If your company has received a cease and desist letter or an infringement complaint filed in any District Court, there are a number of defenses to a patent infringement claim. Many times a strong legal argument can induce a favorable settlement or even convince a patent holder to withdraw the claim. However, ignoring a patent infringement claim can lead to significantly increased damages, such as a court awarding treble damages for willful infringement, and/or awarding attorneys fees to the patent holder.
Non-Infringement
Prosecution of patent applications in front the the US Patent Office typically spans several years with the examiner rejecting the claims multiple times based on the prior art. To overcome these prior art rejections, the applicant will make narrowing claim amendments over and over again until finally the claims are so narrow they are allowed by the examiner. The patent holder may then enforce the issued patent against anything even resembling the product disclosed in the patent while disregarding the fact the claims were narrowed significantly during prosecution. That is, the patent holder will typically enforce the patent hoping the accused infringer will not hire an experienced patent attorney capable of arguing non-infringement based on the narrowing claim amendments made during prosecution of the patent.
Invalidity
The examiner will perform a prior art search of the initial patent application and then reject the claims by asserting they are either anticipated or rendered obvious by the prior art. The applicant will then amend the claims (sometimes multiple times) in order to avoid these prior art rejections until the examiner eventually allows the claims. The problem with this piece-meal prosecution is the examiner will typically not perform an additional prior art search in order to locate prior art that applies to the claim amendments. Instead, the examiner will typically consider the claim amendments in view of the prior art of record (because they are time constrained), which means there is a good chance the examiner missed prior art that renders the claim amendments unpatentable.
Alice Decision
Often times patent holders attempt to enforce software patents which, for the most part, have been invalidated by the Supreme Court "Alice" decision. The Alice decision covers most every patent claiming an invention implemented using a computer, including Internet inventions, cell phone applications, computerized business systems, computerized education systems, even an improved drive shaft designed using a computer. Mr. Sheerin is very adept at drafting invalidity opinions based on the Alice decision which can help induce a favorable settlement, or even invalidate the patent by filing for a declaratory judgement in Federal District Court.
Inter Partes Review
Mr. Sheerin is registered with the United States Patent and Trademark Office (USPTO) and is therefore qualified to file a petition for re-examination (Inter Partes Review or IPR) requesting the patent be found invalid based on prior art. Many times the mere filing of an IPR petition can induce a favorable settlement, and if not, only 11% of patents have survived past IPR proceedings which means there is a very good chance you will reach a favorable settlement during the IPR proceeding, or that the patent you are facing will be found invalid by the USPTO. More information regarding IPR proceedings can be found here: https://www.patentlawcommunity.com/forum/inter-partes-review-ipr
Attorney Fees
You may be able to recover the attorney fees you spend defending your company against a bogus claim of patent infringement. Attorney fees may be awarded if the patent owner fails to perform a reasonable pre-suit investigation of infringement, asserts a patent based on a substantively week infringement argument, prosecutes the litigation improperly, or commits fraud on the patent office when procuring the patent (e.g., by intentionally concealing material prior art or an "on sale bar" event). Mr. Sheerin will carefully analyze your case and file a motion for attorney fees when appropriate.