Clearance Searches & Opinions
Businesses often want to know if their next product will be clear of their competitors’ patent claims, or if their continued sales are infringing some patent that has been brought to their attention. A clearance search is a comparison of a client’s product, service, or brand against the known or searchable intellectual property rights of others, for example a competitor, vendor, or customer. Our clients may request or benefit from a clearance search to support decisions regarding product or logo design, design-around efforts, corporate acquisitions, supplier choices and agreements, customer negotiations, determining appropriate settlement terms for infringement litigation, or other business and legal situations.
We have the credentials and experience to provide our clients with clearance opinions and right-to-use investigations that they can reasonably rely upon to manage business and litigation risk.
Patent Invalidity Searches & Opinions
Often the USPTO does not find the closest prior art before granting a patent. Although that may smooth the path to allowance of a pending patent application, it may adversely affect the enforceability of the issued patent. For example, a patent owner who has invested in enforcing an intellectual property asset may learn, deep into licensing negotiations or an infringement litigation, that the validity of the asserted patent claims are actually threatened by closer prior art than that found by the USPTO examiner. Knowing about such prior art earlier during patent prosecution could have enabled that patent owner, then a patent applicant, to have strategically amended the then-pending claims to avoid invalidity, while perhaps preserving an infringement read on a competitor’s product. We can conduct or commission a thorough pre-filing prior art search for patent applicants that can result in a more enforceable patent for use in later licensing negotiations or litigation.
For defendantse can conduct or commission a thorough prior art search, for example during or in anticipation of litigation, which may identify invalidating prior art that can be used to motivate favorable settlement or threaten and dissuade a prospective plaintiff from asserting a subject patent against our client in the first place. We may also use the results of such a prior art search to challenge the patentability of the issued patent claims or an adversary or third party in a post-grant proceeding such as an inter-partes review. Doing so may avoid, stay, or help settle more expensive litigation proceedings.
Patent Litigation & Litigation Support - Plaintiff & Defendants
We handle simple and complex patent disputes and represent patent owners, accused infringers, licensees and licensors - from individual investors to large corporate entities - who are asserting or defending against patent claims. Our clients come to us from a variety of different technology fields or market sectors, and the intellectual property litigations for which we assist them may arise from a variety of commercial activities, agreements, or contexts. Plaintiffs whom we represent may threaten or initiate patent litigation to support one of many possible business goals. In every case, we tailor and limit our legal services, litigation and otherwise, in careful consideration of the client’s ultimate business objective.
Our legal team is made up of litigators who have substantial experience in preparing technology disputes for successful trial.
Sound legal advice and representation during the events and negotiations that precede patent litigation can greatly affect the outcome. In many cases, litigation can be avoided altogether in the pre-litigation phase of a dispute, if an adversary is guided to make a realistic assessment of the case-specific risks, costs, and potential benefits. On the other hand, some admissions that an inexperienced attorney might make during a pre-litigation "letter war" can compromise success later in court.
We carefully represent and advise our clients through this critical early phase of a patent dispute - the phase when wise decisions and careful communications can often achieve a positive result at a far lower cost than litigation - and we often carefully lead our client's adversaries to doubt their prospects in future litigation.
Pre-trial Case Prep & Motion Practice
Pre-Trial Case Prep & Motion Practice in patent litigation cases can include drafting and filing complaints or answers, document discovery and related disputes and motions, fact and expert witness depositions, refinement of party contentions, claim construction briefings and related hearings, etc.
In every patent litigation matter, we are careful, experienced, and competent to develop the most favorable pre-trial record for our client.
Tech Expert Declarations & Depositions
Technical experts are often used in patent litigation or post-grant proceedings to inform the court about factual disputes, yet these technical experts rarely agree. A successful litigator can use pre-trial motion practice and depositions to expose inaccuracies or misstatements by the opposing expert, and then help the court to recognize the credibility of expert testimony or opinions that favor our client’s position. Doing that can be difficult for attorneys that lack technical skills and education. All of our partners have more than one engineering degree, engineering industry experience prior to the practice of law, and patent litigation experience in many scientific and engineering matters.
Our technical expertise means we are very effective at deposing and cross-examining our opponent’s technical experts to ensure that their opinions don’t credibly deviate from the truth. Our technical expertise can also help our client’s technical experts to effectively communicate their opinions, and testify at depositions with reduced risk of being contradicted at trial.
Settlement Negotiations & ADR
Often settlement negotiations and alternative dispute resolution (ADR) proceedings are the first or best opportunity for the weaknesses of the opposing party’s case to be presented to the opposing party directly, without interference from opposing counsel.
We help our clients achieve beneficial settlements by effectively communicating the strengths of our client’s case during negotiations and ADR, while ensuring that the opposing party recognizes and understands the weaknesses in their case.
Our clients also rely on us to craft, revise, and confirm the terms of settlement, for example to reduce the risk that a settlement might not end the dispute permanently.
Often one or both parties in patent litigation or post-grant procedures disagree with one or more of the court’s rulings, leading to appeal. Patent appeals often rely upon a complex closed universe of technological and procedural facts, and both substantive and procedural law. Our expert attorneys have the knowledge and experience in law, civil procedure, and technology, to guide your appellate case to a successful conclusion..
We prepare and file appellate briefs on behalf of our clients (if necessary), particularly in cases before the U.S. Court of Appeals for the Federal Circuit, and we prepare for and conduct all aspects of oral argument as well.
Why Choose Us
We have extensive experience in a wide range of legal and business issues related to intellectual property.
Each of our partners holds both advanced engineering and legal degrees from the best universities,
and has supplemented his academic credentials with years of technical experience. We combine
top-tier big law firm and Fortune 500 in-house expertise and experience with the attitude
and responsiveness that is only available from a smaller boutique law firm.