Working Up Your Patent Infringement Case: How Doing Your Homework Can Keep You One Step Ahead

• Date: 05 May 2020
• Author: Nikki Little

Published in Landslide® magazine, Volume 12, Number 5, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2020 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Working Up

Your Patent

Infringement Case

By Nikki Little

We’ve all been there. Maybe you are at a social gathering when someone discovers

you are an intellectual property law attorney. Perhaps you are in-house, and an

inventor in one of your business units comes in waving around a sample of a competitor’s

product the inventor came across over the weekend. Or maybe you just answered a cold call. No

matter how it arrives at your desk, the story is similar: Someone had a great idea and invested the

time, money, and effort to obtain a few patents to protect that idea, but now someone else in the

industry is ignoring those rights and the patent owner is ready to take them on in court. Tomorrow.

After convincing the client that it would not be in their best interests to le that quickly, you

agree to take a closer look at the patents and the potential infringer. Where do you start, and how

do you sort out if the allegations have merit or if they don’t even pass a sniff test? While each case

is different, there are basic steps you can take up front in assessing and working up your case that

will lead to efciencies and a better outcome for you and your client. This article explores some

key considerations that you should run down before running out to the courthouse.