Litigating Patent Cases
The patent contingency lawyers at Glancy Prongay & Murray LLP share the risk of litigation with their clients. Patent cases take technical knowledge, litigation skill, and the resources and perseverance to fight against capable and well-funded adversaries. If your patent is being infringed upon by a large company, it is likely that the company will be willing to spend a significant portion of the license fees they would have to pay you on litigation. Therefore, it rarely makes sense to file a case on the hope that a reasonable offer will be forthcoming relatively quickly. Instead, patentees must be prepared to go the distance, through an exhaustive discovery process, trial, appeal, and parallel proceedings in the U.S. Patent and Trademark Office challenging the validity of the asserted patents.
Accordingly, it is extremely important to make sure that a patentee’s case is strong before commencing litigation. Before filing, patentees must consider:
- The validity of the patent. This includes an evaluation of the patent against the prior art, and whether or not the examiner considered it in prosecution. When a patent is challenged in litigation, the fact that an examiner believed that the patent was allowable despite prior art is not conclusive. Patentees must also consider whether the patent is too broad, since many patents have been invalidated in litigation as covering “abstract ideas” under the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank Int’l.
- The strength of the case for infringement–whether it is clear that every element of the asserted claims of the patent are present in the accused product or process.
- The potential damages at issue, including a realistic assessment of the importance of the patent to the product in view of any other contributors to the product’s value in the marketplace.
- Patent ownership: making sure that the entity that would be bringing the lawsuit has a clear and complete chain of title to the patent.
- Patent inventorship: making sure that every inventor who contributed to the conception of any claim of the patent was in fact named as an inventor of the patent. Omitting a true inventor from a patent could allow that inventor to later license the patent to the infringer, with no payment to the patent owner.
Litigating a patent case is a significant undertaking. While using patent contingency lawyers can help reduce the out-of-pocket costs to a patentee, the litigation will involve considerable effort. It always makes sense to thoroughly assess a case, and the patent contingency lawyers at Glancy Prongay & Murray can help determine whether a case is worth pursuing. Please contact Jonathan Rotter for more information about litigating your pharmaceutical patents, medical patents, medical device patents, surgical device patents, surgical instrument patents, therapeutic patents, chemical patents, optical patents, biotechnology patents, life science patents, consumer product patents, industrial process patents, mechanical patents, agriculture patents, consumer technology patents, and household patents.