Patent Litigation 101

Transcription

1 Patent Litigation 101 Presented at: PIUG 2007 Northeast Conference New Brunswick, NJ October 9, 2007 Richard A. Matula Senior Information Specialist Kenyon & Kenyon LLP One Broadway, 10 th Floor New York, NY Direct Dial: New York Washington, DC Silicon Valley 1

2 Summary There are three basic sources, based on two different methodologies, to identify patent litigations in United States District Courts for a given United States granted patent number. Focusing on these two approaches leads to an understanding of why different results might be found and also forms the basis of pointing out improvements that can be made. While these three sources are necessary to use, they are not sufficient to determine a more complete picture of disputes involving a granted patent. 2

3 Biographical Sketch: Richard A. Matula Richard Matula is Senior Information Specialist at Kenyon & Kenyon, a New York intellectual property law firm with offices also in Washington, DC, and Silicon Valley. His main function is scientific and technical information retrieval in areas of interest to the firm s clients. Previously he was a Member of the Technical Staff, as an Information Scientist, at Bell Laboratories for about 20 years providing information support to the legal, technical, and scientific communities with a heavy emphasis on inorganic materials. Before Bell Labs, he was Associate Senior Researcher at CINDAS, Center for Information and Numerical Data Analysis and Synthesis, at Purdue University. Projects included compiling and evaluating experimental data of electrical and mechanical properties of rock salt applicable to nuclear waste disposal and compiling and evaluating experimental data of thermal radiative properties of aerospace and aircraft materials applicable to national defense. He developed recommended values, for the pure elements from low temperatures to past the melting point, for experimental data of Electrical Resistivity of Copper, Gold, Palladium, and Silver that was published in the Journal of Physical and Chemical Reference Data. He has served on information committees or subcommittees for the American Institute of Physics, ASM International (previously called the American Society for Metals), Chemical Abstracts Service, and Questel Orbit. His undergraduate degree is in Electrical Engineering from Newark College of Engineering, now called New Jersey Institute of Technology. His Ph.D. is in Physics from Purdue University with dissertation work in experimental, low-temperature, solid-state physics. 3

4 Outline Three Sources/Two Methodologies Two Controlled Experiments Follow-up Conclusion 4

5 Three Sources And Two Methodologies LitAlert LexisNexis CourtLink Westlaw CourtExpress Form to USPTO (1) Initial Complaint Initial Complaint (AO 120) (Primarily NOS 830) (NOS 830 plus) (1) URL: scientific.thompson.com/products/litalert/ 5

6 Date Coverage LitAlert LexisNexis CourtLink Westlaw CourtExpress Basically (1) (Also see vendor documentation for LitAlert ) Comprehensive coverage back to 2002 (2) Cases filed after 1/1/2003 (3) (1) URL: scientific.thompson.com/products/litalert/ (2) Personal communication (3) Online Summary Sheet for Patent Dockets Summaries database 6

7 How Soon Online LitAlert Certainly not 1-2 days LexisNexis CourtLink If complaint is online: 1-2 days (1) Not Online: 4-5 days depending on turnaround time from runner service (1) However,. Westlaw CourtExpress Within 1-2 days of complaint being made available on PACER (1) For manually retrieved complaints, the process can take 1-2 weeks or more if there are issues acquiring the complaint from the courts (1) (1) Personal communication 7

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10 Controlled Experiment #1 Patent involved in the case: US 6,285,746 BI. Case: Forgent Networks v. Echo Star Communications, TX E D (Marshall Division) 6:06cv208 Source: August 10, 2007 item in IP Law

11 Results for US 6,285,746 LitAlert LexisNexis CourtLink Westlaw CourtExpress TX E D 2:05cv318 TX E D 6:06cv208 TX E D 2:05cv318 TX E D 2:05cv512 TX E D 6:05cv343 CA N D 5:07cv2629 TX E D 2:05cv318 TX E D 2:05cv512 TX E D 6:05cv343 CA N D 5:07cv2629 Note: All docket numbers shown 11

12 LexisNexis CourtLink Output for US

13 Westlaw CourtExpress Output for US

14 Controlled Experiment #2 Patents involved in the case: US 6,259,615; US 6,396,722; and US 6,804,129 Case: 02 Micro International v. Beyond Innovation Technology, TX E D 04cv32 Source: August 14, 2007 item in IP Law360 14

15 Results for US 746; US 615, and US 129 LitAlert LexisNexis CourtLink Westlaw CourtExpress TX ED 2:04cv32 ( 615; 722 ) Note: Only the 04cv32 case shown; there are other cases that are not shown. 15

16 Portion of Docket Sheet for TX E D 2:04cv32 16

17 Showing Cost 17

18 Follow-up (Why) Sample of forms sent to USPTO Why was one patent number missed? Tips/Suggestion PACER 18

19 LitAlert Record for US 6,285,746 19

20 LitAlert - Note Related Patent Information Field 20

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34 Tips for Searches 1. In LitAlert, search not only on patent number field, but also related patent number field. 2. In Westlaw CourtExpress, if want to explicitly connect a given patent number to a specific civil action number, search each patent number separately. 34

35 Suggestion For Vendors 1. For NOS of 830, look at amended complaints in addition to initial complaint. 35

36 U.S. Courts 36

37 PACER -- Login Form 37

38 Conclusion While the three sources are a starting point, they are not sufficient to find information about disputes involving a U.S. granted Patent. 38

39 News Sources Then, What Else? ITC Section 337 But that is Patent Litigation

40 Additional Information for LexisNexis CourtLink (Customer Service) 40

41 Additional Information for Westlaw CourtExpress (Joseph D Amico) 41

42 Acknowledgments Sophia Hagen Kenyon & Kenyon Marketing Lucy Curci-Gonzalez Kenyon & Kenyon Director of Library Services Joseph D Amico - Westlaw CourtExpress Dina C. Skeffrey - LexisNexis CourtLink 42

43 Patent Litigation 101 Thank You Richard A. Matula Senior Information Specialist Kenyon & Kenyon LLP One Broadway, 10 th Floor New York, NY Direct Dial: New York Washington, DC Silicon Valley 43