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How To Enforce Your U.S. Patent

How To Enforce Your U.S. Patent. Presented at: Patentgruppen Århus, Denmark Date: October 25, 2011 Presented by: Richard J. Basile Member St. Onge Steward Johnston & Reens LLC Stamford, Connecticut, U.S. rbasile@ssjr.com. Patent Enforcement Outline. Avoid Litigation Avoid Litigation

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How To Enforce Your U.S. Patent

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  1. How To Enforce Your U.S. Patent Presented at:PatentgruppenÅrhus, Denmark Date:October 25, 2011 Presented by:Richard J. BasileMemberSt. Onge Steward Johnston & Reens LLCStamford, Connecticut, U.S.rbasile@ssjr.com

  2. Patent Enforcement Outline • Avoid Litigation • Avoid Litigation • Patent Right Assessment • Do I Want to Play This Game • Corporate Commitment to Litigate • Prepare for Litigation • Once Litigation Starts • Applying Lessons Learned • Patent Litigation Trends

  3. Why Avoid U.S. Patent Litigation • Legal Costs $6M (AIPLA avg, single patent) • Large firms $6.8M • DC/NY $7.6M • Business Disruption/Internal Costs • Discovery, • Documents • Discovery Responses-Interrogatories, RTA • Depositions-Personal, 30(b)(6),Preparation • Motions-SJ, Discovery Disputes, Declarations • Court Ordered Conferences • Reviewing Experts and Motions • Trial Witnesses • 3-5 Years Uncertainty District Court, Claim Construction, Appeal, Remand

  4. Build Offensive Patent Portfolio • Claim What Sells • Claim product • Not Technology • Claim crash detection system, not sensor • Claim Who You Would Sue • Competitors products • Not users • Claim What You Can Prove Infringes • Not method but product of method, lens • Claim Maximum Damages

  5. Build Offensive Patent Portfolio • Claim Multiple Points of Novelty • Use All Your Free Independent Claims • Restrictions 1)AB, 8)ACD, 15)ABCD • Divisionals if necessary • Elections 1)AB, 8)ABC, 15)ABD • Keeps all claims in case • Fig. 1 Show All Features To Be Claimed • Will have disclosure, removes rejection based on drawing • All figures refer back to Fig. 1

  6. Patent Right Assessment • Technology Aspect is Way to Implement • Engineering Aspect is Most Efficient • Value of Exclusivity • Used to Shape Markets, not Grow Technology • At least 10 Years to Max Value

  7. Do I Want to Play The Game • Right to Exclude, Not Make • Purpose is to Hurt Competitors, Not Help You • Business Strategy, Not Technology • Market Weapons, Shape Market • Value is Offensive Capability, Not Coverage • Global Coordination Increasingly Important

  8. Do I Want to Play The Game (cont.) • 30% Chance 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

  9. Corporate Commitment to Litigate • Must Be Supported By Top Management • Every Department Must Be Committed • Need Someone(s) With Responsibility and Authority to Manage Litigation • May Need to Work Across Barriers • Corporate • International

  10. Prepare For Litigation • Decide What Relief You Are Seeking • Bench or Jury Trial • Understand Burdens of Proof • Infringement • Invalidity • Drafting of Complaint • Multiple Uses

  11. Prepare for Litigation (cont.) • Pre-suit Investigation of Infringement • Identify Defendants • Identify Products • Identify Additional Parties • Claim Charts • Preserve Documents, e-discovery • Document Retention Policy, Personal • Retention Hold Letter

  12. Prepare For Litigation (cont.) • Identify Witnesses • Decide and Confirm Ownership • Confirm Enforceability of Patent • Identify Best Entity to Be Plaintiff • Confirm Plaintiff Owns Necessary Rights • Decide Who Will Be On Protective Order

  13. Prepare For Litigation (cont.) • Pick the Best Location • ITC v District Court • Rocket Docket • Local Patent Rules • Major City • Judges Pilot Program • Do A Budget With Law Firm-Reality Check on Time, Cost and Strategy • Get Good Experts

  14. Once Litigation Starts • Expect The Unexpected • Don’t Lose Cite Of Goals • Pick Your Battles • Decision Points Can Be Settlement Opportunities • Do Not Over Reach

  15. Applying Lessons Learned • Whitserve v. CPI • Following One’s Own Advice • Strategy Was In Place in Advance • We Knew The Tricks and Executed

  16. Patent Litigation Trends • Seagate- Objective Recklessness, Piracy • KSR-Non-obviousness • eBay- Right to Enjoin Not Automatic • Inducement- Willful Blindness • E-discovery Rules

  17. Patent Litigation Trends • New Patent Statute (“AIA” or “FEAFUSPA”) • “Nobody is comfortable with this” USPTO • 16-18 Months for Rule Making and • 600M applications, 6M examiners • 1,200;1,200;600;200 adding examiners annually • PostGrant Review starts after March 15, 2013 • 100 PTAB Judges, hiring 100/2012;100/2013 • “More likely than not at least one challenged claim is unpatentable” from substantial new question of patentability” Patent Litigation Trends

  18. CONCLUSION • Involve Lawyers Early in Process • Expect the Unexpected

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