Legal Pad

Lofgren Not Happy With Revised Patent Reform Bill

[Amy Miller]

Rep. Zoe Lofgren, D-San Jose, has pushed for patent reform for more than a decade. But she blasted the patent reform bill passed by the House on Thursday as woefully inadequate.

The bill would change the U.S. patent system from a first-to-invent systems into a first-to-file system, something Lofgren supports. But in a phone interview Friday, Lofgren also said “there are some serious defects in the bill.”

Patent Suit Against Grateful Dead Seen as Gratuitous

[Amy Miller]

After decades of letting fans record their concerts for free, the Grateful Dead is now facing a patent infringement suit for sharing music on the band’s dead.net website.

And the irony has long-time Dead Heads in the Bay Area speculating that things are finally shaking on Shakedown Street.

“What has the world come to that the Grateful Dead is being sued for selling music when they’re famous for giving away thousands and thousands of their own concert recordings?” said patent litigator and Dead Head Edward Reines, a partner in the Silicon Valley office of Weil, Gotshal & Manges.

On Tuesday, Sharing Sound sued Grateful Dead Productions, along with Live Nation Entertainment Inc., Sony Music Entertainment, Warner Music Inc. and others in Delaware federal court, saying they had infringed a patent covering the online distribution of music and other media.

The Longview, Texas-based company launched a similar suit against Amazon.com Inc., Wal-Mart Stores Inc. and Netflix Inc. in May, alleging that they, too, had infringed the patent called “Distribution of musical products by a website vendor over the Internet.”

Sharing Sound is seeking a permanent injunction, damages and attorneys fees.

RPX Announces Its IPO Terms

[Amy Miller]

RPX Corp., which acquires and licenses patents to help clients reduce the risk of patent litigation, announced terms for its initial public offering Monday.

The San Francisco-based company said it plans to raise $124 million by offering 7.3 million shares at a price range of $16 to $18.

Founded in 2008, RPX booked $95 million in sales last year and plans to list on the NASDAQ under the symbol RPXC.

The company registered with the Securities and Exchange Commission for an IPO on Jan. 21, saying it planned to raise as much as $100 million but offering no specific pricing information.

Redwood City law firm Gunderson Dettmer Stough Villeneuve Franklin & Hachigian is advising RPX Corp. Name partner Robert Gunderson Jr. leads the team, along with partners Bennett Yee and Elizabeth Webb and associates Gregory Volkmar and Yush Lee .

Gibson, Dunn & Crutcher is representing the underwriters, Goldman Sachs & Co. and Barclays Capital. That team includes San Francisco partners Douglas Smith and Stewart McDowell, Palo Alto partners David Kennedy and Stephen Fackler, and San Francisco associates Sean Sullivan and Michael Dell.

RPX General Counsel Marty Roberts is also working on the deal.

PTO Quietly Determined to Open in Silicon Valley

[Amy Miller]

Inventors, executives, and intellectual property lawyers gathered in Santa Clara on Thursday to hear U.S. Patent and Trademark Office director David Kappos talk about the possibility of opening a satellite office in Silicon Valley.

They heard from Congress members, local politicians and speakers such as Henry “Hank” Nothaft, president of Tessera Technologies Inc., about the pros and cons of opening a patent office here.

But one group of was conspicuously absent from the town hall meeting, hosted by the Joint Venture and the Silicon Valley Leadership Group: journalists. The event, held at Applied Materials’ headquarters, was closed to the media.

“Why would you exclude the press from this?” said Neil Smith, an IP partner at Ropers Majeski Kohn & Bentley, who attended the event. “He didn’t say anything untoward or particularly controversial. I didn’t hear anything they would want to keep away from the press.”

Attendees were asked to submit questions for Kappos, and Smith said he asked why the press wasn’t welcome, but he didn’t get an answer.

They did hear from Kappos about why the region is an ideal location for a satellite office, from the abundance of IP practitioners to the number of colleges and universities in the region, said Rajiv Patel, an IP partner at Fenwick & West who attended the event. A satellite office is already in the works in Detroit.

Kappos and the other speakers also talked about the challenges of opening an office, such as getting funding because Congress diverts fees paid to the patent office. Then there’s the high cost of real estate in Silicon Valley to deal with.

“But they were resolute,” Patel said. “They appeared to be resolved to work together to bring an office to the region. They seemed very determined to do it.”

New Patent Study Details Northern District Downsides

[Amy Miller]

Nonpracticing entities file plenty of patent infringement suits in the Northern District of California. But it's hardly the most favorable district for them, according to the 2010 Patent Litigation Study just released by PricewaterhouseCoopers, which examines patent litigation trends from 1995 to 2009.

