Phillips v. AWH: Practical Pointers on the Use of Intrinsic and Extrinsic Evidence
February 01, 2006
The Federal Circuit's <i>en banc</i> decision in <i>Phillips v. AWH Corp.</i>, 415 F.3d 1303 (Fed. Cir. 2005), provides a reminder, for patent prosecution attorneys and patent litigators alike, of the types of evidence that can be used to support a patent claim construction. In short, intrinsic evidence ' namely, the claim language, specification and prosecution history ' remains the primary source materials for interpreting patent claims. On the other hand, extrinsic evidence ' namely, dictionaries, treatises and expert testimony ' may not have the same persuasive status previously accorded by the Federal Circuit's decision in <i>Texas Digital Sys., Inc. v. Telegenix, Inc.</i>, 308 F.3d 1193 (Fed. Cir. 2002). Nonetheless, extrinsic evidence retains its role in helping to explain the meaning of claim terms as understood by a person of ordinary skill in the art. Extrinsic evidence also can be useful to explain the "context" of the invention that informs any claim construction.
IP Transfer and Pricing Considerations for Financial Service Firms
February 01, 2006
Financial service companies make their money primarily through two core intellectual assets. The first is their expert knowledge of ways to create, expose, tranche and protect asset value. The second is their ability to project their expertise as embodied in their brand. Aside from the specialized intellectual asset merchant banks, financial service companies do not know how to value their knowledge nor their brand. Furthermore, historically they have not paid much attention to which of their global affiliates created the intellectual asset nor which of their affiliates deployed the asset — an activity that creates the accounting and financing phenomenon of "transfer pricing." The importance, more specifically the urgency, in rectifying this informational vacuum arises from recent changes in international tax law pertaining to the pricing of intangible assets that are transferred among Multinational Entity ("MNE") affiliates. This article, targeting the financial service industry, briefly summarizes the fears of the industry concerning transfer pricing and intellectual property ("IP"); cites an example of a recent innovation that has led to a revolution in the way bonds are priced identifying possible IP transfer pricing red flags; and concludes with suggestions for process improvements.
Getting to Allowance: Seven Habits of Highly Effective Clients
February 01, 2006
<b>1) Tell Your Patent Attorney What You Want Your Patent to Do.</b> IP attorneys are continuously told that we should be business partners with our clients, not just patent scribes. But there are lots of ways to protect an invention. Be open and just tell us: Is the patent "for show or for go"? Is it perceived to be vital to the company or a "home run" for the university, or is it a safety filing to cover a limited advance to keep a productive inventor (or top boss) happy. Is it intended to be a shot in the dark, or part of a shotgun blast of applications into an important emerging technology? Don't walk into a car lot and say "I want your best car!" unless you really mean it.
Development
January 27, 2006
Recent rulings you need to know.
Are Condo Hotels Subject to SEC Regulations?
January 27, 2006
The latest real estate trend in the hospitality industry, across the country and around the world, is the "condo hotel." A condo hotel resembles, and is managed and operates as, a traditional hotel, except that certain hotel rooms are offered for sale as condominium units to individual buyers. In addition, unit owners usually have the option of placing those units in a reservation system or rental program and sharing in any associated fees. The proliferation of the condo hotel is largely the result of the benefits that condo hotels afford developers, lenders, and buyers. For a developer, the condo hotel provides the opportunity to turn a quick profit upon sale of condominiums as opposed to the incremental profits traditionally associated with the cyclical hotel industry. Lenders are also more likely to support developers as a result of the potential return on investment realized with condominium sales (even prior to construction). Finally, the condo hotel is attractive to buyers seeking a residence that includes all the amenities associated with traditional hotel stays. Condo hotel purchases and sales also raise new and unresolved legal issues, particularly whether the sale of a condo hotel unit constitutes the sale of a security requiring registration and compliance with federal securities laws.
Index
January 27, 2006
Everything contained within this issue.
