DEFENSIVE PLAYBOOK FOR FRIVOLOUS PATENT INFRINGEMENT CLAIMS
Intellectual Property Law Section
Continued from page 42
Another consideration that can render a patent unenforceable is the expiration of the patent term. Generally, patents expire twenty years after their earliest priority date, but may expire prematurely due to nonpayment of a requisite maintenance fee. The USPTO provides a database( available at the following URL: https:// fees. uspto. gov / Maintenance Fees /) that shows whether each such fee has been paid and indicates when a patent has expired due to non-payment.
B. Non-infringement
Proving that the accused product or method does not infringe the asserted patent is a dispositive defense to a patent infringement claim. Determining noninfringement is usually a highly complex and multi-faceted undertaking that requires in-depth legal and technical knowledge, which is one of the reasons why patent litigation costs are so high. However, because frivolous infringement allegations are usually based on incomplete information, assumptions, and falsehoods about the accused product or method, non-infringement may be immediately apparent even to a non-patent attorney.
Patent infringement is judged based on the patent claims, which are the enumerated paragraphs at the end of the patent. These paragraphs delineate the boundary of the patent owner’ s exclusive rights in the recited invention. To evaluate infringement, each independent claim should be written in a checklist form, listing all elements of the claim in a first column and the corresponding features of the accused product or method in a second column. If even a single element of an independent claim is not present in the accused product or method, then there is no infringement. For example, if the independent claims recite a pencil with an attached eraser, but the accused pencil does not have an eraser, then infringement is precluded.
C. Patent Invalidity
Another key defense against patent infringement is that the asserted patent is invalid. When this defense is raised in a district court, an accused infringer must prove invalidity under the“ clear and convincing” standard. Alternatively, a patent can be challenged through an administrative proceeding called Inter Partes Review( IPR) under the lower“ preponderance of the evidence” standard. Additionally, a series of the Supreme Court decisions— most notably, Alice Corp. Pty. v. CLS Bank Int’ l, 573 U. S. 208( 2014)— significantly altered patent eligibility standards for inventions directed to business methods, software, and computer-related technology, making such patents vulnerable to invalidation on a motion to dismiss in a district court.
All IPR filings are public record and can be freely accessed through the Patent Trial and Appeal Case Tracking System( P-TACTS) at the following URL: https:// ptacts. uspto. gov / ptacts / ui / home. If the USPTO has already issued its final written decision, then simply scrolling to the end of the opinion will immediately reveal whether the challenged patent claims have been invalidated. Further, even if an IPR was settled, the invalidity arguments and evidence presented an IPR petition may provide a roadmap for effectively invalidating the challenged patent. Such preexisting invalidity arguments can be leveraged to quickly thwart a threat of patent infringement lawsuit and even force a voluntary dismissal of a filed complaint. Likewise, if a patent has been litigated in a federal district court— especially where the patent pertains to software or a business method— it is important to check the case docket. A motion to dismiss for patent-ineligible subject matter followed by a voluntary dismissal may signal that the patent is weak, and the patent owner wishes to avoid its invalidation.
While legitimate patent infringement concerns should be handled by qualified patent counsel, the practical strategies explained in this article provide a quick-response toolkit for identifying fraudulent and frivolous patent infringement threats and leveraging the legal work performed by prior accused infringers to effectively thwart such shakedown attempts. �
1
Marcum LLP, Patent Litigation Study, p. 2( 2024)( available at https:// ipwatchdog. com / wp-content / uploads / 2024 / 12 / 2024-Marcum-Patent- Litigation-Study. pdf).
2
American Intellectual Property Law Association( AIPLA), Report of the Economics Survey 2023, p. I-142 – I-148( 2023).
3
Law360, The Top Patent Damages Awards Of 2024, https:// www. law360. com / articles / 2262518 / the-top-patentdamages-awardsof-2024( last visited, Mar. 10, 2025).
Author: Andriy Lytvyn – Hill Ward Henderson
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