Prevailing in high-stakes patent lawsuits demands masterful legal precision, aligning technical merits against pragmatic litigation aimed at protecting market advantages flowing from years of pioneering research investments.  Skilled intellectual property firms leverage meticulous preparation, upholding rights through adamant enforcement.  This discussion considers balancing client injunction interests and licensing opportunities.

Initiating Infringement Lawsuits

Upon identifying unauthorized parties potentially infringing protected inventions commercially, intellectual property owners should prioritize upholding patents’ legitimacy before aggressively pursuing litigious paths.  Overplaying weak positions risks undermining credibility for reasonable settlements later.

Seeking quiet business resolutions remains preferable over court fights when one considers the disruption to corporations’ productivity.  However, if the patent owner does not demonstrate willingness to enforce its patent, it may lead to erosion of IP boundaries and loss of market share.  So, while our firm avoids needless litigation, assertively confronting misconduct serves vital client interests when bad faith violations persist.

Pre-Trial Investigations

We thoroughly research infringement allegations to ensure that they are valid infringement allegations with tangible evidence rather than stemming from mere suspicions.  Conducting due diligence, such as performing an Infringement study, avoids wasting resources on frivolous litigation or suing inadvertent violators.

Compiling information and available public records relating to research funding, founder backgrounds, employee social media commentary, and other breadcrumbs may allow the patent owner to determine if the infringement was accidental or intentional.  This documentation will be used should litigation emerge.  Remember that a large percentage of IP Litigation typically ends in a settlement involving a license halting ongoing damages.

Litigation Contingencies

Despite the best information-gathering attempts, revelations surface during legal discovery that can reverse original assumptions.  Recognizing inherent uncertainties in complex lawsuits, litigation strategy should be structured to allow for off-ramps safeguarding the clients against runaway proceedings if initial positions soften unexpectedly.

This ‘common sense’ litigation strategy is the preferred approach.

Claim Construction Preparation

Since modern technologies build cumulatively upon foundation innovations that predate the alleged infringements, one must evaluate the scope of these foundational inventions before determining infringement.  The state before the patent in question was filed must be examined to determine what was known at the time.

The scope of the patent at issue is then determined.  Words and terms are given their ordinary meaning unless defined explicitly in the specification.  Terms of art in the applicable industry should have the same meaning.

Ambiguous words or terms in a claim that are not clearly defined in the specification are typically determined in a Markman Hearing.  Once the ambiguities have been eliminated, it becomes clear as to what the claim covers.   Many cases settle after a Markman Hearing ruling.

Litigation Team Staffing

It is imperative that a Patent Litigator know the rules and procedures of the hearing forum.   For example, a hearing in the Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office has much different rules and procedures from those in the US District Court and the Court of Appeals for the Federal Circuit (CAFC).

Besides knowing the laws, rules, and procedures, the patent litigator should understand the invention technology well.  Patent litigators are not required to have technical degrees or be Patent Attorneys to try patent infringement cases, but it is beneficial.  It is best to understand the technology well enough to know what assumptions are being made and how inventions are implemented in real-life situations.

It is important to quickly retain an electronics discovery expert to acquire a disk image of desktop computers, laptops, removable drives, flash drives, cloud data, and other data storage devices.  Many times, the metadata contains a ‘smoking gun’.

Additionally, there may be a request for a  jury trial.  Jury selection involves the intricate and subtle process of voir dire of the juror pool.  It is wise to engage jury selection specialists.  Additionally, it is wise to retain experts in performing depositions, as well as damages experts.  At some point, an expert proficient in negotiations may be required, as well as a licensing expert.  The Attorney trying the case may also perform some of these functions.

Global Enforcement Capabilities

For larger cases, infringement rarely respects jurisdictional boundaries.  Products are typically marketed in several countries.  Therefore, our firm maintains trusted partnerships with patent firms in other major countries.  Even though many basic patent regulations are somewhat harmonized internationally, there are still enough differences to affect the outcomes.   The Civil Procedures differ by forum and country, as do the languages of the trials.

Following a common strategy across several countries is important to avoid piecemeal litigation and varying outcomes.  Most companies would like to sell a single product in multiple countries instead of changing the product for certain countries to avoid infringement due to different patent litigation outcomes.

Patent enforcement allows the patent owner to stop others from making, using, selling, or importing products into the country that has a patent covering them.

Consider a competitor with a major manufacturing center in country “A” and distributing a product covered by a patent owned by our client for sales in 20 other countries.  If a patent is filed and issued in country A, it will stop the competitor’s sales in those 21 countries.

This strategy is also effective for countries with international distribution centers.   Therefore, one can maximize the effect of patents by filing in countries with manufacturing, distribution, and sales centers.

For additional information, please contact Zale Law.