how to enforce your u.s. patent
DESCRIPTION
How To Enforce Your U.S. Patent. Presented at: Patentgruppen Århus, Denmark Date: October 25, 2011 Presented by: Richard J. Basile Member St. Onge Steward Johnston & Reens LLC Stamford, Connecticut, U.S. [email protected]. Patent Enforcement Outline. Avoid Litigation Avoid Litigation - PowerPoint PPT PresentationTRANSCRIPT
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, [email protected]
Patent Enforcement OutlineAvoid LitigationAvoid LitigationPatent Right AssessmentDo I Want to Play This GameCorporate Commitment to LitigatePrepare for LitigationOnce Litigation StartsApplying Lessons LearnedPatent Litigation Trends
Why Avoid U.S. Patent LitigationLegal 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
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
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
Build Offensive Patent Portfolio
Patent Right AssessmentTechnology 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
Do I Want to Play The GameRight 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
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
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 BarriersCorporate
International
Prepare For Litigation Decide What Relief You Are Seeking
Bench or Jury Trial
Understand Burdens of Proof
Infringement
Invalidity
Drafting of ComplaintMultiple Uses
Prepare for Litigation (cont.)
Pre-suit Investigation of InfringementIdentify Defendants
Identify Products
Identify Additional Parties
Claim Charts
Preserve Documents, e-discovery Document Retention Policy, Personal
Retention Hold Letter
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
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
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
Applying Lessons Learned
Whitserve v. CPI
Following One’s Own Advice
Strategy Was In Place in Advance
We Knew The Tricks and Executed
Patent Litigation TrendsSeagate- Objective Recklessness, Piracy
KSR-Non-obviousness
eBay- Right to Enjoin Not Automatic
Inducement- Willful Blindness
E-discovery Rules
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
CONCLUSION
Involve Lawyers Early in Process
Expect the Unexpected