Patent Litigation for the Non-Specialist: How it Works and What to Expect

On June 15, 2016, we presented a webinar on Patent Litigation for the Non-Specialist: How it Works and What to Expect. A replay of our webinar is available here. The audience raised several great questions, some of which we didn’t have time to answer during the presentation or did not fully address. Here are short answers to these:

1. Please address how to detect suspected patent infringement, especially for process/method patent claims.

Detecting patent infringement can be challenging when the invention is not embodied in a readily available consumer product. Some combination of the following techniques may be effective in establishing a basis for filing a lawsuit against a target:

1. review the target's patents and published patent applications;
2. review the target's publications, such as its website, journal articles, white papers, and information distributed at trade shows; and
3. evaluate the target's products or its customers' products to make reasonable inferences about their manufacturing method.

Under some circumstances, it may be appropriate to write to the target asking for details about the potentially infringing process. A refusal of the target to provide that information may provide a justification to file suit and obtain the relevant information through discovery. See Hoffman-La Roche v. Invamed Corp., 213 F.3d 1359 (Fed. Cir. 2000).

2. Recently, I had a patent owner plaintiff try to consolidate claim construction and summary judgment. That creates a problem with the timing of expert reports. Have you ever heard of such consolidation?

Although it is common for courts to hold a claim construction hearing early in the case, it is by no means universal. Some courts combine claim construction and summary judgment, while still others do not actually construe the claims until the eve of trial.

An early claim construction hearing (before expert discovery) may create substantial efficiencies. Often resolution of a small number of claim construction disputes can dispose of an entire case avoiding the need for expensive fact and expert discovery. Even if claim construction does not resolve the case, having the court's claim construction order before expert discovery is beneficial because it allows the experts to apply that construction, rather than having to express multiple alternative opinions or provide a supplemental report after the court's order issues.

On the other hand, some claim scope issues are not known until later in discovery. For example, a claim construction dispute may arise only after third-party discovery reveals the existence of previously unknown prior art. In these circumstances, a later claim construction proceeding is more likely to account for all the parties' claim scope disputes and avoid the need to revisit these issues.

Finally, some judges prefer resolving only those claim construction disputes that make a difference in the result of the case and do that by linking together claim construction and summary judgment proceedings. The theory is that a judge avoids wasting time deciding questions that are not essential to resolving the case.

3. When is the best time to file an inter partes review (IPR) petition, and relatedly, what are the strategic and tactical considerations a defendant should evaluate in deciding whether to file an IPR petition?

By law, a defendant in a patent case (or a party in privity with a defendant) must file an inter partes review petition within one year of being served with a complaint for patent infringement. However beyond that deadline, there are a number of factors bearing on precisely when to file, and there is no single best answer for all cases.

Here are some potential advantages for filing the IPR petition earlier in the one year window:

1. It is more likely that a court would stay the case if the Patent Trial and Appeal Board (PTAB) institutes trial;
2. It may provoke the patent owner to take a relatively narrow position on claim construction in the IPR proceeding, before it fully understands its infringement case, and thereby box in the patent owner from later arguing a broader construction before the court; and
3. If there is no court stay after the PTAB institutes trial, it is more likely that the PTAB would issue a Final Written Decision prior to the trial setting in the court case, and if the patent claims are ruled invalid, this will likely result in a trial adjournment while the decision is appealed. However, note that if the defendant loses, it will be precluded from relying in the court case on any ground it raised or "reasonably could have raised" in the IPR.

Here are some potential advantages for filing the IPR petition later in the one year window:

1. It provides additional time to find the best prior art to assert in the petition;
2. Through discovery the defendant may get a good read on the patent owner's infringement case, which may better focus the defendant's selection of prior art and shape the strategy for how claim construction should be argued in the IPR proceeding; and
3. Assuming the case is not stayed, it is more likely that the court trial would occur prior to the PTAB's issuance of any Final Written Decision in the IPR proceedings. In this setting, the defendant could effectively get two opportunities to invalidate a patent - once before the court, and again before the PTAB. This approach may make sense if the defendant decides that timing-wise, it wishes to avoid the potential for application of any estoppel arising from the IPR proceedings so that in the court trial it has a viable invalidity defense.

4. How does a defendant's independent invention bear on obviousness arguments?

"Simultaneous invention" by others is one type of secondary consideration bearing on whether the invention is non-obvious. A defendant's independently-made invention, done close in time with the patent owner's invention, can be persuasive evidence indicating the state of the art and demonstrating obviousness of the invention.

5. Should a client retain draft versions of patent applications?

Generally, a client need not keep draft patent applications unless there is a document preservation order in place from an existing or anticipated litigation that would require such drafts to be maintained. However, keep in mind that in some circumstances dated draft patent applications may be the only documents that can corroborate dates of invention prior to the patent filing itself.

6. What can you do for a small business that has good patents but cannot afford the cost of litigation, and relatedly, are there options available so that a firm may take a patent case on contingency?

Many firms, including Fish & Richardson, offer alternative pricing options in appropriate cases. One such option is the contingent fee agreement in which the law firm agrees to waive all or a substantial portion of its normal hourly fees (and sometimes to pay for expenses as well) in exchange for receiving a percentage of the damages or other value recovered in a case. These agreements may be a good option for small businesses who lack sufficient resources to independently fund a patent litigation case. For more information on alternative fee arrangements, click here.

Authors: Adam Kessel, Lawrence K. Kolodney, Jolynn M. Lussier