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Patent Quality in Litigation
Michael J. SongerCrowell & MoringJuly 29, 2016
What is a patent?
An invention?
A legal right?
A piece of paper?
...A Character All On Its Own
It Is A Complex Character
It has different parts...
□ Background
□ Prior Art (or, what’s been done before)
□ Solution
□ “the metes and bounds” – claims
It Is A Complex Character
It has a history...
□ Dealings with the PTO
It may have a family...
It Is A Complex Character
There is a person...the inventor !
Build Up That Character
What?
□ Tell the story of what your invention is
Why?
□ Why is it an ‘invention’? new? unique? different?
How?
□ How does it work?
Then the legal stuff....
What Role Does it Take? Plaintiff...
Patent is a legal grant from government
It was examined by experts
It is presumed valid
What Role Does it Take? Plaintiff...
Patent is an invention...
Patent serves a useful purpose
What Role Does it Take? Defendant...
We don’t do it (non-infringement)
It is not new
overcome presumption
overcome examination
It is unclear
It was only obtained by fraud
It Evolves Over Time in a Case
Early in the case
Experts
Markman
Summary Judgment
The Trial Itself
Early in the Case
Know the court, its strengths, and limitations
□ What is the invention?
□ How does it do “it”?
□ Why is it new?
OR
□ We don’t do it...
□ It’s not new...
□ Something funny went on in the patent office...
Early in the case
How much money is at stake?
How long will the trial take?
(Is there any chance you can settle this case!)
Experts and Markman
Experts: validate the patent OR point out its weaknesses / flaws / lack of novelty
Give the Court something to cite!
Claim construction: what does this language mean?□ How clear is it?
□ Is it contradictory?
□ What do the examples show?
□ Why different than plain language?
LESS IS MORE!
Dispositive Motions
Noninfringement
Invalidity – prior art
Invalidity – other
□ Indefiniteness – show how it is confusing / not shown
The Trial
Remember that a trial is a story, and that your patent is the main character
Evidence (documents, witnesses): actors
Jury / Judge: audience
Attorney: Director
Applies to every part of the trial: opening, evidence, closing, (appeal)
The Opening
A patient lies on a table, suffering from burns...A cancer victim waits for a life saving surgery...In the operating room, time matters...
Versus
Ladies and gentlemen, I’d like to introduce you to my client. Before I begin, I want to tell you that we don’t infringe. We don’t infringe because our molecular structure of our soft tissue has no plasticizer in the internal matrix of the collagen BLAH BLAH BLAH
USE YOUR PATENT AND FILE HISTORY!
The Evidence
Build the story
The patent and development documents are key
The file history may be important
The inventor is important and puts “life” into the “words”
The Evidence
(If defendant, your story of developing the accused product is important)
The expert supports and lends credibility
(Motive is also important for the plaintiff and the defendant)
Claim Construction: The Framework
Claim construction, which is based on the patent, the file wrapper, and perhaps other evidence, will control the trial.
“Clunky,” long, hard to follow claims will lose the jury and make your story more difficult.
The Closing
Finishes the story and ties it all together (with argument!)
Will want to show the patent
Will want to walk them through the claims
But all in a manner that let’s them pick up on your theme
You don’t need to be...
...with a quality patent
