Patent Litigation: Procedure and Tactics

To a patent holder patent litigation, though not inevitable, must always loom as a possibility.  In fact if it does not, patent infringement is almost inevitable.  Without a qualified patent attorney, an inventor should probably not even apply for a patent as others will benefit from his invention as much as he does.

The procedures and tactics used in patent litigation, like the steps to a dance, must be known and anticipated to achieve success.

Patent Litigation Scenario

• A patent is successfully obtained.
• The product is marketed.
• Unauthorized use takes place.
• The patent holder issues a cease and desist letter to the infringer.

At this point, the infringer has a host of options.  The patent attorney launching the action must be prepared for all of them.  Much of this preparation should take place before the application is made.  The burden of proof rests with the plaintiff.

Responses to a Charge of Patent Infringement

• The patent holder misled the USPTO or the patent office in another country by withholding information about prior art, that is, the state of the industry at the time of the application.  The invention, therefore, is not novel.
• The invention was not described adequately and was, in fact, obvious to any industry insider.
• The invention was already known to the general public – or enough of it – to invalidate patent protection.
• The invention was already in use.
• A countersuit: The patent holder is actually infringing on the alleged infringer.

All of these factors should have been part of the original application and prosecution phases prior to the acceptance of the patent.  The patent attorney who fails to prevent these defences is either legally unskilled or technically uninformed.

Additionally, there are many other forms of defense:

• The item in question differs materially from the patented item.  An analysis of each claim – that is unique element – of the invention will be accompany this defence.
• The activity taking place is not infringement.

There may be many choices of infringer – a user, producer, a seller or re-seller or an importer.  The infringement may be direct or indirect, if the action involves assisting an infringer.

• There is no damage to the plaintiff.
• The suit was not filed in a timely way.
• The patent has expired.
• The patent is not applicable in the local jurisdiction.

Patent Litigation Strategy

Patent “trolls” – that is holders of patents whose sole purpose it is to win large awards – may seek out users of competing products who may be induced to settle and avoid legal action.

Conversely some unauthorized users may test the resolve of the patent holder to undertake the action.  The high cost of the litigation may deter pursuit and the defendant may be prepared to take the risk.  A responsible patent attorney will forewarn his clients of this possibility in advance.

The original purpose of a suit may be to ultimately result in a licensing agreement with the alleged offending party.

In all cases an immediate response to a charge is important because it can be used later to defend against a charge of “wilful infringement”.  This latter carries the threat of treble damages.  This penalty of three times the awarded amount is imposed on infringers who openly ignore a cease and desist request without undertaking to examine the validity of the claim against them.

The variety and combinations of patent litigation procedures and tactics available underscores our initial statement: Skilled patent attorneys must be prepared from the beginning of the process.  Further, they must know the both the legal processes and the technical elements involved.

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