From October 2016 to March 2017 the team is joined by Guest Kats Rosie Burbidge and Eibhlin Vardy, and by InternKats Verónica Rodríguez Arguijo, Tian Lu and Hayleigh Bosher.

Saturday, 7 February 2015

Litigation-proof patents and the excellence of patent portfolios: two books, one author

Hedy Lamarr: litigation-
proof patentee?
"It takes one to know one" is an old saying, but one that still has much relevance within the fields of intellectual property law and practice as it does elsewhere.  IP enthusiasts can spot each other a mile off. They meet, discuss, argue, wave their hands around and either finish each other's sentences (if they agree with one another) or interrupt mercilessly (if they don't).  This Kat had no difficulty in identifying Larry M. Goldstein as an IP enthusiast; nor was it long before he identified him as something of an expert within his particular line of specialism. Larry, at heart, loves patents. He loves them to the point that it genuinely pains him to see them mismanaged, maltreated, misunderstood and generally manhandled by people who fail to perceive their scope, their force and their role in business -- whether as stand-alone assets or in conjunction with others.

Larry's first venture into patent management literature, True Patent Value: Defining Quality in Patents and Patent Portfolios, was published in the summer of 2013 [details here; reviewed on IP Finance here]. Since then, no doubt buoyed by the positive experience, Larry has come out with two books in relatively quick succession. The first, Litigation-Proof Patents, generated the immediate reaction of this Kat that there is no such thing as a litigation-proof patent -- but the book has much more to it than the title suggests. The second, Patent Portfolios: Quality, Creation, and Cost, is immensely practical.  Unlike Litigation-Proof Patents, which also addresses people who write patents,  Patent Portfolios speaks principally to those good folk who are supposed to do things with them once they've been granted. Both these titles are noted below.

Litigation-Proof Patents: Avoiding the Most Common Patent Mistakes came out as a red-covered paperback back in October 2014 (Larry colour-codes his books.  True Patent Value is blue, Patent Portfolios is green).  It is available via Amazon here.

This tome, at 223 pages, is the perfect companion for a transatlantic flight and will still leave time to eat, sleep and watch a movie. The book is a handy size, the text reads as though it has been practised on an intelligent but busy audience, the print is large and clear, the footnotes are infrequent, interesting and non-intimidatory and the tabulated information is lucidly laid out. The content of the book carries a bias towards a US readership, but that does not mean that it has no message for the wider world.

Larry's scheme for this book is simple. Its theme is that there exist ten cardinal errors that are made with regard to patents, and that there is a correlation between one's ability to avoid making those areas and one's chance of avoiding unwanted litigation over them.  While principles are articulated. Larry is at his happiest when discussing individual instances and specific patents. Picked out for special attention are three key patents: (i) the World War II frequency-hopping patent of actress Hedy Lamarr, (ii) the patents for the Monopoly board game, (iii) Apple's“slide-to-unlock” mobile phone patent.  Through his examples and teaching, Larry seeks to give patent evaluators a better means of establishing whether patents under review suffer from value-destroying mistakes -- and we all know, though rarely like to admit, that the most painful mistakes in patent practice are the ones we inflict upon ourselves and have no one else to blame for.


Patent Portfolios: Quality, Creation, and Cost saw the light of day only a month back, so the ink is scarcely dry. It too is available on Amazon, here. A bigger book than Litigation-Proof Patents, its style and structure reflect the same parentage and much the same purpose. This book complements its predecessor, however, in that, while the red cover reflects a warning about what not to do, the green-for-go symbolism suggests the positive steps that should be taken when running a patent portfolio.

This book asks and sets out to answer three questions: (i) what is an excellent patent portfolio? (ii) how is it possible to obtain an excellent patent portfolio? and (iii) what is the cost of obtaining an excellent patent portfolio? Naturally, a book of around 300 pages is not going to provide a set of definitive answers that cover all technologies in all jurisdictions and under all economic conditions.  However, the making of effective references to specific portfolios, some of which are a good deal more excellent than others, enables the reader to gain a measure of skill in ready-reckoning in sizing up a bunch of patents and deciding whether they present a balanced cohort of related rights, a random rabble of unrelated ones or something in between.  The reviews of the Check Point, Fuji Photo, Silanis and Qualcomm patent portfolios and their points than can be drawn from a comparison of them are by themselves a good enough reason to read this book.


Derek Freyberg said...

So what about pharmaceuticals or biotech?

Anonymous said...

I liked True Patent Value since it wasn't pompous and was obviously directed at ordinary humans and not supercharged experts. Think I'll read Patent Portfolios next since I'm sure our company hasn't made any common mistakes :-)

Anonymous said...

" there is no such thing as a litigation-proof patent"

Absolutely, there is. If you are only thinking about the weaknesses we see tested in patents undergoing litigation then obviously that's a selective sample. There are many extremely high value patents that never see litigation, either validity or infringement, because third parties have assessed them and respect them.

Anonymous said...

Anonymous at 15:49: "There are many extremely high value patents that never see litigation, either validity or infringement, because third parties have assessed them and respect them."

No, it's because competitors can run their businesses without having to make at least an attempt to invalidate them.

Anyway, there's no patent that is immune to an application for a declaration of non-infringement.

Anonymous said...

Anonymous @ 16:40 is correct.

Since litigation can be brought by either party, no one party controls - no matter what.

Logically, the set of litigation-proof patents must be a null set. Of course, the calculation changes if one adds the requirement of rationality for both parties. That, though, is not necessarily a requirement that can be freely added (human nature, being what it is).

Anonymous said...

Sorry, but what you are both saying is that I am wrong because someone can always attempt to litigate under/against a patent? Obviously, I accept i am wrong if the definition of litigation proof is what you both offer.

However, I was of the impression that the Kat was referring to a patent that can survive a validity attack in litigation, hence the subject of the book.

Yes, businesess can run by avoiding patents, but many business operate by taking the risk of early launch/patent challenge. The kat will know only too well the business model of Teva and its attitude to originator patents. They will challenge if they believe the patents are invalid and will await expiry/design around those they believe are valid.

Agreeing with your argument would mean that no patents would ever be challenged because it is better business to do something else.

Regarding the declaration of non-infringement, I suggest regard is given to S.71(1)(a) and (b) of the UK Act. Every patent is immune to such a declaration (in court or at patent office, ie litigation) if the patentee responds to a request confirming no infringement.

Anonymous said...

Yes, Anonymous @22:25, there is a difference between our versions.

I was thinking that part of being litigation proof was the ability to not have to spend any money in litigation.

I would call your version judgement proof - not litigation proof.

That being said, for judgement proof patents, I agree with your initial assessment - many such patents are out there. Quite in fact, in the U.S. the pool of patents that see litigation as a percentage of patents that can see litigation is well under 1%. I have often been sardonically bemused at the amount of hand-wringing about patent litigation when in truth there is so little of it (comparatively).

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