With less than five percent of patent cases reaching the trial phase (the majority of cases either settle after claim construction, or are dismissed through summary judgement), a competent and aggressive pre-trial legal defense is critical... not only to your success, but also to minimize your legal costs. My legal fees are typically half those charged by large law firms because I focus on the most effective, efficient legal arguments rather than bleed clients through overly lengthy or unnecessary litigation tactics.
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 law firm capable of arguing non-infringement based on the narrowing claim amendments made during prosecution of the patent.
Even if the claims were not narrowed during prosecution, the Plaintiff will typically assert an unreasonably broad interpretation of the claim terms in a campaign to harass and stifle competition. A significant part of my representation involves an aggressive effort to ensure the judge ascribes a reasonable construction to the claim terms. Many times the narrowing of the claim scope through an aggressive claim construction proceeding can effectively dispose of the Plaintiff's complaint.
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.
Even if I am unable to find prior art that renders the claims anticipated or obvious, there are a number of other invalidity defenses that can be equally effective, such as when the claims are indefinite or not enabled by the specification. Identifying and arguing these nuanced invalidity defenses requires patent attorneys experienced in patent law and patent claim drafting.
Often times patent holders attempt to enforce software patents which, for the most part, have been invalidated by the Supreme Court "Alice" decision (interpreting 35 USC § 101). 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. I am 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 a motion in Federal District Court.
Inter Partes Review
I am registered with the United States Patent and Trademark Office (USPTO) and 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
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 weak 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). I will carefully analyze your case and file a motion for attorney fees when appropriate.