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How To Defend A U.S. Patent Litigation Presented at: Patentgruppen Århus, Denmark Date: October 26, 2011 Presented by: Richard J. Basile Member St. Onge Steward Johnston & Reens LLC Stamford, Connecticut, U.S. rbasile@ssjr.com
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Patent Litigation Outline Why to Avoid Litigation How to Avoid Anticipate Litigation Prepare for Litigation Defending Litigation Trends in US Patent Litigation
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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
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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
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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 How To Avoid U.S. Patent Litigation
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Claim What Sells Claim Who You Would Sue Claim What you Can Prove Infringes Claim Maximum Damages Build Offensive Patent Portfolio
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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 Build Offensive Patent Portfolio
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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 Clear New Products For No Infringement
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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 Patent Your Design Arounds
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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
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Prepare For Litigation Build No Infringement Argument Invalidity Search as Necessary Informed Decision, Attorney/Expert Opinion Preserve Documents Identify Witnesses Have a Plan
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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
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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
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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
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CONCLUSION Involve Lawyers Early in Process Expect The Unexpected There is Value in the Certainty of Settlement
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