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U.S. Supreme Court ruling clears way for larger patent infringement awards


By David Schwartz
Published: June 22nd, 2016

A U.S. Supreme Court ruling last week will make it easier to claim and prove willful infringement – and get treble damages in patent infringement cases – a prospect that could have an important chilling effect on infringers who stand to pay more dearly for their actions.

Voting unanimously, the justices said a federal appeals court had placed overly rigid limits on the ability of trial judges to award enhanced damages, which can total as much as three times the compensatory award. The ruling allows Stryker Corp. to seek an increase to the $70 million award it won in a suit against Zimmer Biomet Holdings Inc. over surgical devices, but the decision has much farther reaching implications.

The Fed Circuit had earlier ruled that treble damages were available only if the patent-holder could show “objective recklessness” by the infringer, and that standard had proved nearly impossible to establish. In the Supreme Court decision, Chief Justice John Roberts said that test “excludes from discretionary punishment many of the most culpable offenders.”

Roberts said enhanced damages shouldn’t be awarded in “garden-variety cases,” but he also said the Fed Circuit interpretation “unduly confines the ability of district courts” to award enhanced damages in especially egregious instances of willful infringement.

“The Supreme Court handed patent owners a major victory today,” said Brian Pandya, a patent litigation attorney at Wiley Rein. “The threat of willfulness had nearly been erased from patent litigation by recent Federal Circuit decisions, but now companies, especially tech companies, will need to factor that into their litigation strategies again.”

The ruling provides “a more flexible test that should be easier to meet, resulting in larger damages awards,” said Case Collard, a patent litigator with Dorsey & Whitney.

The court ruled in both the Stryker case and a similar appeal pressed by Halo Electronics Inc., which is seeking to increase the $1.5 million in damages it was awarded from larger rival Pulse Electronics Inc.

In the Stryker case, the trial judge tripled the jury award “given the one-sidedness of the case and the flagrancy and scope of Zimmer’s infringement” of a pulsed lavage, a technique that removes damaged tissue and cleans bones during joint-replacement surgery.

Stryker had developed a portable lavage device that would replace Zimmer’s bulky machines, and Zimmer responded by hiring someone to “make one for us,” according to a lower court opinion. With additional costs, the final judgment in the case was $228 million. The Federal Circuit upheld the infringement verdict but threw out the increased damage award, saying that Zimmer had presented “reasonable defenses” to Stryker’s claims.

Zimmer said it was disappointed by the ruling. “Nevertheless, the court still emphasized that enhanced damages remain the exception and are reserved for egregious cases typified by willful misconduct,” Monica Kendrick, a company spokeswoman, said in an e-mail.

Stryker spokeswoman Yin Becker said that company was pleased. “We look forward to vindicating the district court’s enhanced damages on remand,” she said in an e-mail.

In the Halo case, the trial judge threw out the jury’s finding of willfulness on the same legal grounds. The Federal Circuit upheld that decision. The Halo dispute involves a component called a surface mount transformer that’s attached to a circuit board. The companies compete to supply the transformers to Cisco Systems Inc. for use in internet routers. The Supreme Court set aside both rulings and sent the cases back to the Federal Circuit.

The Supreme Court cases are Stryker Corp. v. Zimmer Inc., 14-1520, and Halo Electronics Inc. v. Pulse Electronics Inc., 14-1513.

Source: Bloomberg

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Understanding and Applying the Defend Trade Secrets Act of 2016


By David Schwartz
Published: June 22nd, 2016

The Defend Trade Secrets Act is now law. This first-ever federal civil cause of action for trade secret misappropriation provides a new layer of IP protection, and recognizes that failure to protect trade secrets inhibits innovation, stifles economic growth and has cost U.S. innovators more than an estimated $300 billion annually.

As with any new law, it will take some careful examination to determine just how DTSA can be applied optimally by university TTOs and other innovation-driven organizations. What is clear, however, is that trade secrets – now more than ever – must be considered an important element of your overall IP strategy.

