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How To Defend A U.S. Patent Litigation. Presented at: Patentgruppen Århus, Denmark Date: October 26, 2011 Presented by: Richard J. Basile Member St. Onge Steward Johnston & Reens LLC Stamford, Connecticut, U.S. [email protected]. Patent Litigation Outline. Why to Avoid Litigation - PowerPoint PPT Presentation
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How To Defend A U.S. Patent Litigation
Presented at:PatentgruppenÅrhus, Denmark
Date:October 26, 2011
Presented by: Richard J. BasileMemberSt. Onge Steward Johnston & Reens LLCStamford, Connecticut, [email protected]
Patent Litigation OutlineWhy to Avoid LitigationHow to AvoidAnticipate LitigationPrepare for LitigationDefending LitigationTrends in US Patent Litigation
Why Avoid U.S. Patent LitigationLegal Costs Average for One Patent $6M Business Disruption/Internal Costs3-5 Years UncertaintyDamages Could be Entire Profit Not Just Royalty, Injunction (no longer automatic)
The Certainty of Settlement Has Value
Patent Litigation Game30% Change of Unimaginable
Judges Political, No Tech or Patent Experience
Trial Judges Getting Added Burden
More de novo Review on Appeal
Gridlock as Parties Bash Each Other
Patent Scope Legal, Not Technical Question
Courts Pick Most Reasonable Construction
Build Offensive Portfolio
Less of target if you can counterclaim
Nuclear Deterrent, mutual destruction
Clear Products
New products cleared in light of competitors patents
Patent Design Arounds
Good as non-infringement and DOE defenses
Less space for other competitors to operate
Need To Do All 3 Of Above
How To Avoid U.S. Patent Litigation
Claim What Sells
Claim Who You Would Sue
Claim What you Can Prove Infringes
Claim Maximum Damages
Build Offensive Patent Portfolio
Claim Multiple Points of Novelty
Use All Your Free Independent Claims
Restrictions 1)AB, 8)ACD, 15)ABCD
Elections 1)AB, 8)ABC, 15)ABD
Fig. 1 Shows All Features To Be Claimed
Build Offensive Patent Portfolio
Watch Competitors Products
Watch Customer/Vendor Patents-Natural Expansion
Search Multiple Jurisdictions
Where is product made, used or sold
Location of particular industries
Get an Opinion
Clear New Products For No Infringement
Strengthens No Infringement Argument
Limits Competitors Options
Systems/Software
Application Engineering
Customer Requirements
Light weight carbon fiber
What is competitive commercial advantage
Be Careful What You Say In Specification
Patent Your Design Arounds
Anticipate LitigationPortfolio Imbalance with Competitor
Drop in Competitor’s Market Share
Drop in Overall Market/Economy
Business Phase for Product
Watch Competitor Marketing new “must have” feature, pushes competitors
Weak No Infringement Argument Invalidity defense is not sufficient
Prepare For LitigationBuild No Infringement Argument
Invalidity Search as Necessary
Informed Decision, Attorney/Expert Opinion
Preserve Documents
Identify Witnesses
Have a Plan
Defending Patent LitigationClaim Construction Based on Specification
No Literal Infringement Is Not Enough, DOE
Own Patent on Modified Feature
Negate Novelty For Invalidity
Practice the Prior Art
Hire Good Experts
Corporate Commitment
Defending Patent Litigation (cont.)
Set A Budget
Notify All Departments
Same Argument at Trial as Opinion
Pick Your Battles (claim construction)
Be Ready To Look More For Prior Art
Establish And Maintain Credibility With Court
Patent Litigation TrendsSeagate- Objective Recklessness, Piracy
KSR-Nonobviousness
eBay- Right to Enjoin Not Automatic
E-discovery Rules
New Judges Pilot Program
New Patent Statute
CONCLUSION
Involve Lawyers Early in Process
Expect The Unexpected
There is Value in the Certainty of Settlement
