ADVERSE PATENT ANALYSIS
Adverse patent assertions have become an inevitable occurrence in today’s business environment. Some of our clients receive multiple adverse assertions in any given week. Effectively responding to an adverse patent requires at least as much strategic thought and attention as the patent holder puts into the assertion. Responding to an adverse patent does not, however, necessarily mean being on the defensive. In fact, we adhere to the standard that the best defense against a patent assertion is a rigorous and thorough offense.
At Slater Matsil, we are familiar with the panoply of tools and strategies available for responding to an adverse patent assertion, and we employ a multi-pronged approach. The asserted patent must be evaluated for its merits and vulnerabilities — testing validity with prior art searches, challenging infringement with in-depth technical analysis, and probing the prosecution history for claim limiting statements and deficiencies. Due diligence must likewise be performed on the asserting entity itself — understanding the different motivations of a competitor versus a non-practicing entity or the like, and exploring the business pressures and sensitivities confronting the asserting entity. Additionally, care must be taken to fully understand the unique concerns and goals of the client — evaluating tolerance for risk, understanding how a patent assertion can influence a company’s shareholders, customers, vendors, and other stakeholders, and recognizing when a strategic advantage, such as a technical alliance, an acquisition opportunity, a cross license, or the like can develop from a patent assertion. Lastly, we recognize that maintaining effective and timely communications with management and decision makers within the corporate structure of our client is an essential part of ensuring the client obtains the outcome that best suits its needs.
While patent litigation is typically easily quantified in terms of success (damages awarded, settlement payments, etc.), the success of responding to a patent assertion is often difficult to quantify. At Slater Matsil, we have a solid track record of saving our clients the costs of litigation when disputes are settled pre-litigation and avoiding the payment of license fees altogether when asserted patents are invalidated or otherwise defeated pre-litigation. With decades of collective experience in license negotiations and assertion responses, we have delivered substantial savings (totaling hundreds of millions of dollars) in litigation costs and license fees to our clients. Our adverse patent assertions services include:
- Prior Art Searches
- Infringement/Non-infringement Analysis
- Design Around Feasibility Studies
- Counter Assertions
- Risk Analysis
- License Negotiations
- Contract Drafting
- Opinion Letters