Klarquist Patent Defenses
Klarquist Patent Defenses is a training document that summarizes the most significant decisions regarding substantive defenses to assertions of infringement of U.S. utility patents, and remedies for infringement. This document also conveniently hyperlinks to hundreds of relevant Supreme Court, Federal Circuit (mostly since 2004), CCPA, and BPAI/PTAB decisions. In each update, the most recent decisions are yellow highlighted for convenience. Patent Defenses is intended to be a handy starting point for research, not to be complete or entirely reliable, and it does not represent the views of the firm or its clients. We update it on a roughly weekly basis with new appellate decisions.
Download the public version of Klarquist Patent Defenses (current through November 2, 2017)
- FITF TIP: Don’t Miss 9-Month-From-Issuance Deadline To File PGR Against FITF Patent: Petition for PGR of a FITF patent (e.g., child of asserted patent) must be filed within 9 months of issuance/re-issuance. 35 U.S.C. § 321(c). Any patent filed after March 15, 2013, might be an FITF patent.
- TIP: Do Not Assume “Continuation” Or Non-Provisional Claims Can Be Backdated: Do not assume that claims can be backdated to filing date of parent or provisional app. under Secs. 119/120, Research Corp. Tech. (Fed. Cir. 12/08/10), e.g., when conducting FITF analysis.
- TIP: Limit DJ Complaint To Non-Infringement: Asserting invalidity in DJ complaint bars DJ plaintiff from filing for AIA inter partes or post grant review, see 35 U.S.C. § 315(a)(1), 325(a)(1); GTNX (Fed. Cir. 06/16/15), but raising invalidity as defense to infringement counterclaim in the DJ action does not.
- TIP: Do More In Markman: Seek construction that “claim as a whole” is directed to abstract idea, Bilski v. Kappos (U.S. 06/28/2010) (101); claim covers multiple techniques (where Spec. enables or adequately describes only one), Eli Lilly (Fed. Cir. 09/01/10) (112(1/a)); claim language limits claimed method, etc. not just claimed environment, Advanced Software (Fed. Cir. 06/02/11) (271); claim language has no “patentable weight,” Astrazeneca (Fed. Cir. 11/01/10) (102/103); and/or is “indefinite,” Interval (Fed. Cir. 09/10/14) (112(2/b)).
- TIP: Consider Early Disclosure Of “No Direct Infringement” Grounds In View Of Commil USA and Octane Fitness: Consider early, non-settlement letter to Plaintiff explaining why there is no direct infringement (to help negate scienter element of indirect infringement and/or willful infringement) and other defenses (to support attorney fees award).
- TIP: Seek Admissions To Trigger i4i Jury Instruction: Seek admissions in RFAs, expert depositions, etc., that our lead invalidity evidence “differs from that evaluated by the PTO” and/or “is materially new”—all issues the jury may be asked to consider, per i4i (U.S. 06/09/2011).
- TIP: Take Advantage Of Skeletal Spec.: Failure of Spec. to describe particular implementation of a claim-recited element or result can be used as admission that element or result was conventional, for a Sec. 101, 102 or 103 defense. Cf. In re Fox (CCPA 02/01/73) (claim elements not described in detail in the Spec. are presumed to be known to those of ordinary skill in the art).
- TIP: Explore Immediate Redesign: Promptly adopting safe redesign stops damages period, may cap past damages amount, and may defeat inducement intent under Ricoh (Fed. Cir. 12/23/08). Instructing customers how to avoid infringement also may avoid inducement intent. Id.
- TIP: Cite 140 Years Of S. Ct. Warnings Of Risk Of Patents Impeding Innovation: Balance presumption of validity with explanation of PUBLIC POLICIES LIMITING PATENTS.