Responding to a patent infringement claim requires a comprehensive understanding of the legal process and various relevant defense strategies. In this article, you can learn how to respond to these claims, the potential defenses you can use, and other intricate considerations, including:
- The stages of responding to a patent infringement claim, from e-discovery to expert witnesses.
- Key defense strategies such as non-infringement claims, invalidity challenges, and navigating an Inter Partes Review (IPR).
- The option of leveraging the International Trade Commission for an expedited resolution.
How Do Defendants Respond To A Patent Infringement Claim?
Responding to a patent infringement claim involves a multifaceted process encompassing various stages and legal intricacies. Understanding how to effectively address such claims is crucial to mounting a robust defense for your case.
Once a lawsuit is initiated, both parties enter the e-discovery phase. During this stage, each side can request documents from the other to gather evidence that supports their respective claims. For the plaintiff, this may involve examining research and development documents of the alleged infringing company to establish the correlation between their product or service and the patent claim.
If the case proceeds to inter partes review, the dynamics shift, however. While discovery is often limited in this phase, the patent’s validity becomes the focal point. It’s noteworthy that around 80% of patents challenged in inter partes review are declared invalid. This can be attributed to the heightened scrutiny and resources that parties invest in uncovering extensive prior art, thereby potentially undermining the patent’s initial examination.
Surviving inter partes review or avoiding its initiation allows the litigation to progress. Expert witnesses play a significant role during this phase. An expert can testify to infringement, aligning their testimony with the patent’s claim chart. Additionally, a damages expert might estimate the patent’s contribution to the infringing product’s value.
The U.S. stands alone with a jury trial for patent lawsuits, adding another layer of complexity. A persuasive and clear expert witness can significantly influence a jury’s perception. After a trial verdict, the case may be appealed, often to the federal circuit. This court has a reputation for reducing damage amounts awarded in patent infringement cases.
What Are Potential Defenses A Defendant May Use In Patent Litigation?
When faced with a patent infringement claim, defendants have several potential defenses within reach. Understanding these strategies and their implications is essential for mounting an effective defense.
A common defense is asserting that the defendant’s product or service does not infringe upon the claims outlined in the patent. This requires carefully examining the patent’s language and the defendant’s product specifications. Presenting evidence demonstrating the discrepancy between the accused product and the patent claims can form a solid non-infringement defense.
Defendants might challenge the validity of the patent by identifying prior art that predates the patent’s priority date. Inter partes review is one avenue for this defense, where defendants can seek the invalidation of the patent through a specialized procedure. However, the decision to pursue inter partes review comes with strategic considerations, as unsuccessful inter partes review attempts might lead to estoppel in subsequent litigation.
Efficient Infringement And Injunctions
In the United States, defendants may engage in efficient infringement where they choose to infringe upon a patent knowing that litigation might only result in damages and not injunctive relief. This approach capitalizes on the absence of automatic injunctions for patent infringement, prompting patent holders to rely primarily on monetary compensation.
Inter Partes Review
Inter partes review offers a route to challenge patent validity outside the traditional courtroom setting. It can be an effective defense strategy, particularly if the patent withstands the review process. However, inter partes review outcomes are not guaranteed, and defendants need to assess the risks and benefits before pursuing this path.
Leveraging The International Trade Commission
For faster resolution, defendants might consider the International Trade Commission (ITC), especially if the infringing products are being imported into the United States. The ITC can issue exclusion orders, preventing the importation of infringing products. While this route offers prompt resolution, it is crucial to consider the associated costs and potential implications.
Crafting a strong defense against patent infringement claims involves a strategic analysis of various factors, including non-infringement, patent validity, and the choice of legal avenues such as IPR or the ITC. By understanding these defense strategies and their impact, you can better navigate the complexities of patent litigation and successfully protect your interests.
For more information on Responding To A Patent Infringement Claim, an initial consultation is your next best step. Get the information and legal answers you are seeking by calling (425) 966-2246 today.