1) Perform an infringement analysis of the accused product(s)



From PLI’s Course Handbook

Fundamentals of Patent Prosecution 2007: A Boot Camp for Claim Drafting & Amendment Writing

#11260

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13

pre-filing considerations:

Ten Things to Ponder before

filing a Patent infringement

action

Brandon Baum

Mayer, Brown, Rowe and Maw LLP

Copyright (c) 2006 Brandon Baum.

All rights reserved.

The views expressed herein are solely (and only occasionally) the author's and should not be attributed to his firm or its clients. Should anyone attempt to misuse these materials by submitting them in a litigation forum, they thereby stipulate to the issuance of sanctions against them for attempting to chill the free exchange of ideas among legal practitioners.

Reprinted from the PLI Course Handbook,

Fundamentals of Patent Prosecution Winter 2006:

A Boot Camp for Claim Drafting & Amendment Writing (Order #9011).

Pre-filing Considerations: Ten Things to Ponder Before Filing a Patent Infringement Action

Brandon Baum[1]

Mayer, Brown, Rowe and Maw LLP

Copyright (c) 2006 Brandon Baum. All rights reserved.

Given the burden and cost of patent litigation, it is important to complete your due diligence well in advance of filing an action for patent infringement. While some of these steps are imposed as a matter of law (i.e., Rule 11), others are simply good practice. Of course, your mileage may vary and there is no “one size fits all” approach to pre-filing analysis, nor is there such thing as a comprehensive or exhaustive list of pre-filing considerations. However, this is a starter set of points to consider with your client when embarking on a course that may lead to patent litigation.

1) Perform an infringement analysis of the accused product(s).

• Requires claim construction which applies the canons of claim construction.[2]

• Don't trust the client to do it for you.[3]

• You do not need to reverse engineer every product you intend to accuse, but where there may be relevant differences among products, you should analyze at least one of each kind of product and compare each to at least one claim of every asserted patent.[4]

• If you have a “black box” problem, consider risks of asking target for explanation of why its product doesn’t infringe.[5]

• Check to ensure that maintenance fees on your patent have been paid and that the entity status is correct.

• Review any foreign counterparts and continuations to verify that there are no surprises.

• Evaluate first offers for sale, public use, and writings about invention etc.

2) Identify and preferably interview your witnesses.

• Inventors.

• Storytellers – who will present the client’s story to the fact-finder?

• Company representative -- who will serve as your Rule 30(b)(6) witness?

3) Make sure everyone with a “need to know” is aware you are in pre-litigation mode.

• Loose lips lead to DJ actions.

• Limit the group to those with a need to know.

• Make sure they are aware of the consequences of others, particularly the target, of finding out.

• Beware the “friendly heads up” going from board members with divided loyalties.

• Beware the potential for insider trading on the knowledge that a suit is imminent.

4) Place a freeze on documents.

• Avoid spoliation claim by making sure that everyone understands that documents must be preserved. Emphasize that the scope of relevance is not based on “common sense”

• It’s never too early to begin gathering documents, especially if you are considering a “rocket docket.”

5) Identify preferred venue.[6]

• Fast vs. slow.

• Hands on courts vs. hands off.

• Cost factors

o Hiring local counsel.

o Scope of discovery (compare ITC vs. district court).

6) Identify and possibly retain consultants.

• Leading experts in the field.

• Those who might be prior art witnesses.

• If you retain a technical consultant prior to filing complaint, involve him or her in the infringement analysis.

7) Review prosecution history and prior art.

• Used to be a “no no” and patentees frequently relied on the presumption of validity.[7]

• With ease of access to prior art it's a must unless you are in an industry where the art is well known.

• Play devil's advocate against your client – even ask someone to spend some time trying to invalidate the patent if they can.

• Consider re-examination if you have no pending applications.

• Consider broadening re-issue if within two years of issuance[8] (but be aware of intervening rights).

• Consider narrowing reissue if claims are inadvertently and unnecessarily overbroad.

• Correct any significant typographical errors.[9]

8) Perform a rough damages analysis if the client is interested in damages.

• Want to let the client know the economics of pursuing an infringement case.

• Can we let damages accumulate by simply providing notice of the patent.

• Is there a cheap design-around?

• Is there a looming laches or estoppel problem.

9) Evaluate the target's likely response.

• Consider counterclaims/countersuits.

• Does the target have a patent portfolio it can assert.

• Do we have a public relations team ready to respond to statements by the accused infringer, or to media inquiries about the suit.

• Are there other potential targets to include.

10) Understand and manage client expectations.

• Fully understand the client’s objectives for the litigation.

o injunction vs. damages

o business advantage

• Client needs to be apprised that patent litigation not only expensive, it is incredibly time-consuming for management and technical personnel.

• Prepare a budget and an estimated burn-rate so that client can make rational business decisions. Understand which department or division is going to be paying for the litigation.

• Client needs to know its patents will be “at risk” in the litigation

o claim construction

o a possible finding of invalidity

o a request for reexamination.

• Customers will pressure the parties to settle.

• Discuss the alternatives to litigation, including risks and benefits.

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[1] The views expressed herein are solely (and only occasionally) the author's and should not be attributed to his firm or its clients. Should anyone attempt to misuse these materials by submitting them in a litigation forum, they thereby stipulate to the issuance of sanctions against them for attempting to chill the free exchange of ideas among legal practitioners.

[2] MEMC Elec. Materials v. Mitsubishi Materials Silicon Corp., 420 F.3d 1369, 1373 (Fed. Cir. 2005)

[3] Antonious v. Spalding & Evenflo Companies, Inc., 275 F.3d 1066, 1072 (Fed. Cir. 2002); Judin v. United States, 110 F.3d 780, 784 (Fed. Cir. 1997) (“Attorney acted unreasonably in giving blind deference to his client and assuming his client had knowledge not disclosed to the attorney.”)

[4] Network Caching Technology, LLC v. Novell, Inc.,. 2003 WL 21699799 (ND Cal., March 21, 2003).

[5] Hoffman La-Roche, Inc. v. Invamed, Inc., 213 F.3d 1359 (Fed. Cir. 2000)(pre-filing investigation adequate where patentee inquired about an accused method of manufacturing a product, where the patentee had not other way of learning whether method infringed. See also 35 U.S.C §. 295 for product by process claims.

[6] The patent venue statute, 35 U.S.C. § 1391, allows a corporation to be sued anywhere that personal jurisdiction exists.

[7] 35 U.S.C. § 282

[8] 35 U.S.C. § 251

[9] 35 U.S.C. § 254

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