Articles
A Few Tips to Help Ensure a Win in Patent Litigation
Boston Business Journal
June 2, 2006
Banks, Thomas W.
Article
Patent litigation can be expensive and risky, but the stakes are often enormous. Here are ways to maximize your chances of achieving a successful outcome from patent litigation.
Initiate a Patent Suit Only If Likely to Achieve a Defined Business Objective.
You should identify the business result your company seeks from the lawsuit and thoroughly evaluate the likelihood of achieving that result. Initiate the lawsuit only if the likelihood of achieving the desired result justifies the expected risks or costs.
Conduct a Thorough Investigation Before Selecting Patent Litigation Counsel.
A company considering patent litigation needs counsel that have specific expertise in patent cases. You must also implicitly trust your counsel to advocate your position in the litigation zealously, while providing you with objective advice on the strengths and weaknesses of your case at each stage.
Conduct a Comprehensive Litigation Investigation Before Suit.
Your patent litigation firm should be involved early and throughout the investigation. You must critically and objectively assess the weaknesses of your patents to uncover and perhaps correct errors and defects before filing suit. A thorough evaluation of your competitor's product must be performed to establish infringement. You should also assess potential money recoveries and value of an injunction, and you should evaluate your competitor's patents to assess the risk of a counter-suit.
Fully Explore the Best Forum for Bringing the Lawsuit.
First, determine which courts have personal jurisdiction over the defendant. Then, evaluate whether you might have a "home court" advantage by suing locally, consider (or avoid) courts that favor patent owners, and investigate "fast-track" courts. Also, decide whether to demand a jury trial. (Nationwide, since 1994, patent owners won 68 percent of jury trials but only 47 percent of bench trials.)
Consider Alternative Dispute Resolution.
Early mediation can resolve issues and promote settlement. Arbitration, if well defined, may be less expensive, faster and more predictable than litigation.
Retain a Technical Expert Witness As Early As Possible.
Effective technical experts can be the difference between winning and losing in patent cases. You should select an expert with some testifying experience, but may want to avoid the "professional witness." Your expert must be well versed in the technology of your case, and must be capable of teaching the technology to lay judges and juries.
Remain Receptive to Settlement at Every Stage.
Remember, your goal is to obtain a favorable business outcome. Trying to destroy your adversary is extremely expensive and rarely successful. Ninety-five percent of patent infringement lawsuits settle - early settlement is usually better than settlement on the eve of trial. (For cases with more than $25 million at stake, the average cost of patent litigation is $3.2 million through the end of discovery and $5.2 million through trial.)
Vigorously Pursue Early Resolution of Case.
Summary judgment motions can resolve your case early, avoiding the cost and risk of trial. Favorable claim construction rulings can provide settlement leverage or enable a summary judgment victory.
Perform a Patent Clearance Study Before Launching New Products.
This will identify competitor patents that your product might infringe. Consider "designing around" or licensing such patents. Are your competitor's patents invalid?
Develop Your Own Strong Patent Portfolio.
Focus your efforts on obtaining patents that protect your products and cover your competitor's products. Competitors will be less likely to sue you and more likely to settle/cross-license with you if your patent portfolio is strong.
Copyright © Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This article is for informational purposes and is not intended to constitute legal advice. This memorandum may be considered advertising under applicable state laws.