Effective Patent Assertion Defense – A Tutorial

Patent Assertion Defense is not taught in college or law school. Instead, Patent Assertion Defense is learned by experience. In other words, it is mostly learned on the job, from more senior IP Department members or lawyers. This paper provides a brief tutorial on effective Patent Assertion Defense using online tools. Hopefully, this tutorial will be helpful to your company.

First, it is important to use a logical, consistent methodology to assess the risk posed by an assertion. Using a logical, consistent methodology will help quantify the potential risk posed by an assertion and determine the best response. Generally speaking, I recommend the following methodology:

This tutorial will focus on the Research & Information Gathering step. During this step, it is important to learn as much as possible about the entity making the assertion. In particular, it is important understand whether the entity that sent the letter is litigious or not. If the entity is litigious, it is essential to determine the seriousness of the lawsuits filed by the assertion entity.

In my experience, RPX Insight is a valuable resource for the Research & Information Gathering step. By entering the entity’s name (in this case, we used “Onscreen Dynamics, LLC” as an example), a large volume of information is available, as shown below:

Naturally, an assertion entity that has brought 15 patent infringement suits is an NPE, but what else can we learn about Onscreen Dynamics? For example, what can we learn about the 15 patent infringement lawsuits filed by Onscreen Dynamics?  Are these serious cases, or nuisance cases? To help answer these questions, I suggest examining the following data:

In the screen above, “PTAB Petitions” refers to inter partes review proceedings (hereafter “IPRs”) filed against Onscreen Dynamics’ patents. Based on the effectiveness of IPRs, it is a bit odd that Onscreen Dyamics has filed 15 patent infringement lawsuits but not a single IPR has been filed against an Onscreen Dynamics patent.

Next, compare the filing date with termination date for the list of Onscreen Dynamics’ cases:

Note that most of the patent cases brought by Onscreen Dynamics settle in about 3 months. The fact that no IPRs have been filed against an Onscreen Dynamics patent, and that most Onscreen Dynamics cases settle in about 3 months probably indicates that these are nuisance cases that settle quickly and cheaply. For example, it makes no sense for a defendant to defend a patent case or file an IPR petition if Onscreen Dynamics’ settlement demand is $25,000 for example.

Another important part of the Research & Information Gathering step is to verify that the maintenance fees have been paid for the asserted patents. In other words, it is important to make sure the asserted patents are “alive” as opposed to abandoned. The best way to verify that the maintenance fees have been paid is to use the USPTO website, as shown below:

Once both the patent number and the application number are entered, another screen shows the maintenance fee schedule for the patent and whether the maintenance fees have been paid, and whether the maintenance fees were paid as a large entity or discounted, as a small entity. Note that if a large company pays discounted maintenance fees, the patent could be unenforceable. Maintenance fee details are shown below:

Finally, for the Research & Information Gathering step, I suggest verifying that the entity that sent the assertion letter actually owns the patents.  While an assignment transferring title to a patent does not have to be recorded to be legally enforceable, checking the USPTO database for recorded assignments is a good place to start, as shown below:

After clicking on the “Patent Assignment” button, choosing “Patent Number Search”, and entering the patent number, the following screen will appear:

As shown in the above webpage, each of the assignments for the patent-in-question can be opened, downloaded and carefully studied. Naturally, you should discuss with a U.S. attorney whether these assignments actually transfer title to the patent or not. For example, if the assignment does not explicitly transfer the right to sue for past infringement, the transferee (e.g., Onscreen Dynamics) will not have a sufficient interest in the patent to maintain a lawsuit for patent infringement. In other words, Onscreen Dynamics’ case could be dismissed if it does have the right to sue for past infringement.

Now that some basic information has been gleaned about the asserted patents, a responsive letter can be drafted. Obviously, the letter should try to avoid litigation and needless antagonism, balanced by the fact that the assertion is probably seeking a nuisance value settlement.

I hope that this article has provided some useful information about assessing the threat posed by an assertion letter. If you have any questions, please feel free to contact me at eric.kirsch@rimonlaw.com.

This summary is provided for informational purposes only and is not intended to constitute legal advice nor does it create an attorney-client relationship with Rimon, P.C. or its affiliates.

Eric D. Kirsch is a partner in Rimon’s Intellectual Property and Litigation groups. Eric represents international technology companies in patent infringement lawsuits, licensing matters and patent prosecution. With a degree in electrical engineering and extensive experience in biotech, Eric works closely with a variety of companies to protect their intellectual property rights and operate freely in the U.S. Read more here.