Finding Infringers and Then What? The Academy View of Competitive Landscapes. The Academy View of Developing Technologies. Strategy Attribute Matrix. Finding Infringers. How Will You Pay For This? Changing the Game. First-to-File w/ Grace (FTFG).

1. 7/13/20181
Protecting IP Globally
Finding Infringers and Then What?
Brad Pedersen
March 30, 2010
The Academy View of Competitive Landscapes.
The Academy View of Developing Technologies.
Strategy Attribute Matrix.
Finding Infringers.
How Will You Pay For This?
Changing the Game.
First-to-File w/ Grace (FTFG)

2. Protecting IP Globally
Finding Infringers and Then What?
© 2010 Patterson Thuente Christensen Pedersen, P.A., some rights reserved - www.ptslaw.com
RIGHT TO USE: This presentation may be freely distributed, used and/or modified, so long as appropriate attribution is made that
includes retention of the firm name in connection with any materials from this presentation.
DISCLAIMER: This presentation and any information contained herein is intended for informational purposes only and should not be
construed as legal advice. Seek competent legal counsel for advice on any legal matter.

3. The Academic View of Competitive Landscapes
7/13/20183
Known Rivals Customers
New Market
Entrants
Suppliers
New
Product/Tech
Prof. Michael Porter, “Competitive Strategy: Techniques for Analyzing
Industries and Competitors” (1980)

4. 7/13/20184
The Academic View of Developing Technologies
Prof. Christensen, “The Innovators Dilemma, When New Technologies
Cause Great Firms to Fail” (1997)

5. Strategy Attribute Matrix
7/13/20185
Dennis Skarvan, Caterpillar Chief IP Counsel, AIPLA presentation,
January 27, 2010

6. Finding Infringers:
To Hunt or Not to Hunt …
Large Entity vs. Small/Medium Entity
LE – more systematic
SME – mostly ad hoc
Is it bigger than a breadbox?
Minimum Country Threshold
• $1M-$10M market opportunity for patents
• $100K-$1M market opportunity for tm/domain name
Minimum Aggregate Threshold
• $10M-$100M market opportunity for patents
• $1M-$10M market opportunity for tm/domain name
July 13, 20186

7. Know what you are hunting for …
by having good maps
July 13, 20187
Product  IP Maps
Shortcut to identifying infringers
Critical for using IP metrics
Patent Family Maps
The larger the portfolio – the better the maps need to be
Often part of an Intellectual Asset Management (IAM) tool
Patent Claim Crib Notes
A shorthand of broadest claim scope in patent family
Not intended to be claim interpretation – e.g., “claims directed to …”

8. Where to start looking …
Internally
Sales Force
Employees
Inquiries
Externally
Customers
Analysts
Consultants
Conferences/Trade Shows
July 13, 20188

9. Monitoring the Competition
July 13, 20189
Monitoring
Web
Patent Citations
Trademark Publications
Relevant Blogs
Clipping/Alert Services
Thompson Monitor
Pantros CIA
Trademark Publications
Google/Yahoo Alerts
Domain Name monitors

10. The Usual Suspects: A Quick Comparison
Country Cases
(2008)
Single
vs.
Dual
Tech
Judge
Disc-
overy
Time
(mos)
Costs
($M)
Loser
Pays
Dam-
ages
Patent
Wins
Opp/
Reexam
China ≈4,400 Dual Yes Low 9-15 0.5 - 1 Most Low* 50-70% IPR
US ≈2,900 Single*
*
No** High 24 -48 1 - 6 Rare High 30-40% IPR
Korea ≈1,000 Dual Yes Med 18-24 0.5 - 1 Some Med < 10% None
Germany ≈750 Dual Yes Low 9-15 0.5 - 1 Often Med 30-40% EP Opp
Japan ≈500 Dual Yes Med 0-15 0.5 - 1 Rare High 40-50% No
France ≈200 Single No High 12-24 0.5 - 1 Often Med 30-40% EP Opp
UK ≈100 Single No High 24 -48 2 - 4 Often Med 30-40% EP Opp
July 13, 201810

11. Other Enforcement Considerations
Picking Local Counsel
3-R’s: Reputation, Relationships and Representative Clients
Language skills are key
Notices and Injunctions
Varies by jurisdiction
Customs actions
Available in some countries - Japan, US
Not available in others - Canada
Can be much faster
July 13, 201811

12. And how will you pay for this?
One option: IP Insurance
Abatement Insurance
A policy written for covering offensive use of IP
Doesn’t cover “pre-existing conditions”
Viable option for SMEs
How it works
Applies to legal costs to enforce a patent/trademark – US and OUS
Typical policy limits - $1 - 5M
80/20 copay – insured has a financial stake in the game
“Bond-like” repayment in the event of a financial resolution
Annual premiums – 1-2% of policy limits
Discounts for multiple patents and pending applications
July 13, 201812

13. Changing the Rules of the Game
US Patent Reform
S. 515 – back in limbo
Chinese Patent Reform
New law in 2009
Absolute novelty
Prior use defenses
Japanese Patent Reform
New bill by 2012
European Patent Reform
Pushing for Single EP Patent Court
July 13, 201813

14. S. 515: First-to-File w/ Grace (FTFG) Will Be Different
July 13, 201814
FIG. 1 – Scenarios where both parties are seeking a patent
(based on hypothetical evaluation of about 200 typical fact patterns)
0%
10%
20%
30%
40%
50%
60%
70%
80%
90%
100%
First inventor obtains patent Second inventor obtains
patent
Neither party obtains patent
PercentageofTotalScenarios
FTI System
FTF Systen
FITF System
FTFG System

15. S. 515: First-to-File w/ Grace (FTFG) Will Be Different
July 13, 201815
FIG. 2 – Scenarios where only 1 party is seeking a patent
(based on hypothetical evaluation of about 200 typical fact patterns)
0%
10%
20%
30%
40%
50%
60%
70%
80%
90%
100%
Patenting party is the first
inventor
Patenting party is the second
inventor
No party is entitled to the
patent
PercentageofTotalScenarios
FTI system
FTF system
FITF system
FTFG System

16. THANK YOU!
7/13/201816
Brad Pedersen | 612.349.5774 | pedersen@ptslaw.com