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Patent Litigation: Are You Asking the Right Questions?

By Jack Russo, Member, Russo & Hale LLP

Patent litigation is complex. By understanding the key questions that must be asked before litigation commences, executives and their board of directors will be better prepared to ask legal counsel the right questions to answer as part of the overall strategy for the case.

The following presents an initial checklist of items that MUST be reviewed in connection with deciding whether and where to bring a case in litigation and how to defend it. We will use this to flesh out more detailed checklists in the presentation, discussion, and question and answer discussion that will cover the following areas of inquiry:

1. Who is the Plaintiff? Who are the decision-makers for Plaintiff? Is the Plaintiff litigation adverse? Is the Plaintiff litigation-oriented? Is the Plaintiff already in other related litigation in any other court?

2. What are the Plaintiff's ultimate goals? There are many potential goals; typical ones include: exclusivity? protection of rights? avoiding laches? demonstrating policing efforts? obtaining damages? seeking royalties? setting a precedent? minimizing costs?

3. Who are the Defendant(s)? Who are the decision-makers for Defendant(s)? Are the Defendants litigation adverse? Are the Defendants litigation-oriented? Are any of the Defendants in other related litigation in any other court? Is there any insurance coverage? (Insurance coverage can often become the determinative factor on whether the litigation can be resolved early through settlement negotiations or whether there will be a precedent-setting trial (and appeal) because of defense funding for the litigation derived from insurance coverage)

4. What are the Defendants’ ultimate goals? How important is the Defendants’ continued use of the patented technology? How much has been invested? How important is it to the future? Are there “design arounds”? How costly would a change be? How much can the Defendants afford to invest in litigation? Are some Defendants protected by insurance while others are not? Are there other actual or potential conflicting interests among and between different Defendants?

5. What is the patent and its history? What is the exact scope of the U.S. patent? Is the existing patent close to expiration? Is there any disadvantage to waiting before filing a suit? Is the chain of title correct? Are there assignment issues? Are there historical issues that may prejudice enforcement?

6. What do the Patent Office records disclose? Are there any potential "estoppel" positions arising from correspondence with the PTO regarding pre-existing third party patents that weaken the Plaintiff’s position, that strengthen the defendants’ position or that will inevitably generate additional issues?

7. Was there any pre-existing relationship between the parties? Was there some business relationship? Might there be some agreement for arbitration or other dispute resolution? Should some agreement for possible dispute resolution be pursued?

8. Federal Courts Vs PTO Vs ADR? What are the pros and cons of using different available systems for adjudication? Must the case be brought in federal court? Are there pending PTO “re-examination” or other proceedings? Can the matter be more promptly and more effectively handled via alternative dispute resolution?


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