Patent Litigation & Litigation Support

Patent litigation is the process through which a patent owner who believes a patent has been violated or infringed by another party asks a court to rule regarding the infringement, enter a judgment against the infringing defendant, and award damages. In the United States patent litigation typically takes place in federal district courts, although other tribunals sometimes preside over a patent owner’s allegation, such as The US International Trade Commission in Washington, DC.

At BHW, we have decades of experience in all phases and aspects of patent litigation, both in a lead role and in a support role. Our clients turn to us for our experience, knowledge, and technical expertise. We have handled dozens of patent disputes on behalf of our clients, both when our clients assert them against others, and when others assert them against our clients.

Patent litigation typically begins well before a lawsuit is even filed. This is known as a pre-litigation phase, or the pre-suit investigation. During this phase, a patent owner works with its counsel and sometimes technical experts to evaluate whether a third party is using without authorization (or “infringing”) one or more patents. This process typically involves preparation of detailed infringement claim charts. An infringement claim chart compares every limitation, or phrase, of one or more patent claims against a device or method that is being accused of infringement. This requires extensive analysis of all available materials regarding a potentially accused product, such as website materials or data sheets. In many cases, the investigation also requires reverse engineering analysis of an accused product to determine its internal operational or fabrication details.

This process also involves performing a claim construction analysis of all of the potentially asserted claims of a patent. This process requires performing the same process that a court would perform when interpreting patent claims later in litigation. This process requires application of canons or rules of claim construction, analysis of the claim language in view of the patent’s specification and its file history, and sometimes analysis of extrinsic evidence such as dictionaries and technical treatises as well as analysis and testimony from experts in the field of the invention.

Claim construction analysis also requires extensive knowledge of the body of caselaw, primarily from the US Court of Appeals for the Federal Circuit, interpreting patent claims, both in terms of the approach to be used, as well as the specific examples from many prior cases interpreting words commonly found in patent claims, as well as specific terms unique to each particular technical discipline that may have appeared in similar patent cases in the past.

Only after a thorough infringement investigation has been concluded successfully, is it time for a patent owner to either contact the accused infringer for potential resolution of the dispute, or to formally initiate a lawsuit by filing a complaint.

In some situations, a patent owner may notify a potential accused infringer of an infringement allegation, usually by way of correspondence known as a cease-and-desist letter. In such correspondence, the patent owner, through its counsel, provides information regarding the patent at issue, as well as a comparison of one or more claims of the patent to an accused device. Such a comparison usually is provided by means of an infringement claim chart.

In some cases, a party receiving such an infringement allegation may engage in a dialogue or negotiation with the party sending the cease-and-desist letter, typically after consulting with its own counsel. In other situations, an accused infringer may decide to consult with counsel and determine a response strategy which may not include discussions with the patent owner. For example if an accused infringer reaches a conclusion that asserted patent is likely invalid after conducting a prior art search, the accused infringer may decide to file a post-grant proceeding in the United States Patent and Trademark Office, seeking to declare one and one claims of the assorted patent as unpatentable in view of newly found prior art.

As another example of a potential response strategy, the accused infringer may decide to seek an opinion of counsel, which may include non-infringement opinions, and validity opinions, or both. Our firm has extensive experience in counseling clients in all phases of pre-suit investigations both on behalf of patent owners as well as accused infringers. Our firm also has extensive experience with drafting opinion letters in a wide variety of situations and technology areas.