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Defending U.S. Patent Litigation: Strategies and Trends

Learn the strategies to avoid and defend against U.S. patent litigation, including how to anticipate and prepare for litigation, as well as trends in patent litigation. Presented by Richard J. Basile, a member of St. Onge Steward Johnston & Reens LLC.

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Defending U.S. Patent Litigation: Strategies and Trends

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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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