News

Baker Botts Adds Further IP Strength In Washington, D.C.

Baker Botts recently expanded its nationally-recognized intellectual property practice with the addition of two highly-experienced patent litigators to its Washington, D.C. office. David Schlitz and Fred Michaud joined Baker Botts at the end of February. Between the two, they bring over 50 years worth of experience in litigating intellectual property disputes. The addition of these two attorneys increases the firm’s intellectual property bench strength and expands the firm’s presence in the Washington, D.C. region, the home of the Patent and Trademark Office and the Court of Appeals for the Federal Circuit. Messrs. Schlitz and Michaud will both continue to focus their practices primarily on patent litigation in a wide range of technologies covering the electronics, communications, and computer industries.

Mr. Schlitz joins Baker Botts as a partner from the intellectual property boutique firm of Burns, Doane, Swecker & Mathis, L.L.P. in Alexandria, Virginia. Mr. Michaud joins the firm from his private practice as a patent litigator, after serving as a senior partner at Burns Doane where he worked for many years on the firm’s executive committee.

Baker Botts is pleased to announce these two significant additions to its Washington, D.C. office and its intellectual property department, as they will help further entrench the firm as a leader in providing intellectual property services both within the United States and throughout the world.

IP Spotlight

		David Schlitz
		David Schlitz is a partner in the firm's Washington, D.C. office.  He has a practice focused on litigating intellectual property disputes.  These matters include patent cases, Lanham Act matters, trademark and copyright cases, antitrust concerns as they relate to intellectual property matters, and trade secret litigation.  Following law school, Mr. Schlitz served as a law clerk to Chief Judge John A. Mackenzie of the Eastern District of Virginia.  Prior to entering private practice, he worked as a trial attorney in the United States Department of Justice.  In this capacity he handled a number of international cases and received a Department of Justice Special Achievement Award for his work in Hughes Aircraft Company v. United States, the largest ever government patent infringement case.

Articles

Who Is the Inventor? And
Why Does It Matter?

Frederick G. Michaud

United States patent law has the unique requirement that the inventors of claimed subject matter must apply for a patent in their own names, and that the inventors must be correctly named or the issued patent may be invalid. While the ultimate penalty for naming the wrong inventors is harsh, invalidity can be avoided by correcting inventorship at the patent application stage (35 U.S.C. § 116) or after the patent issues (35 U.S.C. § 256). At the application stage, an inventor may be removed or added if the error was made “without deceptive intention” on the part of the affected inventor. After the patent issues, an inventor may be removed regardless of the reason for the error, while an inventor may be added only if “such error arose without any deceptive intention on his part . . . .” 35 U.S.C. § 256; see Stark v. Advanced Magnetics, Inc., 119 F.3d 1551, 1556 (Fed. Cir. 1997). Section 256 of the statute specifies that the error shall not invalidate the patent “if it can be corrected as provided in this section.” Read More...

Centricut, LLC v. ESAB Group, Inc. : The Federal Circuit Requires Expert TestimonyIn Some Complex Patent Infringement Cases

Christa Brown-Sanford

Parties involved in patent infringement suits may use expert witnesses to help the judge or jury understand, and reach a verdict based upon, complex technologies and legal issues. The expert witnesses may serve to explain the facts and technologies involved by testifying about technical issues, damages, and patent law issues. In the past, parties have viewed the decision as to whether to use expert witnesses as discretionary, depending on the facts and complexity of a particular case, and in some instances would opt not to proffer testimony from an expert. However, spending the extra time and money to hire an expert may now prove necessary, or at least highly advisable, in all patent cases. This is so because in a December, 2004 ruling in Centricut, LLC v. Esab Group, Inc., 390 F.3d 1361, 1370 (Fed. Cir. 2004), the United States Court of Appeals for the Federal Circuit held that expert testimony may be required in some patent infringement cases. Read More...

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