That’s why Technology Transfer Tactics has partnered with intellectual property attorney Andrew M. Howard of Shore Chan DePumpo, LLC, to present this timely webinar: Understanding and Applying the Defend Trade Secrets Act of 2016. Please join us on July 13 for a detailed look at the new law’s provisions, and how your university can best apply DTSA to protect your valuable IP.

For complete details and to register, CLICK HERE.

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TTO’s focus on service, business metrics wins over faculty and boosts commercialization output


By David Schwartz
Published: June 22nd, 2016

Additional resources will help any technology transfer operation (TTO) improve its performance, but what if you also set new expectations and metrics that are specifically aimed at catering to the needs of faculty and researchers? Would such an approach have an appreciable impact on commercialization output?

That’s what new leadership at Morgantown, WV-based West Virginia University wanted to know, and while they are still in the midst of an experiment to test the impact of such changes at the institution’s new Health Sciences (HSC) Innovation Center, early results are impressive. The number of invention disclosures coming into the center is on track to roughly triple compared with the previous fiscal year, five new health sciences start-ups have taken shape, and administrators see signs of a positive culture shift.

While it is difficult to specifically tie the improvements to any single initiative, there has definitely been a change in operations and philosophy at the HSC Innovation Center, much of it informed by leaders who started down this path with primarily private sector experience. “When I got here, I had never before worked at a university. I came from the venture capital/start-up side,” explains Matt Harbaugh, who joined WVU as the director of innovation, entrepreneurship and commercialization in August of 2013, and has since been promoted to associate vice president of transformation. “I was surprised that [the health sciences TTO] wasn’t more integrated into the daily operations of the research, and from what I have heard, [that sort of arrangement] is pretty common.”

Harbaugh wanted to change that dynamic so there would be more of an ongoing discussion between tech transfer staff and health science researchers. In Harbaugh’s view, tech transfer personnel need to be in the labs with the researchers on a regular basis — talking to them about what they are doing, helping them think through the future and showing them how they can get more impact out of their research.

Harbaugh’s like-minded partner in this effort is Richard Giersch, another transplant from the private sector, who has now taken charge of the HSC Innovation Center. Giersch’s first mission was to talk with administrators, faculty and staff and get their sense of what the next generation of technology transfer should look like. This led to plans for an HSC Innovation Center that would have four distinct areas: technology transfer, entrepreneurial education, a health sciences business incubator, and assistance for graduate education around commercialization and venture development.

“We have implemented almost a concierge type of disclosure service,” observes Giersch. “I have a couple of PhD students who work as part of my team for 20 hours a week,” he says. “When faculty members have questions … I find one of these students to help them get their disclosure completed accurately and completely, and also notarized so that we can get everything taken care of within an office visit in an actual one-on-one conversation.”

Giersch also established an internal requirement for a same-day response to any faculty question or communication via phone or e-mail. “Any e-mail that arrives before 4 p.m. should be addressed that day,” notes Giersch. “Anything that arrives after 4 p.m. should be addressed first thing in the morning.”

The performance requirements also apply to inquiries from business partners or potential licensees. “Our customers aren’t just the academic customers. They are the corporations of the world,” stresses Giersch. “I have been in leadership positions in bioscience and life science companies over my career, and I have experienced the lack of responsiveness in other academic institutions.”

Another internal metric that Giersch implemented targets legal bottlenecks. “One of the biggest hurdles for institutions interacting with businesses or effectively getting projects out the door and in the hands of the private sector is very often the legal affairs office,” he says.

Consequently, Giersch has implemented a policy stating that any legal agreement that comes through the TTO needs to be processed within five business days. “I don’t want things sitting in my department waiting for a response,” he explains. “If it takes longer than five days, then there needs to be an immediate communication back to the sponsor as well as the faculty member on what the reason for the delay is, and how we are going to address it as quickly as possible.”

