Combating litigations with a counter-strategy: scouting or mining patents within a portfolio

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What is the solution that comes to your mind about a classic old litigation case when you hit with million-dollar patent litigation from your competitor or a corporate patent asserter? Well, there is one classic solution, invalidation search. But do we only satisfy ourselves with the saying “old is gold”, or make a smarter decision to consider the other options as well? There is always an option to stop selling/making the beloved but infringed products. But we do not want that to happen.

Now some would say, Hey! I can always take the Licensing road.

Now, let us ask ourselves another cheeky question, was that the last arrow in my quiver? Well, have you thought about the hidden gems in your patent portfolio to counter sue the asserter?

Taking a road to counter assertion always helps to gain an edge in the battle. The counter assertion is the process of identify the potentially relevant patents in your patent portfolio which are mappable to the asserter’s products. So, apart from invalidating the asserter’s patent, you can play it smart.

We follow 4-step approach for counter assertion according to the client’s requirements.

Step 1: Analyze the Asserter’s Products:

We do extensive research on the product lines of the asserter’s products, gain in-depth knowledge of products, and maintain a timeline of when the certain features are added to the product or when the products initially released. We also look for the revenue of the products and identify the high revenue products.

Step 2: Patent Portfolio Analysis:

In-depth knowledge of the products helps us in targeting the valuable patents in the defendant’s portfolio. The product lines that bring in the great deal of green bills are kept in the prime focus. The relevance of the patents in the defender’s portfolio is ranked accordingly. we categorize the patents to high, medium, and low based on infringement potential and parameters such as priority date of the patent, domain of the patent, claim length, claim broadness, remaining life and many more. In addition to the manual search, we also use automated in-house XLPAT tools for ranking the patents.

Step 3: Detailed Infringement Analysis:

We do a detailed analysis of shortlisted high category patents (sometime as per client’s requirement we also do analysis of the medium category patents) with respect to the asserter’s products. The analysis includes studying patent specification, prosecution history, identifying each elements of the patent’s claim in the product specifications and the like.

Step 4: Claim Charting:

After performing the detailed analysis of the high category patents, we provide the claim charts for those high category patents for which each elements of the claim are mappable and could sue the asserter’s products. 

Conclusion:

It is always advantageous to know your valuable patents in the relevant domain. The well-crafted research done by the search firms like us can aid the patent portfolio holder to identify the hidden gems which could assist them in a beautiful manner. 

Author Name :

Sanket Thakur



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