Closely Partnering with our Client Leads to Multiple Patent Applications and Earlier Filing Dates
One of our clients, a Fortune 500 equipment manufacturing company, regularly conducts engineering design review sessions that include Patterson + Sheridan attorneys. The client includes us in these sessions to utilize not only our expertise in patent law, but also to increase our understanding of the client’s portfolio as well as the client’s relevant competitors. During the sessions, we capture many concepts that may include patentable subject matter based on our knowledge of the existing art. Additionally, we ask probing questions of the engineers to identify key, distinguishing features that are of potential patentable interest. Based on the discussion from the sessions, we then present to the client multiple patentable concepts with a perspective on how these concepts fit into a larger patent strategy, e.g., alignment with the client’s products and services, as blocking patents, etc. In some cases, the concepts are broadly disclosed in previously filed applications. Therefore, we propose amended, and in some cases divisional, claims to the client. In other cases, we recommend filing new applications.
Our participation results in filing multiple patent applications covering the ideas generated in the brainstorming session. We are able to save money for the client and take advantage of earlier filing dates to block competitors using previously filed applications.
Defending a Fortune 500 chemical company against multimillion-dollar patent infringement allegations
When an international manufacturer and supplier of chemicals was facing claims of patent infringement, they turned to John Barr, Jay Yates and their team to help navigate the litigation process. The company was being sued by a larger competitor for alleged patent infringement of a chemical method patent in a U.S. District Court. The competitor sought a multimillion-dollar award for past damages in addition to a permanent injunction requiring our client to immediately stop manufacturing a successful specialty chemical product.
Translating complex subject matter into a compelling argument at trial
Effectively addressing complicated technologies to a jury is challenging. At trial, cases are presented through the witnesses and the documentary evidence. Unlike in a classroom, where students can ask questions when learning new and difficult material, juries generally are prohibited from asking any questions.
Effective trial lawyers must:
● Tailor their presentation to the courtroom
● Anticipate the questions that the jurors would ask
● Select the most impactful exhibits
● Anticipate the counter-arguments that will be presented by opposing counsel
Our litigators know how to explain even the most technical subjects to a jury, and we’ve sharpened those skills through decades of handling significant trial matters.
A two-pronged attack on infringement and validity claims
This case was challenging. It involved complicated polymer chemistry and the patents to be presented at trial lacked any drawings to help teach the processes involved.
Our lawyers decided that the best way to present the case to the jury involved a two-pronged attack on infringement and validity that clearly demonstrated that the client’s process both did not infringe because it worked in a different way than the patented method, and that the asserted patent was invalid based on prior patents from well-known competitors.
Overcoming obstacles to secure a litigation victory
While the jury ultimately did not find the asserted patent invalid based on the prior patents, the intense debate of the prior processes and the explanatory trial demonstratives that our team created to illustrate the processes to the jury forced the patent owner to adopt a very narrow position to distinguish its patent from prior technologies. The resulting limited infringement position required to escape invalidity made the infringement claim easier to defeat, which resulted in a victory for the client.
After a five-day trial, the jury found that the client did not infringe the patent and rejected the plaintiffs’ request for damages and an injunction. The verdict was upheld on appeal to the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. Today, the company is able to compete in the market and grow its business.