading ~ Apple requests Samsung Pay almost $16m Legal fees Page
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Read Patents, Cloaks & Daggers, Pages 13-20.
This portion of the book, Patents, Cloaks & Daggers, written by David Smith outlines reasons why patents are bought and sold. It also outlines the common mistakes made by Patent sellers. It also looks at how litigation drives the Patent market.
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Reading ~ Apple & Google Settle Dispute
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Reading ~ Samsung to pay Apple $548m
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Reading ~ Samsung wins Apple Decision at US Supreme Court
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Reading ~ Profiting by Invalidating Patents & Shorting Stock
An example of the creative business models being practiced in the patent sector.
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Reading ~ Apple awarded $539m in US patent case against Samsung
In this 2018 court ruling, most of the damages payment - $533.3m - was awarded for infringing three Apple design patents. The remainder was for violating two patented functions.
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Samsung rejects $539M Apple patent infringement verdict, demands a retrial
The seven-year long battle between Apple and Samsung over the Korean company infringing iPhone patents seemingly isn’t over yet.
Samsung has rejected the ‘final’ $533M damages awarded against it, and has now filed a motion to have the verdict thrown out …
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Apple and Samsung end patent fight after seven long years
Apple and Samsung have finally settled a seven-year-long patent dispute, bringing to an end the long-running battle over the design of their rival smartphones.
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Video ~ Patent Strategies for Corporations (Product Marketers)
This voice narrated slideshow outlines a range of patent strategies available to corporations involved in the manufacturing or marketing of products in the U.S. market.
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Slideshow Handout ~ Patent Strategies for Corporations (Product Marketers)
PDF slides for the learning material titled: "Video ~ Patent Strategies for Corporations (Product Marketers)".
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Read Patents, Cloaks & Daggers, Pages 35-37.
The patent strategy for a product containing only one, or a few, patented inventions is very different from the strategy you would adopt if your product contained thousands of patented inventions. Looking out at your competitors, your combat strategy is different when facing an opponent holding thousands of patents than it is when facing an opponent with one or a handful of patents. If you’re selling a TV comprising thousands of patented inventions, your patent strategy is very different from the strategy you would adopt if you were selling a paper clip that contained only one or two patented inventions.
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Video ~ Intellectual Property Strategies for High-Tech Startups
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Video ~ Trends in Patent Trading & Commercialization
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Video ~ Why Startups Don't Need Patents
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Slideshow Handout ~ Patent & I.P. Strategies for Startups
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Slideshow Handout ~ Trends in Patent Trading & Commercialization
PDF slides for the learning material titled: "Video ~ Trends in Patent Trading & Commercialization".
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Video ~ Selling Your Patent
This voice narrated slideshow identifies what is involved in selling a patent, and what patent holders can expect when they embark on the process of approaching potential patent buyers.
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Video ~ Infringed Patents Sell
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Video ~ Technology Transactions
This voice narrated slideshow identifies the key components of common technology transactions such as patent sales, licenses, distribution, OEM arrangements, technology transfers, strategic alliances, and intellectual property-backed financings.
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Video ~ Who's Buying Patents?
This voice narrated slideshow describes the profiles and motives of organizations that are actively acquiring patents in the market today.
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Video ~ Who's Selling Patents?
This voice narrated slideshow identifies various types of sellers of patents on the market today, why they sell, how they sell, their motivations and concerns.
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Video ~ Negotiating Patent Purchase Agreements
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Video ~ The License Back: Sell Patents, then Sell the Company?
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Video ~ Unravelling Patent Sales
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Video ~ Protecting From Aggressive Assertion of Patents Post-Sale
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Video ~ Trading Patents in Stealth Mode
This voice narrated slideshow explains why both patent buyers and sellers often wish to remain anonymous in patent sale negotiations, and how intermediaries can play an important role in facilitating discreet, stealth mode transactions.
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Video ~ Why Patent Buyers Acquire IP via Shell Companies
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Video ~ Nortel Patent Auction
General Patent Corporation CEO Alexander Poltorak, in an interview with Bloomberg TV about the Nortel Patent Auction, predicted a "patent war" among the winners and losers of the auction.
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Video ~ News that Apple Consortium Acquires Nortel Patents
Apple and Research In Motion are part of a winning consortium of six companies buying bankrupt Nortel Networks' remaining portfolio of 6,000 patents and patent applications. The group includes Microsoft, EMC, Sweden's Ericsson and Sony.
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Video ~ Google's Acquisition of Motorola Mobility
Google makes its smartphone ambitions clear with a £7.7 bn acquisition.
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Read Patents, Cloaks & Daggers, Pages 28-37.
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Read Patents, Cloaks & Daggers, Pages 64-102.
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Paper ~ Guide to Selling your Patent
This document provides a guide helping patent holders understand the process and issues involved in selling a patent.
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Slideshow Handout ~ Selling Your Patent
PDF slides for the learning material titled: "Video ~ Selling Your Patent".
