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Strategies for Effective U.S. Patent Enforcement

Learn essential tactics to avoid litigation, assess patent rights, prepare for legal battles, and navigate patent enforcement trends to maximize your patent portfolio's value and protect your intellectual property rights. Gain insights on corporate commitment to litigate, offensive patent portfolio building, and legal considerations to strengthen your position in patent disputes.

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Strategies for Effective U.S. Patent Enforcement

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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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