SoCal IP Law Group

The SoCal IP Law Blog

Monthly Archives: January 2011

SoCal IP Institute :: January 31, 2011 :: Fred Kuhns on IP Valuation

SoCal IP Institute – Special Presentation – Fred Kuhns on IP Valuation

Please join us for the SoCal IP Institute meeting, Monday, January 31 at Noon for a special presentation. This activity is approved for 1 hour of MCLE credit.  If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

This week, Fred Kuhns from FRK Consulting will be joining us to discuss IP valuation.  His presentation will include discussion of the ways in which valuation of intellectual property for licensing or sale in the absence of litigation or prior transactions presents special challenges.  A case study will be used to illustrate relevant issues including assessment of markets, modeling top-line sales growth and estimation of appropriate discount rates.  Assumptions regarding exclusive vs. non-exclusive licenses and the treatment of patents derived from government-funded research will also be discussed.  Lastly, the presentation will touch on differences between industries with regard to the type and quality of information available.

Fred Kuhns has performed valuations of patents, trademarks and other intangibles for both transactional and litigation purposes.  He has provided valuation reports for licensing, tax matters, financing of new ventures and measurement of economic damages.  His clients have included companies and entrepreneurs in a range of industries including chemicals, clothing, computer hardware and software, electronics, medical devices and oil refining, among others.  Fred began his career in the aerospace industry and has held consulting positions at Peterson Consulting and PricewaterhouseCoopers.  He received his MBA in accounting and finance from UCLA and is a Certified Management Accountant (CMA).

Advertisements

SoCal IP Institute :: January 24, 2011

SoCal IP Institute

Please join us for the SoCal IP Institute meeting, Monday, January 24 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

We will be discussing the following:

UMG Recordings v. Augusto, No. 08-55998 (9th Cir. Jan. 04, 2011) (case attached)  UMG routinely sends out promotional compact discs intended for radio djs, music promoters and similarly situated individuals.  These CDs include a label that indicates that they are not for resale.  Mr. Augusto acquired a number of these CDs and was offering them for sale on eBay.  The question presented to the 9th Circuit was whether UMG’s unsolicited mailing of these promotional CDs was a “first sale” within the meaning of that defense.  The 9th Circuit affirmed the lower court decision that the first sale doctrine applied, thus providing Mr. Augusto a defense to copyright infringement.

MDY Indus. V. Blizzard Entertainment, No. 09-15932  (9th Cir. Dec. 14, 2010) (case attached) This case is the most recent turn in a long-running dispute between software publisher Blizzard and MDY which created and sells a “bot” program for use with Blizzard’s World of Warcraft game.  Essentially, this “bot” enables a computer to play the game without external input from a user.  MDY initially sought declaratory judgment that its activities did not infringe any Blizzard copyrights.  The district court decision appealed by MDY at this stage found that MDY secondarily infringed Blizzard’s copyrights and that MDY violated sections 1201(a)(2) and (b)(1) of the Digital Millennium Copyright Act.  The 9th Circuit decision reversed all of those holdings except MDY’s violation of DMCA § 1201(a)(2), the provision that prohibits trafficking in technology that circumvents a technological measure that controls access to a copyrighted work. The case was remanded for consideration of a tortuous interference with contract claim.

SoCal IP Institute :: January 17, 2011

Please join us for the SoCal IP Institute meeting, Monday, January 17 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

We will be discussing the following:

iLOR, LLC v. Google, Inc., No. 10-1117, 1172  (Fed. Cir. Jan. 11, 2011) (case attached)  iLOR appealed from an order finding that the underlying district court litigation was “exceptional” under 35 U.S.C. § 285 and awarding attorneys’ fees and costs and expenses.  The decision was based on a finding that iLOR’s proposed construction of the term “the toolbar being displayable based on a location of a cursor in relation to a hyperlink in a first page in a first window of an application” as including a toolbar displayed upon a right-mouse click was “baseless” by the district court.  The Federal Circuit reversed finding that the proposed construction of the term was not “objectively baseless”, likening the relevant “exceptional case” inquiry to that of a finding of willful infringement.

Warrior Sports, Inc. v. Dickinson Wright, P.L.L.C., No. 10-1091  (Fed. Cir. Jan. 11, 2011) (case attached) Warrior  appealed a decision of the Eastern District of Michigan dismissing a malpractice suit brought by Warrior against its IP counsel.  The Federal Circuit vacated the dismissal order because the underlying malpractice claim required the district court to determine whether or not Warrior would have been successful in its patent infringement lawsuit but for the actions of the defendants.  Accordingly, the Federal Circuit determined that the issue arose under 28 U.S.C. § 1338 which gave the district court exclusive patent subject-matter jurisdiction.

SoCal IP Institute :: January 10, 2011

Please join us for the SoCal IP Institute meeting, Monday, January 10 at Noon. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to  Amanda Jones by 9 am Monday.

We will be discussing the following:

Uniloc USA, Inc. v. Microsoft Corp., No. 10-1035, 1055  (Fed. Cir. Jan. 4, 2011) (case attached) In a case asserting Uniloc’s patent covering a method of enabling software to operate on a particular computer, Uniloc appealed a district court JMOL decision of non-infringement and no willful infringement and, alternatively, sought a new trial on both issues.  Uniloc also appealed the district court’s grant of a new trial on damages.  Microsoft sought review of the district court’s denial of its JMOL motion of invalidity.  The Federal Circuit reversed the district court’s grant of JMOL of non-infringement and affirmed the grant of JMOL of no willfulness.  The Federal Circuit also affirmed the grant of a new trial on damages.  The denial of Microsoft’s JMOL motion of invalidity was affirmed.  After a lengthy discussion of infringement and willfulness, the Federal Circuit overturned a long-standing “rule of thumb” that 25% is a good starting point for beginning a reasonable royalty damages inquiry.  The rule was thrown out as “fundamentally flawed”.

In re Microsoft Corp., Misc. No. 11-0944 (Fed. Cir. Jan. 5, 2011) (case attached) On review of a petition for a writ of mandamus forcing the Eastern District of Texas to transfer a case under 28 U.S.C. § 1404(a), the Federal Circuit initially entered a non-precedential decision on November 8, 2010.  This order is a precedential order in the same case.  In the case, the plaintiff was a Texas limited liability company formed (16 days before bringing suit) with corporate offices in Tyler, Texas.  The plaintiff also transferred all of its relevant documents to the recently-opened offices in Tyler.  The Federal Circuit reversed the district court’s decision not to transfer the case to the W.D. of Washington, primarily in response to the attempted venue “manipulation”.