Issues For Small Businesses To Consider When Facing Infringement Litigation

While at the AIPLA conference, one of the themes throughout the conference was litigation involving patents.   The following are some of the highlights that were  made by several of the presenters.  Credit must be given to the presenters, such as John Kozak, Jerry Selinger,  Mar, Whitaker,  Judge Flowers Conti, Judge Laporte,  for their insightful suggestions and recommendations.
1.If your company is going to sue (or in the process of being sued for patent infringement), you MUST know whether or not your rights are enforceable.  Has the term of the patent expired? Does the patent you have cover all the embodiments you wish to sue over? Do you have clear title to your patents?  Are there other people that should be listed as inventors on the patent? Are there any in house rights? Are there any assigned rights? What countries are the rights enforceable?

2.  It is important to know your budget, know your strategic objectives, and to know what your expectations for the outcome of the litigation is.  Expect your budget to include issues such as  the out of pocket costs, expert costs, jury consultant costs,  technical support, discovery data management,  and demonstrative examples.

3. Never overlook the possibility of settling the case through all phases of the proceedings.  While settlement may not seem like a good idea at the beginning of the case, it is something to keep in the back of your mind as a strategy at all times, as settlement can be far less expensive than litigation.

4.  It is advisable that business owners develop a plan that allocates responsibility for both inside and outside counsel to assist in litigation matters. It is important also that roles of inside counsel versus outside counsel should be clearly defined.

5.  Know who you are suing ( or who is suing you). This includes knowing how exclusive your product’s market is,  what is the value of your product to the infringer, what is the size of the infringer, what is the competitors reputation and willingness to litigate, what is their business strategy.

6. Understand the risks and uncertainties about entering into (or defending from) patent litigation.

7. How quickly do you want to move on this? Is it time sensitive, and important that you contemplate a “rocket docket” (a court that moves extraordinarily fast, such as the Eastern District of Texas, the Eastern District of Virginia, or the Western District of Wisconsin), or do you want to file somewhere else? Does local filing make a difference? If you want a rocket docket, do you have venue ( to you have the appropriate level of contacts with that area so that a court will determine that it is appropriate to sue or be sued in that particular jurisdiction)?

8.  What is your data saving strategy? ( A lot of companies have computer programs set up to automatically delete emails or other correspondence at a regularly scheduled time – it is  IMPORTANT to preserve any and all communications the minute the lawsuit comes across the company’s desk).  If you don’t save your data and your auto-delete  program keeps going, it is pretty much guaranteed that a judge will get torqued if you have not appropriately  preserved your data for discovery purposes. KEEP IN MIND – EMAIL MAY BE FAIR GAME FOR THE PURPOSES OF DISCOVERY.

9.  For the trial discovery purposes, are there any other forms of communication that should be looked at? For example, at one lecture I attended, a former mediator discussed how all the engineers for a particular company did not like how the email program worked, and had created a secondary tech email program. Those also had to be produced and provided.  What about the meta data, which is the information encrypted on the emails? Is that going to be discovered?

10. Is it appropriate to request any immediate protective orders to determine who can amass the information that the company must provide as part of discovery or wants to receive as part of the discovery process.

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