Issue #6-1 | November 2, 2011

Appeals Court says Dish Network Corp. insurers must provide legal defense for patent infringement

Between 2001 and 2004, Dish Networks purchased a series of general liability and excess liability policies from five insurance companies, all of which were to defend and indemnify Dish against claims alleging “advertising injury.” The decision hinged on the definition. The policies used this language:

  • Oral or written publication of material that slanders or libels a person or organization or disparages a person’s or organization’s goods, products or services;
  • Oral or written publication of material that violates a person’s right to privacy;
  • Misappropriation of advertising ideas or style of doing business; or
  • Infringement of copyright, title or slogan.

Chief Judge of the 10th Circuit in Denver, Mary Beck Briscoe, wrote: “we disagree with [the district court’s] ruling that the patented means of conveying advertising content at issue here could not be ‘advertising ideas’ within the meaning of Dish’s commercial general liability policies.”

IP managers should work closely with risk managers and monitor insurance policy addenda that now might try to re-define “advertising injury.”

PWC releases report on 2011 patent litigation, contrasts reasonable royalty rates with lost profits

A new PWC study shows reasonable royalties are the most frequent kind of damages awards in patent cases and comprise a greater share with each passing year, while seeking recovery of lost profits can be costly and complex.

In order to determine lost profits, without data on specific sales taken by an alleged infringer from the patent holder, an assessment of particular facts and circumstances in a "but for" situation must be made. This assessment examines whether there is:

  • demand for the product tied to the patent’s claims; and
  • an absence of acceptable alternate substitutes.

In addition, the assessment determines:

  • if the patent holder has adequate manufacturing and marketing capabilities;
  • if there is sufficient financial information to complete the quantification; and
  • market share data to fairly allocate the infringer’s sales, if needed.

BVR offers ktMINE for practitioners seeking a reasonable royalty rate solution, plus Nancy Fannon’s 2011 guide to Calculating Lost Profit in IP and Patent Infringement Cases.

USPTO publishes the revised Trademark Manual of Examining Procedure

The Trademark Manual of Examining Procedure – 8th Edition (TMEP) is published to provide trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the practices and procedures relative to prosecution of applications to register marks in the USPTO.  The manual contains guidelines for examining attorneys and materials in the nature of information and interpretation, and outlines the procedures that examining attorneys are required or authorized to follow in the examination of trademark applications. 

The manual may be downloaded free of charge from the USPTO website. References in the above Manual to the Trademark Trial and Appeal Board Manual of Procedure (TBMP) refer to the Third Edition, May 2011, also currently available on the USPTO website. The TBMP sets forth guidelines and practices followed in proceedings held before the Trademark Trial and Appeal Board.

Website launched on Cooperative Patent Classification (CPC)

The EPO and the United States Patent and Trademark Office (USPTO) have launched a website on the Cooperative Patent Classification (CPC), a joint project aimed at developing a classification scheme for inventions that will be used by both offices.

The website,, contains detailed information about the new classification scheme and the project's progress for staff at the EPO, USPTO, and other patent offices as well as industry and the user community.

BVR Announces Business Valuation Case Law Compendium on Intellectual Property with Searchable CD

BVR's Intellectual Property Valuation Case Law Compendium contains close to 100 court case abstracts and full text opinions of cases involving a dispute over the value of intellectual property. With court case digests written by BVR’s internationally recognized expert legal editorial team, a summary table for easy reference to cases, and a fully indexed searchable CD, this Compendium is a must-have reference for any expert involved in intellectual property valuation. 

To learn more or request review copies of the Compendiums, please contact Colin Murcray at 503-291-7963 ext. 117 or


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Advanced Workshop on Valuation Issues Under ASC 805 and Business Combinations
November 3, 2011
10:00am - 2:00pm PT Featuring: Mark Zyla

Strategies to Mitigate Patent Litigation Costs
November 16, 2011 10:00am - 11:15pm PT Featuring: Julie Katz

Calculating Lost Profits in IP and Patent Infringement