During those years, nonpracticing entities had a success rate of 25 percent in the district. That’s compared to 66.7 percent in the Middle District of Florida; 62.5 percent in the District of Delaware; and 55.6 percent in the Eastern District of Texas.

Facebook's Lawyers From Cooley Ready to Celebrate Big Win

[Petra Pasternak]

What does a trial lawyer do after a win on behalf of a high-profile client? Cooley’s Mike Rhodes hits the waves.

A team of Cooley litigators got a favorable jury verdict today in a patent infringement trial against client Facebook. The Delaware jury ruled Ohio-based Leader Technologies’ patent was invalid.

“You can’t offer to sell or publicly demonstrate your product more than one year before the application is filed,” Rhodes said from aboard a plane to San Diego. “On the evidence the issue came down to the credibility of the CEO of the plaintiff … The plaintiffs’ story unraveled on him. The jury didn’t believe the guy.”

Cooley’s litigation team included partners Heidi Keefe and Mark Weinstein, and associates Jeffrey Norberg, Melissa Keyes and Liz Stameshkin. King & Spalding’s Paul Andre in Redwood Shores represented plaintiff Leader. Andre told Bloomberg that the ruling “will not stand” in further litigation. 

Until they meet in court again, Facebook’s lawyers are going to have some fun.

To celebrate and let off some steam, Rhodes and Sam O’Rourke, the head of IP at Facebook, are heading out on surf trips to different destinations. For Rhodes, it will be a couple of weeks in Mexico or El Salvador.

Leahy Touts Virtues Of Unpopular Patent Reform Bill

[Zusha Elinson]

Every week, I get a logic-defying press release from the Sen. Patrick Leahy about how the patent reform bill is going to do everything but give a puppy to every sad kid in America.

Last week, it was something about how labor unions love the new patent reform bill.

Really? Is making sure judges are stricter about what damages testimony is admissible going raise the minimum wage?

There is a tiny bit of a back-story, which is that labor initially opposed the patent reform bill a few years back, for reasons that are still unclear. And now they’re behind it.

This week, Leahy sent me a release to say that the patent reform bill has been getting a lot of support. Oh look, he has laudatory quotes from companies like ExxonMobile, Monsanto, Bose, Dow Chemical, University of California, and of course “35 businesses from New Jersey.” Noticeably absent is any support from Silicon Valley’s big tech companies like Google, Apple and Cisco, who are all pissed about how the Senate version of the bill came out (free reg. req.).

But who cares if Steve Jobs likes the bill when you’ve got more than 30 businesses from New Jersey on your side? Right?

Who's Got the Breast Cancer Patent?

[Zusha Elinson]

Should genes be patentable? A New York judge said no yesterday.

Joe Mullin over at the Prior Art has been following the case closely. He reports that Judge Robert Sweet invalidated two patents on genes related to breast cancer owned by Myriad Genetics.

In his 152-page opinion (.pdf), Sweet wrote that the patents in question cover parts of the natural world and therefore don't conform to section 101 of U.S. patent laws, which those govern what qualifies as patentable subject matter.

The issue was raised by the ACLU and the Public Patent Foundation, which filed suit last year in an effort to invalidate the patents.

What do you think? Should genes be patentable? Did Judge Sweet make the right decision?

Morgan, Lewis Malpractice Case Gets Moved to Federal Court

[Zusha Elinson]

You know that big picture-changing billboard on 101 in Silicon Valley? That thing has been causing all sorts of problems for a Morgan Lewis patent lawyer — but those problems will most assuredly not be decided in county court.

The inventor of said billboard, Landmark Screens, sued Thomas Kohler for malpractice (free reg. req.) after the firm allegedly didn't tell the billboard-maker about a screwed up patent application. That got tossed out of Santa Clara Superior Court because malpractice suits related to patents are heard in federal court like all patent suits — and today the Court of Appeal for the State Sixth Appellate District agreed (.pdf).

The case is ongoing in the federal court although most of the claims have been dismissed.

Will Patent Holder IV Show Its Face to Kodak?

[Zusha Elinson]

Kodak is trying to draw large patent hoarder Intellectual Ventures into court.

With its 30,000 patents and opaque veil of mystery, IV has shied away from the courts, likely because an allergy to discovery. But with its new money making scheme of selling patents to trolls who then file lawsuits (free reg. req.), you knew that IV would eventually end up in a courtroom.