How to Defend Against a Patent Infringement Lawsuit: 3 Effective Strategies

A patent infringement lawsuit can put your company at significant risk. The stakes are incredibly high, with potential costs running into millions of dollars in legal fees. It could also disrupt your operations, damage your product development pipeline, and tarnish your reputation. While a patent infringement lawsuit presents a complex challenge, with the right defense strategy, you can mitigate the risks and protect your company. 

In the U.S., patents grant inventors exclusive rights to their inventions, preventing others from making, using, or selling the patented technology. If these rights are violated, the patent holder can file a patent infringement lawsuit. For the accused party, defending against such a lawsuit is critical to avoid hefty damages and operational disruptions. 

Let’s explore three effective defense strategies for handling a patent infringement lawsuit. 

3 Ways to Defend Against a Patent Infringement Lawsuit 

Defending against a patent infringement lawsuit requires a strategic approach. Let’s take a closer look at three strategies that can help protect your company from the financial and operational risks of patent litigation. 

1. Non-Infringement Defense: Proving Your Product Doesn’t Infringe 

The most direct way to defend against a patent infringement lawsuit is to prove non-infringement. This defense asserts that your product or process does not violate the patent in question because it does not fall within the scope of the patent claims. 

A patent’s claims are the legal boundaries of the invention. They define exactly what is protected under the patent. For a patent infringement lawsuit to succeed, the plaintiff must prove that your product meets every element of at least one claim in the patent. If your product differs in even one element, there is no infringement. 

To build a non-infringement defense, consider these steps:  

• Analyze the patent claims: Compare the claims to your product. 

• Seek expert advice: Consult with a patent attorney or IP expert to interpret the claims correctly. 

• Design around the patent: If possible, modify your product to avoid infringement altogether. 

Example: We helped a client in the memory-based industry face a patent infringement lawsuit. By analyzing the patent’s claims, we discovered that eight out of 15 claims did not apply to our client’s product. This non-infringement argument weakened the plaintiff’s case, allowing our client to settle without paying damages. 

2. Invalidity Defense: Challenging the Patent’s Validity 

If non-infringement doesn’t work, you can take the next step by challenging the patent’s validity, asserting that it fails to meet the legal criteria for patentability.  

U.S. law grants patents only for inventions that are: 

• New: The invention must not have been disclosed publicly before. 

• Useful: The invention must have a specific, practical use. 

• Non-obvious: The invention must not be an obvious modification of prior inventions to someone skilled in the field. 

To challenge a patent’s validity, a prior art search is essential. Prior art refers to any publicly available information—such as patents, publications, or products—that existed before the patent’s filing. If prior art is found, the patent may be invalidated, and the lawsuit could be dismissed. 

The America Invents Act (AIA) of 2011 transitioned the U.S. to a “first-inventor-to-file” system, meaning prior art is now evaluated based on the filing date, not the invention date. This change emphasizes the importance of thorough prior art searches. 

Many defendants often file Inter Partes Reviews (IPRs) with the Patent Trial and Appeal Board (PTAB) to challenge a patent’s validity. According to the USPTO, only about 50% of IPRs are instituted, and a significant percentage of claims that are reviewed end up being invalidated. However, some claims may survive if the patent holder offers strong technical evidence.

Example: A client in the medical device industry faced a patent infringement lawsuit and was able to successfully challenge the patent’s validity. A prior art search uncovered several publications that predated the plaintiff’s patent, leading to a favorable settlement.

3. Counter-Assertion: Leveraging Your Patents 

If you have a robust patent portfolio, you can counter-assert your patents in response to a patent infringement lawsuit. This strategy turns the tables by accusing the plaintiff of infringing on your patents, creating leverage in negotiations. 

How Counter-Assertion Works: 

1. Review your patent portfolio: Identify patents that the plaintiff’s products might be infringing. 

2. Engage in cross-licensing negotiations: Use your patents as a bargaining chip to reach a settlement or licensing agreement. 

Example: We recently worked with a tech company accused of patent infringement by a competitor. After reviewing our client’s patent portfolio, we found several patents that the competitor was infringing. By counter-asserting these patents, we successfully negotiated a favorable settlement that ended the patent infringement lawsuit. 

If your company does not have relevant patents to assert, strategic patent acquisition may be an option. This involves purchasing patents that cover the plaintiff’s products or technology, giving you the ability to counter-assert in future lawsuits. Many companies work with patent aggregators or non-practicing entities (NPEs) to acquire portfolios that strengthen their litigation position. 

The Role of Markman Hearings in a Patent Infringement Lawsuit 

A crucial part of any patent infringement lawsuit is the Markman hearing, where the judge determines the meaning of disputed patent claims. The outcome of this hearing can significantly impact the case, as it establishes how the claims will be interpreted in court. 

Both parties in a patent infringement lawsuit will try to influence the claim construction in their favour. The patent owner typically argues for a broad interpretation of the claims, while the accused infringer seeks a narrower interpretation. The timing of the Markman hearing is also critical, as it can affect the discovery process and the overall strategy for both sides. 

For defendants, having the Markman hearing early in the case can provide clarity on the scope of the patent and allow time to adjust defenses accordingly. 

Conclusion 

Facing a patent infringement lawsuit is a complex and expensive process, but with the right defense strategy, it’s possible to protect your business and minimize the financial impact. Whether you pursue a non-infringement defense, challenge the validity of the patent, or use counter-assertion as leverage, each approach requires careful planning and expertise. At Sagacious IP, we specialize in helping companies navigate the intricacies of patent litigation. Our team of experts can provide tailored solutions to defend against a patent infringement lawsuit and help you achieve the best possible outcome.

– Aman Goyal (ICT Licensing) and The Editorial Team

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