The Intellectual Property Law Server

Welcome, Guest. Please Login or Register.
Oct 27th, 2020, 11:06pm

Forums Forums Help Help Search Search Members Members Calendar Calendar Login Login Register Register
   Intellectual Property Forums
  
  
I have an Invention ... Now What?
(Moderators: Forum Admin, JimIvey, JSonnabend)
   ok where do I start?
« Previous topic | Next topic »
Pages: 1 2 3 4  Reply Reply Send Topic Send Topic Print Print
   Author  Topic: ok where do I start?  (Read 3052 times)
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: ok where do I start?
« Reply #15 on: Dec 8th, 2005, 11:03am »
Quote Quote Modify Modify

on Dec 8th, 2005, 9:30am, franlorin wrote:
I have never heard of a $500k search - I don't really know whether anyone has ever called for such an expense for a patent search at any stage of prosecution

That's why I said this:
 
on Dec 7th, 2005, 2:46pm, JimIvey wrote:
If you're litigating a patent and looking at a possible liability of $10million or more, ...

Regards.
IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
franlorin
Junior Member
**


taxonomist-in- training

   
WWW Email

Posts: 82
Re: ok where do I start?
« Reply #16 on: Dec 9th, 2005, 8:24am »
Quote Quote Modify Modify

Quote:
If you're litigating a patent and looking at a possible liability of $10million or more, spending $500,000 on searching may be a very wise investment (but this is obviously post-filing and involving someone else's patent).

 
your caveat included the phrase "obviously post-filing and involving someone else's patent" - I don't know about that
 
well, anyway, maybe spending 5% of a $10 million liability for a patent search seems sensible AFTER filing according to your statement - that would mean that over $1 million might be spent by either RIM or NTP in their $20 million+ for a post-filing search in their major litigation - I don't think so - actually, the suit caused the USPTO to spend their own funds to reexam the patents involved, maybe to help resolve this conflict - some top-level management may be nervous that their Blackberrys may be out of serviice unless they resolve the conflict to the benefit of RIM? - who knows for sure?
 
but I still wonder who may EVER spend $500k for a search during litigation, even for a $10million liability - I still cannot believe that such a search cost has been or would ever be spent
 
take care, Fran Lorin www.patent.0catch.com
« Last Edit: Dec 9th, 2005, 8:34am by franlorin » IP Logged

Fran Lorin
www.siberkhem.com
JimIvey
Moderator
Senior Member
*****




  jamesdivey  
WWW

Posts: 2584
Re: ok where do I start?
« Reply #17 on: Dec 9th, 2005, 4:54pm »
Quote Quote Modify Modify

on Dec 9th, 2005, 8:24am, franlorin wrote:
your caveat included the phrase "obviously post-filing and involving someone else's patent" - I don't know about that

"If you're litigating a patent and looking at a possible liability of $10million or more ...."  Generally, you only face patent liability when (i) the patent is already issued and (ii) someone else is asserting it against you.  Seemed obvious to me.
 
on Dec 9th, 2005, 8:24am, franlorin wrote:
well, anyway, maybe spending 5% of a $10 million liability for a patent search seems sensible AFTER filing according to your statement - that would mean that over $1 million might be spent by either RIM or NTP in their $20 million+ for a post-filing search in their major litigation - I don't think so - actually, the suit caused the USPTO to spend their own funds to reexam the patents involved, maybe to help resolve this conflict - some top-level management may be nervous that their Blackberrys may be out of serviice unless they resolve the conflict to the benefit of RIM? - who knows for sure?

I doubt very much that either side relied exclusively upon the reexamination rather than doing their own prior art search.  
 
on Dec 9th, 2005, 8:24am, franlorin wrote:
but I still wonder who may EVER spend $500k for a search during litigation, even for a $10million liability - I still cannot believe that such a search cost has been or would ever be spent

At Skjerven Morrill (my prior firm), in representing AMD against Intel, an important piece of prior art was located in a university library in either Australia or New Zealand.  There was disagreement as to whether it counted as a "publication" and the effectiveness of the libraries card catalog system was a point of contention, if I remember correctly.  If libraries in the geographically most distant parts of the globe are within the parameters of the search, it's quite possible that 0.5million is budgeted for the search.  5% of the total litigation budget?  Maybe not.  Maybe budgets like that are reserved for cases when more is at stake.
 
How much do you think MSFT spent in its search re Eolas?  0.1% of the liability at risk?  That would be the magic number 0.5million.  The important prior art there was a demonstration to two Sun employees.  Perhaps that could have been found easily through deposition and/or discovery.  Perhaps it was found through exhaustive detective work burning through a large budget at a high rate.
 
Would a typical search firm do this type of work?  No, of course not.  Well, they might agree to do it, but I suspect that MSFT entrusted their litigation firm to the search effort and the firm probably used an army of associates to fly all over the world poking into tiny university libraries (or perhaps working with them through many hours on the phone).  I suspect most litigants would use the same approach, so I wouldn't expect to see many 6-figure search jobs for a search firm.  
 
My point is, quite simply, this:  searching is not a simple yes or no choice -- another important parameter of searching is how much to search, and how much one searches can vary extremely widely.
 
Regards.
IP Logged

--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Pages: 1 2 3 4  Reply Reply Send Topic Send Topic Print Print

« Previous topic | Next topic »
Powered by YaBB 1 Gold - SP 1.3.2!
Forum software copyright 2000-2004 Yet another Bulletin Board