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Slideshow Handout ~ Technology Transactions
PDF slides for the learning material titled: "Video ~ Technology Transactions".
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Slideshow Handout ~ Who's Buying Patents?
PDF slides for the learning material titled: "Video ~ Who's Buying Patents?".
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Slideshow Handout ~ Who's Selling Patents?
PDF slides for the learning material titled: "Video ~ Who's Selling Patents?".
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Slideshow Handout ~ Negotiating Patent Purchase Agreements
PDF slides for the learning material titled: "Video ~ Negotiating Patent Purchase Agreements".
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Slideshow Handout ~ Trading Patents in Stealth Mode
PDF slides for the learning material titled: "Video ~ Trading Patents in Stealth Mode".
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Reading ~ Patent Assignments and Licenses
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Reading ~ Patent Assignments and Guidelines
A patent assignment is the transfer of an owner’s property rights in a given patent or patents, and any applications for such patents. These transfers may occur on their own or as parts of larger asset sales or purchases. Patent assignment agreements provide both records of ownership and transfer and protect the rights of all parties.
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Video ~ Patent Injunctions
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Video ~ Blocking Import at the ITC
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Video ~ Apple Wins US Injunction Against Galaxy Tab
Samsung was dealt a legal blow when a California judge issued an injunction banning sales of its Galaxy Tab 10.1 touchscreen tablet at Apple's request.
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Video ~ Preliminary Injunctions & Temporary Restraining Orders
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Silicon Valley Trends Podcast ~ Blocking Illegal Imports Through the International Trade Commission (ITC)
David Smith and attorney Tom Fasone explain how the International Trade Commission (ITC) is a federal agency tasked with protecting American domestic industries from foreign unfair competition connected to imports into the United States. This podcast explains how products infringing patents and other infringing products can be blocked by US Customs and Border Protection. It explains how cases at the ITC are on expedited schedules, and how ITC cases differ from cases brought before the US federal courts.
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Reading ~ Judge Dissolves Apple's Injunction Against Galaxy Tab
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Optional Reading ~ Order on Motion to Dissolve Injunction in Apple/Samsung Case
Order on Motion to Dissolve Injunction in the Apple-Samsung case in Northern California.
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Reading ~ Samsung Galaxy Nexus ban overturned by US appeals court
The US Court of Appeals has overturned a ban on sales of Samsung's Galaxy Nexus phone, in a blow to Apple in the ongoing battle between the two rivals.
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Reading ~ Apple v Samsung: Judge rejects Sales Ban Injunction
Apple's plea for a block on Samsung sales is rejected by the District Judge.
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Reading ~ Injunction for Apple
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Reading & Video ~ TRO Used to Block Exhibitor at US Trade Show
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Reading ~ Follow Up to US Trade Show TRO Case
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Reading & Audio ~ eBay v. Mercexchange Case
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Reading ~ Effects of the eBay v. Mercexchange Case
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Podcast ~ Blocking Illegal Imports Through the International Trade Commission (ITC) URL
David Smith and attorney Tom Fasone explain how the International Trade Commission (ITC) is a federal agency tasked with protecting American domestic industries from foreign unfair competition connected to imports into the United States. This podcast explains how products infringing patents and other infringing products can be blocked by US Customs and Border Protection. It explains how cases at the ITC are on expedited schedules, and how ITC cases differ from cases brought before the US federal courts.
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Optional Reading ~ International Trade Commission (ITC) & Intellectual Property
History of the ITC and it's protection of the patent and intellectual property rights of US companies.
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Video ~ Patents are Fragile--Why There's Safety in Numbers
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Read Patents, Cloaks & Daggers, Pages 30-31.
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Video ~ The Truth About Patent Trolls on Halloween
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Video ~ Nathan Myhrvold Founder of Intellectual Ventures
Former CTO of Microsoft, Nathan Myhrvold, gives us a peak into Intellectual Ventures research lab and the creative medical inventions they are working on.
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Video ~ Intellectual Ventures & Inventions for Profit
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Silicon Valley Trends Podcast ~ Patent Wars & Shifting Legal Fees in Patent Litigation Cases
How large corporate interests have lobbied Washington, misled the American public and seriously damaged the US patent system at the expense of inventors and small startups.
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Silicon Valley Trends Podcast ~ Monetizing Patents Through Non-Practicing Entities (NPE's)
This episode is about non-practicing entities (NPE’s). Otherwise referred to as patent licensing companies, patent assertion entities (PAE’s) or patent holding companies, non-practicing entities are companies who’s sole activity is patent licensing. David Smith explains why they exist, what they do, how they make money and the pros and cons of working with them.
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Read Patents, Cloaks & Daggers, Pages 22-27.
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Audio ~ NPR Audio Radio Broadcast ~ When Patents Attack
Insights into the role of non-practicing entities in patent licensing and litigation.
