Tech Transfer Central

Infringement of University Patents: How to Respond and Critical Issues to Consider in Making Litigation Decisions

Format: On-Demand Video/Transcript, or DVD
Originally presented: Tuesday, November 14, 2023
Price: $197
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You’ve Discovered a University Patent is Being Infringed. Now What?

Discovering that your university’s valuable intellectual property is being infringed upon is startling to say the least. But before jumping head-first into a contentious legal battle that can sap your budget and potentially tarnish your reputation, it’s wise to take a step back and evaluate the situation as a whole. 

Can the cost of going to court — which can run $1 million a month and up to $30 million — be justified by the value of the IP or the flagrant nature of the infraction? What is the relationship between parties? Is the infringer a research partner? How will a lawsuit look in the eyes of the public and potential future partners? And are there ways to fund the litigation and reduce your risk, as well as the time spent on preparation? Is there a path to a negotiated resolution?

It’s a sticky but relatively common situation, and it’s not to be taken lightly. That’s why our distance learning division secured two experts to bring you this critical 90-minute webinar:

Infringement of University Patents

Join Sandra L. Haberny, PhD., Partner with Quinn Emanuel, and Andrew J. Bramhall, Partner with Quinn Emanuel, as they discuss special considerations from the university’s perspective including how to fund the litigation, optimal license agreement language relating to enforcement, and what happens when IPRs are filed and how that is funded vs the litigation funding. They will also cover:

  • How to discover infringement
  • What to do when infringement is identified
  • Working with affected licensees
  • Enforcement through compulsory licensing – critical steps and mis-steps
  • Factors to consider in making the decision to litigate or pursue alternative resolution
  • Working with outside counsel and stakeholders in litigation
  • Managing the litigation-related staff workload
  • Weighing the potential risks and benefits of litigation
  • Funding options for litigation
  • UT-Arlington’s experience: A $42 million win

Access to the recorded streaming video for future training and education

Meet your presenters:

Sandra L. HabernySandra L. Haberny, PhD
Quinn Emanuel

Sandy has an extensive patent litigation and trade secret practice with an emphasis in the life sciences. She specializes in resolving complex business disputes both on the papers and at trial, and also advises on due diligence and pre-litigation strategy.

Sandy has litigated, advised clients, and tried cases in a range of complex technologies. She is admitted to practice before the U.S. Patent and Trademark Office, and has experience prosecuting patents, conducting inter partes review and post grant review proceedings, and counseling clients on patent portfolio development and enforcement strategy.

Sandy is active in the legal community. She has held officer positions in the Orange County Bar Association’s Intellectual Property and Technology section, is a member of other intellectual property and women attorney groups, and speaks regularly at seminars and law schools.

Andrew Bramhall
Andrew J. Bramhall
Quinn Emanuel

Andrew Bramhall is a partner in the Silicon Valley office, where he has worked since 2007. His practice focuses on high-stakes intellectual property disputes with an emphasis on patent and trade secret litigation. Andrew has represented plaintiffs and defendants in state and federal courts throughout the country, including in the Northern, Central, and Southern Districts of California, the Eastern and Western Districts of Texas, the District of Delaware, the Southern District of Florida, and the Southern District of New York. Andrew has litigated numerous investigations before the International Trade Commission (ITC) in Washington D.C. on behalf of complainants and respondents, and has also represented both petitioners and patent owners in post-grant proceedings before the USPTO, including in inter partes review and re-examinations.

Litigating complex technology is Andrew’s forte. At Quinn Emanuel, he has worked on matters involving a wide range of technologies across a broad spectrum of scientific and engineering disciplines, including semiconductor processing, genetic cloning, DNA printing, magnetic tape, micro-electromechanical systems (MEMs), wireless communications and standards, computer operating and data storage systems, liquid crystal displays, optical devices, and smart phones—to name a few. Prior to law school, Andrew worked in a biotech laboratory at a start-up company in the Bay Area, which specialized in making gene- and protein-based arrays and was eventually acquired by Affymetrix. Andrew has routinely been recognized as a top lawyer in his field, having been named a Super Lawyers Rising Star from 2013 – 2019.

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