Maiorana, P.C.

Patentability and Infringement

We discussed responding to an office action in a previous interview. When we discussed the claims of the art references, you mentioned there was a different standard for patentability than for potential infringement issues. Could you explain that a little more?

Chris: Sure. When you're working with the U.S. Patent Office to try to get your claims allowed, and ultimately issued as a patent, you're concerned your claims each have at least one element not shown in the references. We talked a little bit how the references can use either what's in the specification, the drawings or the claims of the references.

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That's a concern while we're trying to get a patent application to issue. But when you turn around and try to enforce your issued patent, then you're looking more at showing a competitor's product has each of the elements that are in your claims. That's why we ultimately try to have fewer words in the claims, but still meet the standard of patentability.

If there is an infringement concern, what should a client do?

Chris: This comes up sometimes where a client will see an art reference that's cited in their patent application against them for patentability reasons. They look at the claims and say, "Should I be concerned about infringement?" These are tough judgment calls to make. The bottom line rule is, if there are any concerns at all, give us a call. We can discuss whether we should move on with some of the different options available. If a client doesn’t raise the issue with us, then there's not much we can do to help. If there is an issue, then we can discuss it and talk about the options.

What are some of those options?

Chris: The first option is, get a legal opinion. There are different kinds of opinions. There's one that would be a non-infringement opinion. That's when you look at a competitor's claim and decide whether your product infringes that claim. So, if we look at the standards we talked about above; does your product have each of the elements of the claim that the competitor’s patent has?

We look for some odd sounding clause or some clause that seems fairly restrictive. That's likely what your competitor had to argue in front of the patent office to get their patent allowed. That's a key. If we don't have this clause that was key to their patentability, then we don't infringe and the client's in a lot better shape.

Can a client's patents help if they are infringing other claims?

Chris: To some extent, yes. In the big picture, patents are swords. So, they're an offensive weapon. If a competitor decides to enforce one of their patents against you and you have nothing in that field to fight back with, then you're stuck with only defending against their patent. If you have another patent in the field that you can use offensively against them, it can be a big strategic advantage. So, you could say, "Hey, if you don't drop your lawsuit, we're going to file a cross-claim against you, or counterclaim. Then we're going to have to duke this out."

Back in the day, one client was not happy they only had a hundred patents issued and they were in a dispute with another competitor that had a thousand patents issued. When he sat down at the table to negotiate, this other company said, "If we do a straight cross-license, you're getting a 10-1 advantage over us because we're going to have a thousand patents that you get rights to and we only get a hundred."

So, because of that imbalance, there was a significant cash transaction that went one direction. So, if you have more patents to fight with, you can minimize what the cash balancing amount is, if you're going to do a cross-license.

Can you write a non-infringement opinion?

Chris: Sure. We do a fair number of those. Each case has its own little nuances. Ideally, if you're getting a threatening letter from someone where they say, "Hey, we're going to sue you if you don't pay up. You pay this license or we're going to sue you", we're going to do a non-infringement opinion, look at it, and decide, "Do we really have something to worry about? Are they puffing their chest to try to scare us into a license or do they have a point?"

So, if they have a point, we may not finish the opinion. We’ll have an interview on the phone and say, "Look, you better negotiate something with these guys because you don't have a lot to go on." More often than not, we find some clause in the claim that isn't infringed and we can finish the opinion on that.

We did have a client in that situation that was faced with defending a litigation. Some firms gave them pretty big quotes for defending these things. A million dollars was one of them. We did an opinion that was more in line with doing a few patent lawyer applications worth of work, so that kind of budget. They ultimately used it to get out of the litigation. That client regularly tells me we saved them a million dollars.

Do opinions relate to adversarial proceedings?

Chris: Not directly. But we have had other interviews where we talked about patent interferences, about inter partes review and derivations. Each of those proceedings has a very strong detailed claim analysis portion of it where it's more than just looking at it for an hour and saying, "Oh, there's no way you infringed this patent." We studied and put in a lot of time to make sure any reasonable interpretations of the claims will be covered.

We don't want hide our head in the sand and say, "We don't infringe your claim," when if the court looks at this clause as being a broad case, then are we really safe to say there's no way we infringe it? We want to define the different scopes of these things, really get into the claims. All those different adversarial proceedings have those kinds of components.

You've got a large body of work, a lot of patents as a patent attorney. Does that help on opinions and adversarial proceedings?

Chris: Sure. The procurement portion we do at the U.S. Patent Office helps us understand how to compare those claims to the art that's available. We take that same knowledge, turn it around, and do more detailed analysis when we get into the adversarial situations. At this point, we have 1,600 plus issued patents. We're getting close to being able to update the website to say we have 1,700 issued patents.

We've done so many of these for so long that it's second nature. When we get into the adversarial work, we can spend a little more time. We have very good results with clients. To date, have not lost an adversarial proceeding, which is something we're very proud of.

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