Defending against a patent infringement claim is a detailed proceeding, much more so than you will find in an average lawsuit. The court's requirements are stringent and lengthy; many courts even have their own special rules of proceeding unique to that particular court.
At Hendershot, Cannon, Martin & Hisey, our Houston business litigation lawyers understand exactly how to defend patent infringement claims because we have been there before. If you are facing a patent infringement claim, learn about the steps we take in defending these cases by expanding the section directly below.
If you have questions, do not hesitate to call us at (713) 909-7323.
The Steps We Take in Defending Against Patent Infringement Claims
We can win the case at any stage of the process outlined in the five-item list above. Below you will find each of these steps described in more detail.
In defending a typical patent infringement case, the first action we take is filing a motion to dismiss the claim, which attacks the patentability of the claimed patent. This is done under Rule 12(b)(6) of the Federal Rules of Civil Procedure. Among other things, the motion to dismiss will allege that the patent is invalid for failure to comply with one or more of the conditions set forth in the U.S. Code.
Especially in defending claims brought by patent trolls, the motion to dismiss will allege that the patent does nothing more than describe a well-known (and typically obvious) abstract idea.
In these cases, the U.S. Supreme Court narrowed the scope of patent protection. In general, the Court has ruled against the patentability of abstract concepts that do not add substance to the underlying idea. These concepts lack utility and are wholly inoperative as patents; therefore, they are not entitled to legal protection.
In addition, the motion to dismiss may include the investigative tool of the "machine or transformation test." Under this test, the concept described by the patent (typically a process patent) must be inextricably tied to a machine or apparatus, or it must transform an article into a different state or object. In general, if the patent fails this test, it is not entitled to protection.
Every patent contains a number of "claims." These claims are part of the patent and are legally enforceable and entitled to protection. How a judge interprets these claims is always crucial to winning the case.
In a patent infringement claim, the court will require that the plaintiff file a legal document known as Infringement Contentions. In this document, the plaintiff must make its case for infringement on each of the claims with appropriate specificity. If the plaintiff fails to do so and the proper objection is made, the judge may strike the allegations. Therefore, we attack Infringement Contentions to the extent that they fail to comply with either the court's rules or the applicable legal standards. We can win the defense of a patent infringement case at this point because the plaintiff cannot base a claim on stricken allegations.
In this stage, our goal is to prove why the patent does not deserve legal protection because of invalidity. With a legal document known as Invalidity Contentions, we contend that the plaintiff's patent is invalid under Section 101, Section 102, Section 103, or Section 112 of the U.S. Code, as described below.
This is a claims construction hearing, in which the judge gives definition to the material terms and words in the patent's claims. Everything depends on how these words are construed. In this hearing, the judge will interpret the words in the claim and issue a ruling that ultimately determines the overall scope of patent protection. In general, a broad definition will cover more; a narrow definition will cover less and be easier to "get out of," so to speak.
At Hendershot, Cannon, Martin & Hisey, we aggressively attack how these claims are construed. Our goal at the Markman hearing is to obtain an interpretation of the claims that is in the client's best interest, which will help to defeat the patent infringement claim.
As one example, a claim could require a computer. We may argue that the definition of the word "computer," for purposes of defending the patent infringement claim, excludes within its definition the iPad and/or similar devices.
After the Markman hearing comes the possibility of filing a motion for summary judgment. If we decide to file this motion, we will have determined that there is a basis to argue, as a matter of law, that there is no issue of material fact to be determined by the trier of fact (judge or jury) and that we are entitled to judgment and case dismissal. Our goal here is to win the motion for summary judgment; if we do so, you will be spared the time and expense of defending the case at trial.
At Hendershot, Cannon, Martin & Hisey, on occasion we encounter a scenario in which not our client, but the customers of our client, are sued for patent infringement. In a typical case (such as those involving software licensing), your customers may request indemnification from the liability created by a patent troll's infringement claim. Our goal is to "beat the troll to the punch," so to speak, by filing a declaratory judgment action.
In a declaratory judgment action, we ask the court to declare that the patent is invalid under Section 101, Section 102, Section 103, or Section 112 of the U.S. Code (as described above under the section regarding Invalidity Contentions).
In these types of patent infringement cases, we are in effect defending both you and your customers, and if we are successful in obtaining a declaratory judgment, we will have the patent declared invalid before you are required to provide indemnity.
At our Houston business law firm, we dislike patent trolls as much as you do. In other words, we draw a hard line in the sand. We do everything we can to defend you so that a patent troll does not keep coming back to demand what is, in effect, a ransom. And we have the knowledge and expertise to fight aggressively.
Our philosophy on defending patent infringement claims is straightforward: We do not put up with a patent troll or other entity that has brought a claim against you and your business based on an invalid patent.
Call our Houston business law attorneys at (713) 909-7323 or use our simple online form to arrange a consultation.