What can I do and where can I do it? The experimental use defense to patent infringement in the U.S. and Canada

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Description

Throughout history, most scientific innovations have been made possible by building upon the prior discoveries of others, a reality that was perhaps most famously encapsulated in the words of Sir Isaac Newton: “If I have seen further it is by standing on the shoulders of giants.” But what if those giants have giant patent portfolios, and don’t particularly like the idea of their competitors climbing up their backs to admire the view? To what extent can researchers make or use a patented invention for the purpose of scientific research or experimentation, without the patentee’s consent? This webinar explores the current boundaries between fair game and patent infringement, in the context of both the experimental use exception to infringement at common law, and the statutory exceptions that permit certain activities for parties seeking regulatory approval to market their products, in both the United States and Canada.

Contributors

Stephen Ferance, The Carbon Patent Group

Steve’s practice focuses on patent drafting and prosecution for applied physics, electrical, computer-related and mechanical inventions. Prior to joining Carbon Patent Group in 2020, Steve earned more than two decades of experience in Canada’s two largest patent practice groups: he joined Canada’s largest intellectual property boutique firm in 1998 and became a partner in 2007, before leaving in mid-2015 to become a partner of a full-service commercial law firm that includes Canada’s largest overall intellectual property law practice.

Steve’s physics background has enabled him to tackle a wide range of computer-related inventions and other complex technologies, including machine learning, neural networks and artificial intelligence, autonomous vehicles, e-commerce, fintech and blockchain, telecommunications, electronic gaming, semiconductor chip annealing and manufacturing techniques, medical radioisotope production, medical imaging and laser / radar imaging, and ultra-high-power arc lamps. Steve’s practice also focuses on medical devices and mechanical inventions including natural resource extraction and harvesting equipment.

Steve’s practice also includes industrial design registrations, IP due diligence reviews for commercial transactions, portfolio management, legal opinions relating to the ownership, registrability, validity and infringement of intellectual property rights, advocacy before Canada’s Patent Appeal Board, and litigation support. (Geeky fun fact: Steve is one of the very few Canadian practitioners who has filed applications for both reissue and reexamination of Canadian patents.)
Stephen Larson, Knobbe Martens

Stephen Larson has extensive experience litigating high-stakes cases in a wide variety of technology areas, including medical devices, biotechnology, software, chemistry, electronics, semiconductors, and pharmaceuticals.

Stephen handles cases involving patent, antitrust, trade secret, product liability, class action, trademark, and breach of contract matters. His current practice primarily involves handling complex patent and antitrust cases.

Stephen served as trial counsel for Masimo Corporation in a three-week jury trial against Philips Electronics North America Corp. and Philips Medizin Systeme Böblingen GmbH. Masimo obtained a $466 million verdict based on infringement of its patents relating to pulse oximetry technology. The verdict was featured in The National Law Journal's "Top Verdicts of 2014" as the top intellectual property verdict and number 5 verdict overall, and was also listed as the "Top IP Award of 2014" by Law360. Stephen also had a primary role in successfully defending Masimo against allegations of patent misuse and antitrust claims alleging monopolization, attempted monopolization, conspiracy, group boycott, tying and restraint of trade. Stephen also played a key role in asserting monopolization and attempted monopolization claims against Philips.

Stephen also recently represented SecureAuth in a patent litigation suit involving three patents asserted by Strikeforce Technologies, Inc. Stephen obtained an early dismissal with prejudice that invalidated all 43 asserted claims.

Thank you

Description

Contributors

Stephen Ferance, The Carbon Patent Group

Stephen Larson, Knobbe Martens