This is intended as a preliminary guide to responding to allegations of patent infringement.
Don't Make Hasty Responses to Allegations of Infringement
Sometimes silence is golden. Anything you say to an accuser will be used later in a case of infringement, so every word must be considered carefully. Resist the urge to email, call, or threaten accusers before it is clear what rights are being asserted and how strong the rights may be. Saying anything before speaking with competent patent counsel is not smart.
Study the Patent Rights in Question
Not all patents are created equal. Actually, some are hardly worth the paper they're printed on. For starters, some are design patents and some are utility patents. The burdens of proof and damages models are entirely different for the different types of patent rights. Design patents are largely about appearances; whereas utility patents are about concepts covered by the words of the patent claims. In most cases, an infringement and validity opinion should be secured by a patent attorney that will look to see if the accused technology "reads on" the claims. Some claims are written in a manner that are highly specific so that slight differences in structure, methods or functions will avoid infringement. It is not uncommon for patent plaintiffs to either misconstrue their own patent claims, or exaggerate their rights. In some cases, would be plaintiffs will actually threaten patent rights that have not yet issued as a patent. In other cases, "patent pending" markings on products are outright fabrications to deter competition. While patents are presumed valid, patents can also be challenged if other technologies existed that pre-dated the claimed patent rights. In many cases, published articles or older patents can be used to challenge a patent. So, basically, don't panic until a comprehensive study has been done of the patent rights threatened, preferably by a competent patent attorney with experience in patent litigation.
Study Your Opponent
If your adversary is a major corporate player with an entire portfolio of patents to assert, these threats may need to be assessed differently than if the accuser has a single narrow patent and operates out of a garage. Speaking very practically, size can matter in federal patent litigation. Federal litigation can be expensive, even on a streamlined budget, so it is important to consider the financial wherewithal of the plaintiff, the depth of the law firm(s) conducting the litigation, the experience of counsel, and the experience of the litigants to withstand marathon legal battles. A proper legal strategy for patent litigation needs to account for the attrition factor, and that patent litigation often operates like siege warfare. Once assessed, litigants can determine the best approach to a winning negotiation with an opponent.
Study the Terrain and the Venue for Likely Disputes
Historically, patent battles have taken place in federal court. For the last decade, the Eastern District of Texas has been a common locale for patent litigants due to the perceived favorable treatment of plaintiffs and speedy local rules. However, even though some federal courts have more experience than others and custom local rules for handling patent disputes, litigation can be brought in a variety of courts across the country--assuming proper jurisdiction can be established. Venue is always one of the first battles in a patent infringement case, so due care must be made to select the appropriate forum. More recently, other venues have been more frequently used to challenge patents, including in arbitration forums, and in the Patent Trial & Appeal Board ("PTAB") of the United States Patent Office. PTAB proceedings such as "Inter Partes Review", "Post Grant Review," and "Reexamination" are all weapons on the table of challenging patents. In some cases, PTAB proceedings may be desirable because of expert analysis and familiarity with patent procedure. Not all federal courts and juries are equipped to handle complex patent litigation. Sometimes the patent office procedure and technical details can bog down federal judges and juries who are often fighting competing dockets of immigration, crime and civil rights disputes. The PTAB proceedings benefit from specialized expertise with patents and the core patent rights (other than damages). PTAB proceedings may also be more cost effective ways to challenge core patent rights without the tremendous burdens of federal discovery typical of federal court proceedings.
Take Action to Secure a Resolution of Threats
Once an infringement opinion has been made and a responsive strategy planned, take decisive and intelligent action to resolve the dispute. This should be done through a law firm. Get an experienced patent litigator who knows patent procedure and is experienced with federal litigation. This is how to get a win.
Our Rating is calculated using information the lawyer has included on
their profile in addition to the information we collect from state
bar associations and other organizations that license legal
professionals. Attorneys who claim their profiles and provide Avvo
with more information tend to have a higher rating than those who do
What determines Avvo Rating?
Experience & background
Years licensed, work experience, education
Legal community recognition
Peer endorsements, associations, awards
Legal thought leadership
Publications, speaking engagements
This lawyer was disciplined by a state licensing authority in .
Disciplinary information may not be comprehensive, or updated. We recommend that you always check a lawyer's disciplinary status with their respective state bar association before hiring them.