Enforcing Patents: Global Strategies and Tactics
Recorded On: 12/13/2018
Considering the invalidation risk of AIA post-grant proceedings, the uncertainty about patent eligibility after the Alice and Mayo U.S. Supreme Court decisions, as well as the difficulty in getting an injunction after eBay, many experts have concluded that successfully enforcing a patent in the U.S. is a much harder task than it was a dozen years ago.
Some patent owners with international patent portfolios have decided to litigate in other countries which they see as more patent friendly, instead of, or in addition to, pursuing litigation the U.S. This shift has seemingly contributed to a documented spike in patent cases filed in EU countries, most of them in Germany.
This webinar features a U.S.-based IP executive who has carried out a successful patent enforcement campaign in Europe, a litigator based in Silicon Valley with experience in European courts on behalf of U.S. clients, and a leading German patent litigator with many multinational clients. Drawing on their first-hand experiences, they will discuss:
- The decisions necessary before launching foreign litigation
- Important differences between legal systems
- Using foreign litigation to encourage global settlement
- The reality of what it takes to enforce an injunction in Germany
- Whether European decisions make any impact on U.S. courts
- The risk that foreign litigation could backfire in the U.S.
Steven Carlson, Robins Kaplan LLP
Johannes Heselberger, Bardehle Pagenberg Partnerschaft MbB
Boris Teksler, Conversant Intellectual Property Management
Robins Kaplan LLP
is a partner at Robins Kaplan. An IP litigator, Steve draws upon national and international experience to assist clients with patent disputes involving many technologies. He is the co-author of “Patents in Germany and Europe: Procurement, Enforcement and Defense” and a co-author of the “Patent Case Management Judicial Guide,” a publication of the Federal Judicial Center that is distributed as a resource to U.S. federal judges.
Bardehle Pagenberg Partnerschaft MbB
is co-head of the Patent Litigation Group at Bardehle Pagenberg, a Munich-based firm. He leads patent infringement and validity litigations, including opposition and appeal proceedings before the German Patent and Trademark Office and the European Patent Office, as well as nullity proceedings before German courts. Johannes has successfully conducted patent infringement proceedings across national borders for clients who are world leaders in their fields of technology.
Conversant Intellectual Property Management Inc.
is president, CEO, and a director of Conversant Intellectual Property Management, an IP management and licensing company specializing in semiconductors and communications. Before joining Conversant, Boris was CEO of Unwired Planet, where he launched a successful litigation campaign in the U.K. and Germany. Previously, he was senior executive vice president and president of the technology business group at Technicolor, and head of patent licensing and strategy for Apple. He spent 16 years at Hewlett-Packard.