BULLET-PROOFING FOR PATENT LITIGATION
Your invention's success today almost guarantees that someone someday will infringe your patent. If you end up in court, early mistakes made while prosecuting your patent may come back to haunt you. Whether you were trying to save money or time, or were simply unaware, early mistakes will powerfully affect what happens to your patent in litigation.
As a patent litigation attorney, I have seen many inventors embroiled in lengthy, expensive lawsuits that could have been avoided or greatly simplified if certain mistakes hadn't been made during prosecution. The biggest mistake inventors make is being pack rats. The minute your patent is allowed, purge your file of extraneous documents. Save all communications with the Patent Office but throw away drafts of claims, revisions to specifications and drawings, musings on scraps of paper, and patents with notes and comments inscrutable even to you. If you don't get rid of them, they may cause two kinds of fights during litigation that will wear you down and waste your resources.
First, you may end up fighting over what is--and isn't--covered by the attorney-client privilege, and you will find it difficult to protect your privileged communications from being admitted into evidence, especially if you can't prove to the judge when and to whom they were written. If your attorney manages to protect these documents, your fight to keep them out of evidence may give the court the impression that you have much to conceal.
The second fight over documents may be more damaging. It starts the moment you are ordered to turn documents over--and you will be. You have now given your opponent more material for questions, and a virtual crowbar with which to pry open your thinking. Because you were a pack rat, your opponent now is able to prove you questioned the wording of your claims, or decided not to give the Patent Office a particular reference--no harm in itself, but for a reason that now appears suspicious. You may also give him the ability to prove you claimed your invention inaccurately, or narrowed its scope because you feared the prior art he is now hitting you over the head with in court.
In one of our cases, our client's patent prosecution files were a junkyard mess. He'd kept everything--every marked-up copy of patents he had ever considered as possible prior art (including those he rightly decided not to mention to the Patent Office), as well as all his scribblings, all drafts of the specification, and every version of every claim he ever wrote. He also kept every draft of every amendment and response, giving his opponent the chance to argue that all his later deletions were made with the intent of preventing the examiner from knowing all relevant facts. Our client obviously never heard of computers, which would have enabled him to keep only up-to-date documents with his best and current thinking, instead of a lot of outmoded rubbish.
A good patent file retains only the truly important: invention disclosure, results of your search, perhaps a privileged letter discussing the facts and providing legal advice about the invention's scope, and all documents to and from the Patent Office. Your patent's official file history doesn't contain extraneous materials and ruminations, so why should your personal file keep junk that can later be readily misused?
Fortunately we won our case. But the time spent writing briefs and preparing withheld lists of documents wasted everyone's time--ours, our client's, and the court's.
Another mistake inventors make during prosecution is not disclosing all prior art to the examiner. The rule of thumb: if in doubt, disclose; and if you're not sure it's prior art, disclose it anyway. That way, you cannot lose. If your examiner doesn't consider the art, we rightly tell court and jury at trial that the art is not important because your examiner--by law a "quasi judicial officer"--didn't address it. If the examiner considers the art, your claims are even stronger because you defined your invention with the prior art in mind. A patent with a lengthy list of references on its first page is what I call a "Superman" patent. It impresses court, jury, and even the defendants--although they probably won't admit it.
Consistency with your patent prosecution is critical, because jurors want to accept patent examiners' decisions. So, if you presented your examiner with the same or equivalent of the art now being used by the accused infringer, you will win any contest concerning your patent's validity.
Part of the statutory record of your patent are the amendments and arguments you made in response to your examiner's office actions. Here, the less said the better. When discussing prior art, focus on prior art, not the invention; comment on the shortcomings of the prior art, e.g., what it does not show. Minimize comments on what your invention is, and avoid interpreting the claims themselves. The law says amendments made to better define an invention do not create the same restrictions as amendments made to avoid prior art. So, when making amendments, always tell your examiner you are doing so to better define the invention. This reduces a future infringer's ability to argue that you modified your claims to avoid some prior art.
Another problem crops up with affidavits, which are used in patent prosecution for many reasons, including demonstrating an invention's commercial success. When using affidavits, accuracy and hindsight are again critical.
We recently had a case where our client--a major corporation--wanted to overcome an obviousness rejection by proving its invention had achieved significant commercial success. Fifty years ago the Supreme Court held that an invention's sales are a good indicator of its merits. But our client advertises heavily, so sales may not be due solely to its invention's merits. In its original form, the affidavit would have been worse than useless, since it would have led the examiner to the right conclusion for the wrong reason. So we had our client investigate other possible reasons for the sales increases, and prove in the affidavit that they were not the reasons for the invention's success.
Commercial success affidavits cannot be rebutted by an examiner since the Patent Office maintains no sales data. If not properly done, your commercial success affidavit can be turned into an argument by your opponent during litigation that you willfully misled your examiner to an incorrect conclusion, since you knew advertising (or an unpatented feature of the invention, or its low price, or even a good distributor's network) contributed to your invention's sales.
In another case, one of our expert witnesses provided a commercial success affidavit in a patent we were litigating, and which our opponents had put into reexamination--a frequent last measure of the accused infringer. Our expert was not quite on the button with the invention's profits, and our opponent argued that our client had tried to mislead the Patent Office both in the original prosecution and during the reexamination. So, although we were ultimately successful, this small inaccuracy in our expert witness's affidavit, an unintentional arithmetic error, helped bolster the other side's argument, caused delay, incurred added expense--and added another argument we had to defeat. So, when providing a commercial success affidavit, analyze the affidavit from the standpoint of a potential infringer.
Is your patent worth a European search through the World Intellectual Property Organization? It may be, even though such searches often cost several thousand dollars. Any well-funded defendant will search there, and may challenge the validity of your patent, confronting you with "crucial" patents and publications your examiner never saw. This creates doubt in the jury's mind, since it can no longer rely on your examiner's expertise.
Finally, what should you do if you are accused of infringing someone else's patent? First, respect the other party's patent rights. If feasible, you might drop the product or activity accused of infringement. If you believe you did not infringe and want to continue the activity, get an opinion from a competent attorney, and give him or her all necessary facts. This legal opinion should be in writing.
In a recent Chicago case, a corporate defendant tried to persuade the jury that its attorney had asserted it had not infringed the plaintiff's patent. However, since the advice was undocumented, neither court nor jury believed what looked like a litigation afterthought. So the plaintiff's one hundred million dollar damage award may turn into three hundred million dollars because the jury concluded the infringement was willful.
This written opinion must also reflect that the attorney has received an honest disclosure of facts from the client accused of infringement. An incomplete disclosure is worse than no opinion, because it makes you look like a crook, much like a defendant in a tax case who says he relied on his accountant to make an accurate tax return, but forgot to tell the accountant about his bank account and condominium in Grand Cayman.
Remember, be extremely accurate during patent prosecution
with factual statements, and know what you say may later be misinterpreted
and/or used against you. While a strong prosecution may not save
you from infringement, it will make a significant difference
in how smoothly, economically