Patent Infringement

Patent infringement cases represent a major challenge and opportunity for the attorney and client alike. In most cases, it is very helpful to engage appropriate experts as soon as possible. This means at the time of the “cease and desist” notification. An intellectual property expert employed at this time as a consulting expert can evaluate the strength of the patents in question and assist the attorney in determining the best strategy for any license negotiations. This expert or experts will use various patent databases and patent files that detail the history of the patent prosecution to make a determination as to the validity of the patents, the likelihood of actual infringement, and suggest the strategy. 

The advantage of such early involvement is that the attorney is prepared for both the licensing negotiations and for possible litigation by knowing the strength of the patent infringement contentions. The attorney can then prepare a better and stronger case in the event that litigation is necessary. The patent infringement expert is also ready in the event of any litigation and can assist the attorney in teaching the technology at issue, explaining various technical terms, addressing specific claims of patents, and helping review proposed claim language for required Markman Hearing. 

The expert initially starts as a consulting expert in order for the work product to be protected by privilege. Later, that expert, or possibly another from the team of experts, can be designated as the testifying expert if the situation moves into litigation. The best expert in the early stage may not be the best expert for testifying. This makes it important for the patent attorney to work with a firm that can provide both types of patent infringement experts if required. The consulting expert should have strong experience with the technical field in question, particularly in the time frame of the patents. That expert must be able to represent the state of the art at that time. The testifying expert should have similar expertise, but also need to have deposition experience and more specific experience with the patent office, patent prosecution, how to patent, and to some extent, patent law.

Patent infringement cases are both expensive and time-consuming. It is vital that a strong effort be made to negotiate a license agreement or other settlement prior to litigation. Since the assigned patent expert will be familiar with the industry in question, they will be able to suggest terms and other key elements of successful license agreements. In the early stages, the expert will also be able to assess the possibility of some type of cross-licensing agreement to resolve the issue.

One possible option to litigation in the courts for patent infringement is the use of the reexamination process of the United States Patent Office. Such a strategy can result in earlier decisions at a lower cost. Again, the expert at the early stage and any patent infringement discussion can determine if such a request for reexamination is likely and what results might be of that reexamination by the patent office.

Early engagement of the qualified expert is cost effective because it can assist the attorney in rapidly determining the best strategy as well as lead to the best outcome for the attorney and the client. This is true for either side of a patent infringement situation.  The expert assists in validating any infringement contention prior to the issuance of a “cease and desist,” or assists the recipient of such a letter in determining the best response to the letter.

This article was written by Pete Normington, Lead Consultant for Kevin Kennedy Associates. Pete has over 43 years of experience in the industry. Pete can be reached at 317-536-7028 or via email at PeterN@KevinKennedyAssociates.com.