The Top 5 Ways to Defend Your Company in Patent Infringement Litigation

You discover that your company has been sued for patent infringement. After reviewing the patent cited in the complaint, you determine that the technology described relates to your company’s products. What are the next steps in defending your company and its products?

1. Assess Possible Damages: The complaint filed by the plaintiff should put you on notice of which products or processes the plaintiff claims infringe its patent rights (“Infringing Products”). If you have never sold Infringing Products or have had minimal sales and plan to discontinue selling the Infringing Products, let the plaintiff know early in the litigation process. It’s not worth either party’s time or money to dispute the merits of the infringement or validity claims when few or no Infringing Products have been sold. The parties should be able reach an early settlement for a relatively small amount of money, sometimes referred to as a nuisance value settlement.
2. Analyze the Infringement Claim Chart: Prior to a plaintiff’s filing of a patent infringement lawsuit, the plaintiff must perform a reasonable pre-filing investigation. This is usually accomplished through preparation of an infringement claim chart that breaks down the language of an asserted patent claim into individual elements or limitations. The claim chart may identify the meaning of key claim terms based upon the content of the patent specification. The chart then identifies each element/limitation in the infringing product or process. A careful analysis of the claim chart by a defendant and its technical experts will help pinpoint the weaknesses in the plaintiff’s infringement theory and any key claim terms which require construction by the court.
3. Early Claim Construction: Sometimes a plaintiff’s whole infringement theory rises or falls with the definition of one or two key claim terms. A court defines patent claim terms as a matter of law, but often a claim construction ruling is not issued until a year or two after a lawsuit is filed. During this time, both sides engage in comprehensive and expensive discovery and motion practice. In order to save litigants significant fees, some courts have been amenable to early claim construction of key patent claim terms. This may allow the litigants to reach an early resolution of the issues with subsequent settlement or dismissal of the claims.
4. Create an Invalidity Claim Chart: Search for printed publications or patents disclosing the patented invention which predate the filing date of the asserted patent (“Prior Art”). Use internal experts or hire a search firm, technical expert or crowd sourcing firm to help identify key Prior Art. Then create an invalidity claim chart which breaks down the asserted patent claims into individual elements/limitations and compares each to the disclosures of the Prior Art. A plaintiff may agree to dismiss its claims rather than litigate if a defendant can demonstrate a real risk of the asserted patent being invalidated.
5. Find a Contemporaneous Industry Expert: Locate an expert who was active in the industry relating to the patent’s technology at the time the patent application was filed. This technical expert should be aware of who the key companies in the market were and what products were being developed and in use when the patent application was filed. Depending on the technology at issue in the litigation, patent or printed publications disclosing prior use of the invention may not exist. But a contemporaneous industry expert may be able to provide insight into the key companies and individuals who worked in the technical space that you otherwise might not be able to locate with online searching tools.

Experienced patent litigation counsel can assist in assessing litigation risk, setting forth your strongest defenses, and devising an overall litigation strategy. Vet your counsel wisely: interview a number of firms and inquire as to their overall litigation philosophy, typical clients/litigation matters, and proposed budget. It’s imperative to understand the overall patent litigation process to determine how to resolve most efficiently the claims pending against your company.