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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.

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Presentation on theme: "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."— Presentation transcript:

1 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.

2 Patent Enforcement Outline  Avoid Litigation  Patent Right Assessment  Do I Want to Play This Game  Corporate Commitment to Litigate  Prepare for Litigation  Once Litigation Starts  Applying Lessons Learned  Patent Litigation Trends

3 Why Avoid U.S. Patent Litigation  Legal 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

4  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

5  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

6 Patent Right Assessment  Technology 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

7 Do I Want to Play The Game  Right 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

8 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

9 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 Barriers  Corporate  International

10 Prepare For Litigation  Decide What Relief You Are Seeking  Bench or Jury Trial  Understand Burdens of Proof  Infringement  Invalidity  Drafting of Complaint  Multiple Uses

11 Prepare for Litigation (cont.)  Pre-suit Investigation of Infringement  Identify Defendants  Identify Products  Identify Additional Parties  Claim Charts  Preserve Documents, e-discovery  Document Retention Policy, Personal  Retention Hold Letter

12 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

13 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

14 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

15 Applying Lessons Learned  Whitserve v. CPI  Following One’s Own Advice  Strategy Was In Place in Advance  We Knew The Tricks and Executed

16 Patent Litigation Trends  Seagate- Objective Recklessness, Piracy  KSR-Non-obviousness  eBay- Right to Enjoin Not Automatic  Inducement- Willful Blindness  E-discovery Rules

17 Patent Litigation Trends  New Patent Statute (“AIA” or “FEAFUSPA”)  “Nobody is comfortable with this” USPTO  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

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19 CONCLUSION  Involve Lawyers Early in Process  Expect the Unexpected


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