IP News & Transactions

Outsourcing of IP Licensing Activities

An excellent article at IP Frontline discusses a growing trend among corporate holders of intellectual property assets – the outsourcing of licensing activities to third party providers.  The article provides excellent detail as to considerations and practical tips as to selecting and managing an outsourced IP licensing program.

 

The article may be found at http://www.ipfrontline.com/depts/article.asp?id=20144&deptid=5.

If At First You Don’t Succeed…

An interesting note found at PATracer discusses an appellate case currently pending with the CAFC which presents the issue of “claim preclusion” – that is, if a plaintiff in a patent infringement case has an opportunity to raise an allegation of infringement in the first instance and chooses not to, does the plaintiff waive the right to raise the allegation in a subsequent lawsuit?

 

In Hemphill v. Kimberly-Clark (CAFC 2008-1460), plaintiff Allegra Hemphill sued Kimberly-Clark (and co-defendant Proctor & Gamble) in 2002 for patent infringement, on the basis that certain of defendants’ products infringed claim 1 of Ms. Hemphill’s United States Patent 4,557,720.  At the trial court level, Kimberly-Clark won on summary judgment, with a finding of non-infringement as to claim 1.

 

Ms. Hemphill then proceeded to file a NEW lawsuit against the same products, with the same patent – but instead alleged infringement of claim 2 of the patent.  The trial court dismissed the second lawsuit on the basis that since Ms. Hemphill had filed a prior infringement lawsuit against the SAME defendants, on the SAME products, as to the SAME patent, that the new suit was barred by the legal concept of “res judicata” (for non-lawyers out there, a very, very simplistic explanation of this concept is that a plaintiff does not get more than one swing at the piñata).

 

Ms. Hemphill has appealed dismissal of the second suit to the CAFC.  It appears fairly certain that the CAFC would uphold the trial court’s dismissal of the second suit, but the CAFC may take the opportunity to release an opinion that offers more insight into its thoughts on the doctrines of claim preclusion and res judicata in the context of patent litigation.

 

You might wonder why Hemphill did not assert all claims of the patent in the first case…one answer may be that Hemphill appears to have chosen to proceed in the cases “pro se” – that is, without the assistance of an attorney.

 

Ms. Allegra’s patent may be viewed at http://www.google.com/patents?id=p2UWAAAAEBAJ&dq=4557720.

 

 

PATracer’s note on the case may be found at

http://www.patracer.com/the_patent_litigation_blo/2008/07/if-i-dont-win-o.html.

IP Matters – Even In A Down Economy!

An article found in the online edition of Black Enterprise provides an excellent discussion of why the business of intellectual property development continues to thrive even with the current slowdown in the world economy.  The article highlights the growing importance of IP assets to companies of every size, and discusses why smart companies are doubling their efforts to develop and utilize their IP assets even as their traditional businesses slow down.  (For those new to IP asset development, the article provides an excellent overview of the current state of global IP law and transactions.) 

The article may be found at http://www.blackenterprise.com/yb/ybopen.asp?section=ybaa&story_id=118487485&ID=blackenterprise.

New Kids on The Block (Big Kids…)

A blog entry recently posted by Larry Dignan of ZDNet discusses the latest and greatest entrant into the world of IP transactions.  Verizon, Google, Cisco, Ericsson and HP have formed a company with the innocuous name of “The Allied Security Trust,” with the purpose of purchasing existing patents to grant the company’s owners non-exclusive licenses to the purchased patents.  Allied would then turn around and sell the patents in hopes of generating revenue for the company.

 

Putting aside concerns about concentrating patent “power” in the hands of a few large tech giants, this development is relevant if for no other reason than Allied presenting itself as another large, well-monetized player in the world of patent transactions.  And we were just getting used to Intellectual Ventures…

 

Larry’s blog entry, and subsequent discussion, may be found at http://blogs.zdnet.com/BTL/?p=9209.