Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

 
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Tuesday
Jan282014

Blocking patents? Cross License!

Blocking patents occur when a first business owns a patent for an underlying technology and a second company owns a patent for an improvement to the underlying technology.  In such situations, neither company can practice the improvement without infringing.  The patents block each other from using the invention: hence the term, "Blocking Patents." 

The common resolution of the situation is to enter a cross-license for the improved technology.

The New York Times article titled, "Google and Samsung Sign Broad Cross-Licensing Agreement," discussed an example of a cross-license agreement between two competitors who found a mutually beneficial agreement to proceed.

 

Wednesday
Jun192013

Appeals Court Reconsiders: Circuit Court should not Review Arbitration Panel's Decision

The Third District Court of Appeal of Florida withdrew its earlier opinion stating that, in a confirmation proceeding, the Circuit court could review an arbitration panel's decision on whether a party had the power to institute the arbitration.

Read the 3rd DCA opinion in Suzlon Energy v. Ventus de Nicaragua.  Congratulation to my friend Brian Silverio for winning the reconsideration.

Read the original 3rd DCA opinion, which was reversed.

My partner, Daniel Vielleville leads Assouline & Berlowe's arbitration group.  Daniel thought the 3rd DCA mitigated a major mistake by withdrawing its earlier opinion.  Daniel says arbitration award winners should take three lessons from the opinion:

  1. A confirmation of an arbitration award should be performed in Federal Court.
  2. If you ignore number 1, federal decisions should be applied by a state court when deciding to set aside an award.
  3. When an arbitration panel confirms that a party had power to bring an arbitration, the court loses the power to review that decision during a confirmation proceeding.

If you need a lawyer to represent you in an arbitration or if you have an arbitration award that you want to confirm in Florida, contact Daniel Vielleville.

 

Friday
Jun142013

Supreme Court Rules DNA Not Patentable Subject Matter: Association for Molecular Pathology v. Myriad

The U.S. Supreme Court in Association for Molecular Pathology v. Myriad held unanimously (9-0) that isolated DNA is not patentable subject matter and cDNA is patentable. 

The NY Times cover article explains some broader significance.  The times believes that this will make additional genetic tests immediately more available and less expensive.  As mentioned in an article by The Nation, "Myriad’s attorney argued that invalidating the patent would limit the incentive for future investments in biotechnology."

PBS NewsHour gave an interesting video review including Former USPTO Commissioner Q. Todd Dickinson (not my favorite commissioner) and an Sandra Park giving the ACLU comments

Patently-O posted its usual good legal commentary on the opinion and separately on Scalia's concurrence.

I am trying to get some comments from the non-legal field on the case.

Monday
Jun102013

"When Patents Attack!... Part Two" from This American Life

"When Patents Attack... Part Two!" was a recent episode of This American Life.  It is a radio show and podcast episode discussing patents, licensing, "patent trolls" and the like.

The podcast is pessimistic about patents.  There are solutions and strategies to many of the topics.

  • Liability can come from unexpected places--buy licensed raw materials, do not waive indemnity from suppliers, even better make it express in a purchasing agreement
  • The Eastern District of Texas is a hostile jurisdiction--file a local declaratory judgment action upon receipt of a cease and desist letter.
  • Everyone else is settling--consider joint defense agreements

Email me your questions about the when patents attack podcast and I will collect and publish the questions and answers.

By the way, I am a podcast fan.  A podcast is a syndicated episode (typically audio) that can be played later--kind of like a DVR for radio on your computer or smartphone.  The following list are my favorite five podcasts, the link is to their webpages and the RSS feed can be found there:

  1. ESPN: The B.S. Report with Bill Simmons.  A sports/pop culture podcast
  2. Filmspotting; Streaming Video Unit (SVU)  Film critics discuss movies through the streaming video (e.g. Netflix) prism.
  3. Shields and Brooks: PBS NewsHour Podcast  A civilized discussion of the week's politics.
  4. Sound Opinions  Music podcast featuring new music review, classic album dissections, etc.
  5. Valtimax Business Strategy and Marketing Podcast  Dave Lorenzo shares his business knowledge
Wednesday
Jun052013

Obama Launches: "White House Task Force on High-Tech Patent Issues"

President Obama announced "White House Task Force on High-Tech Patent Issues."  The orders are unprecedented; in eighteen years of practice, I have never seen a set of patent-related executive orders.

I will be digesting and posting about the provisions in the days to come.

The main points include:

LEGISLATIVE RECOMMENDATIONS 

  1. Require patentees and applicants to disclose the “Real Party-in-Interest"
  2. Permit more discretion in awarding fees to prevailing parties in patent cases
  3. Expand the PTO’s transitional program
  4. Protect off-the-shelf use by consumers and businesses
  5. Change the ITC standard for obtaining an injunction
  6. Use demand letter transparency to help curb abusive suits
  7. Ensure the ITC has adequate flexibility in hiring

EXECUTIVE ACTIONS 

  1. Making “Real Party-in-Interest” the New Default.
  2. Tightening Functional Claiming.
  3. Empowering Downstream Users.
  4. Expanding Dedicated Outreach and Study.
  5. Strengthen Enforcement Process of Exclusion Orders.

White House Task Force on High-Tech Patent Issues