A detailed article on WVU’s faculty service approach and its internal performance standards appears in the June issue of Technology Transfer Tactics. To subscribe and access the full article, along with hundreds of other practical case studies and best practices in the publication’s online archive, CLICK HERE.

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U Cambridge, GSK partner to develop novel HIV therapeutics


By David Schwartz
Published: June 22nd, 2016

The University of Cambridge has become the latest major university to link up with pharma giant GlaxoSmithKline in its Discovery Partnerships with Academia (DPAc) initiative. The two will partner on discovery of new therapeutic approaches to HIV infection. continue reading »

The University-Industry Partnership Distance Learning Collection

The University-Industry Partnership Distance Learning Collection is a four-session crash course in how to attract more university-industry research partnerships and ensure the deals you sign are made to last. Click here for details >>

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UC San Diego sets up institute for entrepreneurs


By David Schwartz
Published: June 22nd, 2016

UC San Diego has created a new Institute for the Global Entrepreneur, which will work with interdisciplinary teams of students to create more start-ups. continue reading »

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Baylor, Cell Medica in groundbreaking deal to create immunotherapy products for cancer treatment


By David Schwartz
Published: June 22nd, 2016

Baylor College of Medicine today announced the launch of a landmark licensing deal and sponsored research collaboration, representing a significant milestone in its efforts to develop a new class of life-saving cancer therapy. continue reading »

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Low-cost access to ktMINE royalty rate database available under new partnership


By David Schwartz
Published: June 22nd, 2016

Through a new partnership between ktMINE and 2Market Information Inc., publisher of Tech Transfer eNews, readers now have access to ktMINE’s incredibly powerful royalty rate and license agreement database — without paying thousands of dollars or committing to an ongoing, costly agreement. Under the partnership’s One-Day Pass program, you can get access to the same data used by governments, tax authorities, and major corporations worldwide for just $495.

Here’s what you get with a 24-hour pass to the ktMINE royalty rate and license agreement database:

  • Unlimited access to 100,000+ license agreements and more than 60,000 royalty rates
  • Connect royalty rates with the license agreements they relate to as well as the companies in the market space you’re researching
  • Take your analysis offline with up to 25 data exports into Excel
  • Save full-text agreements directly to your computer
  • Create your own alert setting that will be monitored up to 90 after your One-Day Pass is activated

For complete details on the One-Day Pass, CLICK HERE.

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The way you address competitors in your pitch can make or break you with investors


By David Schwartz
Published: June 22nd, 2016

When it comes to addressing the competition, most entrepreneurs can’t resist making derogatory statements to their own team, to investors, and even to customers – but doing so reflects poorly on your integrity, intelligence, and your understanding of business basics, says start-up advisor Martin Zwilling in a recent blog post. And it can doom your chances with potential investors. continue reading »

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Two Dublin universities create €60M start-up superfund


By David Schwartz
Published: June 22nd, 2016

Two of Ireland’s top universities — University College Dublin and Trinity College Dublin — have combined forces to form a €60M investment fund for start-ups based on research emerging that country’s research institutions. continue reading »

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A start-up’s go-to-market approach must be informed by customers


By David Schwartz
Published: June 22nd, 2016

Two leading technology start-up consultants, writing for Harvard Business Review, address the complexity of devising a go-to-market strategy after funding has been secured. Far too many, say Ron Ashkenas and Patrick Finn, fail because that strategy focuses more on what the technology can do than on why customers need it. continue reading »

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Post-doc’s biofuels start-up offers cheaper, scalable way to produce clean energy from biomass


By David Schwartz
Published: June 22nd, 2016

A start-up out of the University of Calgary is has discovered a novel way to convert the carbon dioxide in biomass into clean energy that aims to solve challenges associated with the cost and scalability of that process. continue reading »

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U-Michigan cyber security start-up acquired 


By David Schwartz
Published: June 22nd, 2016

QuadMetrics, a cyber risk security start-up based on technology licensed from the University of Michigan in 2015, has been acquired by San Jose, CA-based analytic software company FICO. Financial terms were not disclosed. continue reading »

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