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How To Defend A U.S. Patent Litigation

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. rbasile@ssjr.com. Patent Litigation Outline. Why to Avoid Litigation

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How To Defend A U.S. Patent Litigation

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  1. 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, U.S.rbasile@ssjr.com

  2. Patent Litigation Outline • Why to Avoid Litigation • How to Avoid • Anticipate Litigation • Prepare for Litigation • Defending Litigation • Trends in US Patent Litigation

  3. Why Avoid U.S. Patent Litigation • Legal Costs Average for One Patent $6M • Business Disruption/Internal Costs • 3-5 Years Uncertainty • Damages Could be Entire Profit Not Just Royalty, Injunction (no longer automatic) • The Certainty of Settlement Has Value

  4. Patent Litigation Game • 30% 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

  5. How To Avoid U.S. Patent Litigation • 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

  6. Build Offensive Patent Portfolio • Claim What Sells • Claim Who You Would Sue • Claim What you Can Prove Infringes • Claim Maximum Damages

  7. 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

  8. Clear New Products For No Infringement • 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

  9. Patent Your Design Arounds • 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

  10. Anticipate Litigation • Portfolio 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

  11. Prepare For Litigation • Build No Infringement Argument • Invalidity Search as Necessary • Informed Decision, Attorney/Expert Opinion • Preserve Documents • Identify Witnesses • Have a Plan

  12. Defending Patent Litigation • Claim 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

  13. 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

  14. Patent Litigation Trends • Seagate- Objective Recklessness, Piracy • KSR-Nonobviousness • eBay- Right to Enjoin Not Automatic • E-discovery Rules • New Judges Pilot Program • New Patent Statute

  15. CONCLUSION • Involve Lawyers Early in Process • Expect The Unexpected • There is Value in the Certainty of Settlement

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