Outsourcing In-House Counsel: The Case of Litigation Management

Previously I discussed the business case for engaging outsourced in-house counsel when a company is facing legal challenges related to standard essential patent (SEP) assertions[1] and in the context of trade secret services.[2] In this article I discuss how outsourced in-house counsel can provide significant value-add when engaging outside litigation counsel. Where a company does not have in-house counsel, or where in-house counsel is not familiar with a specialized area like Intellectual Property (IP) litigation, outsourced, in-house counsel can both help the company engage the best outside counsel and manage them more effectively. Read more

Patent Demand Letters – Response Tactics (Part 4)

Patent Demand Letter Response Tactics by David L. CohenIf you receive a patent demand letter, you can choose from many courses of action, but each has pros and cons. Today we will discuss some immediate considerations to consider.

  1. Doing nothing is an option, but a risky one.

Pro: Some patent owners are not committed to actually filing lawsuits. They cast a wide net with lots of demand letters, knowing some recipients will pay nominal amounts to make it go away. If you ignore it, there’s a chance there will be no serious follow-up.

Con: Ignoring a patent demand letter may lead the patent owner to file a lawsuit to get your attention. Read more

Meet the IP Thought Leaders: Eric Stasik

Meet the IP Thought Leaders: Eric Stasik by David L. CohenI first met Eric Stasik some 5 years ago when I was at Vringo. When we first met, it took no more than 10 minutes to appreciate how lucky I was to have him on my team. Eric has an uncanny ability to, very quickly, see through can’t and cut to the core issues at hand. More importantly, he finds solutions. Eric gets stuff done quickly, effectively, and cost efficiently.  Having seen him at work in the years since, my appreciation of Eric and what he brings to the table has only deepened.

Eric currently provides assistance and guidance to firms engaged in commercial patent license negotiations through his consultancy, Avvika AB.  I am honored he agreed to this interview.
Read more

When Vringo Met China’s NDRC

When Vringo Met China's NDRC by David L. CohenIntellectual Asset Management Magazine (IAM) today published a short excerpt of my and Doug Clark’s forthcoming, longer piece on China’s anti-monopoly law (AML) and how it has been applied to standard essential patents (SEPs).   The published excerpt concerns China’s National Development and Reform Commission’s (NDRC) investigation of Vringo undertaken at the behest of ZTE.  The piece focuses on two hair-raising meetings I had with NDRC officials in Beijing where all manner of explicit and implicit threats to my life, liberty, and property were made.  Read more

Meet the IP Thought Leaders: Donal O’Connell

Meet the IP Thought Leaders: Donal O’Connell by David L. CohenOver the course of my 20+ years practicing law, I have had the honor of working with many individuals at the cutting edge of all aspects of intellectual property. I consider myself very lucky that most of these folks, in addition to being luminaries in the industry, are good people and have welcomed me into their professional world with open arms. To celebrate these individuals, I am inaugurating a series of interviews. Read more

Patent Demand Letters – Immediate Steps You Can Take (Part 3)

Steps to Take if You Receive a Patent Demand Letter (Part 3) by David L. Cohen

This article is the next piece of my series discussing patent demand letters. Part one, reviewed the initial considerations and steps one should make upon receiving a patent demand letter. Part two explored the subject or content of the letter — i.e., what is the sender asking for? Part three addresses evaluating the merits.

At this stage it might not be worthwhile to perform a full analysis of the letter’s claims, but it is definitely worth performing at least a high-level review.   Read more

A Short History of Vringo’s Battle with ZTE

A Short History of Vringo’s Battle with ZTEThis paper was originally written as a source material for my presentation at the ABA’s 2017 IP West as part of the The China Paradox – October 11-12, 2017, Long Beach, CA, and subsequently edited and supplemented.

I.                The Vringo Background

The following paper is a short history of the thirty-nine-month battle between Vringo, Inc. and ZTE Corporation. Vringo (now called FORM Holdings) was a technology company that became involved in the worldwide patent wars.[1] The company won a 2012 intellectual property lawsuit against Google, in which a U.S. District Court ordered Google to pay 1.36 percent of U.S. AdWords sales. Analysts estimated Vingo’s judgment against Google to be worth over $1 billion.[2] The Court of Appeals for the Federal Circuit overturned the District Court’s ruling on appeal in August 2014 in a split 2-1 decision,[3] which Intellectual Asset Magazine called “the most troubling case of 2014.”[4] Vingo also pursued worldwide litigation against ZTE Corporation in twelve countries, including the United Kingdom, Germany, Australia, Malaysia, India, Spain, Netherlands, Romania, China, Malaysia, Brazil and the United States.[5] The high profile nature of the intellectual property suits filed by the firm against large corporations known for anti-patent tendencies has led some commentators to refer to the firm as a patent vulture or patent troll.[6] Read more

Standard Essential Patents: What Every IP Attorney and In-house Counsel Should Know Seminar

Standard Essential Patents: What Every IP Attorney and In-house Counsel Should KnowDavid L. Cohen is thrilled to be a panelist at the Standard Essential Patents seminar for IP executives at the John Marshall Law School in Chicago, IL.

The seminar is designed for IP attorneys, licensing professionals, and technologists interested in gaining valuable insights into the why and how of SEP development and licensing. It will be taught by a renowned former jurist, a respected licensing executive, and an innovative IP strategist who will bring their perspectives to bear on this fascinating field.

Read more about the seminar and register here.

Patent Demand Letters – The Kinds of Letters You Might Receive (Part 2)

Steps to Take if You Receive a Patent Demand Letter (Part 2) by David L. CohenIn my previous article,  I discussed the initial considerations and steps one should make upon receiving a patent demand letter. Particularly, identifying the allegations and sender. In part two, I discuss the subject or content of the letter — i.e., what is the sender asking for? As with most things, infringement letters come in a number of flavors. Read more

Patent Demand Letters – You Have One, What Now? (Part 1)

Steps to Take if You Receive a Patent Demand Letter by David L. CohenWhile not as prevalent as it may have been in the go-go days of the early 2000s, in certain industries in the United States, it is only a matter of time before a company will receive a patent demand or cease and desist letter. Read more