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Reading ~ Article Arguing the Patent System is Not Broken
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Reading ~ Antitrust Battle Against 'Patent Trolls'
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Page ~ Transcript of Audio Recording "When Patents Attack"
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Reading ~ Defendant's Legal Fees Can Be Shifted to Plaintiff
In "extraordinary" cases the defendant's legal fees can be shifted to the plaintiff under 35 U.S.C. § 285. This means that a small patent holder can be liable to pay the legal fees of a large corporate defendant if the court finds the case to be sufficiently "extraordinary" to justify an exception to the American Rule which provides that each party is responsible for paying its own attorney's fees.
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Reading ~ The Patent Litigation Lie
Article explains how the "explosion" in patent litigation is due to changes in the the anti-joinder rules that forced patent holders to file separate suits for each defendant, rather than file one suit against multiple parties.
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Reading ~ Description of Defensive Patent Aggregators
Concise description, with links to relevant companies.
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Reading ~ IPO Filing for RPX: Read the following pages: Prospectus Summary Pages 1-10; and Business Pages 57-69
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Reading ~ Allied Security Trust
Wikipedia page describing Allied Security Trust (AST).
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Reading ~ IP3 Industry Patent Purchase Program
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Reading ~ Open Invention Network
Wikipedia page describing "Open Invention Network".
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Video ~ Avoiding Unintentional Poison Pills
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Video ~ Patent Exhaustion ~ Impression Products, Inc. v. Lexmark International, Inc.: Oral Argument
Oral hearing before decision that a patentee’s decision to sell an item exhausts all of its patent rights in that item, even if the patentee purports to impose post-sale restrictions, and regardless of whether the sale occurs domestically or internationally.
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Video ~ Patent Exhaustion ~ Lexmark Case
Consider exhaustion when writing patent license agreements.
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Video ~ Patent Exhaustion ~ Lexmark Case
The Supreme Court's Bowman v. Monsanto decision clarified the law of patent exhaustion. After a purchaser buys a product, she can do what she wants with it but can't copy it, even if it copies itself.
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Silicon Valley Trends Podcast ~ A Recipe for Success in Patent Licensing
Why it's not easy to collect patent license fees and what it takes to be successful in patent licensing.
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Paper ~ Negotiating Outbound Licensing Agreements
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Reading ~ Patent Licensing
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Reading ~ Exclusive Patent License
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Reading ~ Patent Licensing Considerations
Patent licenses are one of the primary tools for commercializing patent rights. When well drafted, a license agreement can be the source of substantial income for the licensor and tremendous business opportunity for the licensee. When poorly drafted, it can be the source of significant confusion and angst.
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Reading ~ Exclusive Patent Licensees May Have Standing to Sue
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Reading ~ Trademark Licensing
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Slideshow Handout ~ Avoiding Unintentional Poison Pills
PDF slides for the learning material titled: "Video ~ Avoiding Unintentional Poison Pills".
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Paper ~ Avoiding Unintentional Poison Pills
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U.S. Supreme Court Decision in Impression Products, Inc. v. Lexmark International case
A patentee’s decision to sell an item exhausts all of its patent rights in that item, even if the patentee purports to impose post-sale restrictions, and regardless of whether the sale occurs domestically or internationally.
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Reading ~ Summary of Patent Exhaustion
Patent exhaustion occurs when a patented item is legally made and sold in the United States and the person who holds the patent gives up all rights to it.
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Paper ~ A Recipe For Success in Patent Licensing
Paper by David Smith explains the ingredients necessary for a successful patent licensing campaign.
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Video ~ Patent Cross License Agreements
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Read Patents, Cloaks & Daggers, Pages 75-79.
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Reading ~ LOT Network
Website describing how cross-licensing under the LOT Network arrangement is designed to restrict patent litigation from non-practicing entities. Read the home page and the page titled "How LOT Works".
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Video ~ Frand-ly Licensing
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Reading ~ Samsung accused of Frand Patent Abuse
EU accuses Samsung of patent abuse in Apple lawsuits.
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Reading ~ Samsung Faces Fine for FRAND "Hold-Up"
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Reading ~ Why FRAND Commitments are Not (usually) Contracts
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Reading ~ An annotated version of Judge Robart’s Microsoft-Motorola RAND-royalty-setting order
Judge James L. Robart's 207-page order setting RAND royalty terms for an 802.11- and H.264-essential patent license agreement between Motorola and Microsoft changed the royalty calculation and valuation of standard-essential patents.
Students are only required to read the annotated notes (not the whole 207 page document), and refer to the order for clarification.
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Video ~ Patent Valuation
This voice narrated slideshow looks at techniques for assessing the market value of a patent under various scenarios.
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Read Patents, Cloaks & Daggers, Pages 38-63.
Patents form the primary assets for many companies today, especially those in technology-oriented sectors, but the valuation of patents requires an understanding of the nature of patents and a variety of valuation methodologies. Patent valuation is necessary to assess the damages the court should award in patent litigation suits, to fix a price when a patent is sold, and to assess the value of the intellectual property sitting on a company’s books.
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Slideshow Handout ~ Patent Valuation
PDF slides for the learning material titled: "Video ~ Patent Valuation".
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