We Were Just Sued For Patent Infringement, Now What?

August 29, 2017 | R. Scott Johnson

R. Scott Johnson, Chair of the Litigation Practice Group at McKee, Voorhees & Sease, PLC

Patent infringement is a serious matter. Patents give their owners the right to prohibit others from making, using, selling, offering for sale, or importing their patented invention. What happens to your business if you are forced to stop making a top selling product, forced to stop using a cost saving process, or forced to find a new source for an imported component? When a lawsuit threatens your company’s ability to make, use, sell, or import the products it relies on, the best thing you can do to protect your business is be prepared.

First things first, do not contact the lawyer or company accusing you of infringement! Anything you say can and will be used against you if you contact the other side. Hopefully you received a letter notifying you of the potential patent infringement before a lawsuit is filed. If so, take that letter to a patent attorney immediately. If you were actually sued, you most likely received a copy of the lawsuit. If so, take the copy to a patent attorney as soon as possible because you only have twenty days to respond. Whatever you do, do not ignore the lawsuit or letter and just hope it will go away.

When you speak with a patent attorney, ask about the process. Patent litigation is not simple. It is often lengthy (some of my cases have been resolved quickly – in a matter of months; some have gone to trial after a little over a year and a half; some took many years to reach resolution).  Many courts have developed scheduling orders just for patent litigation and your patent attorney can help you prepare for the events to come.  

Patent litigation is often expensive. For example, just taking a case through the end of discovery can cost several hundred thousand dollars and it often exceeds a million dollars in fees and costs through trial. Contact your insurance carrier and see if you may be covered. Ask the patent attorney if you can minimize these costs and the impact on your business by designing around the patent? Ask the patent attorney if you can minimize the costs by taking a license? Ask the patent attorney if you can minimize these costs by trying to invalidate the patent through a post grant process that may stay the litigation? The patent attorney should be able to walk you through the pros, cons and situations that may or may not arise by choosing to execute one of these strategies if you are able to do so.

If litigation proceeds, be prepared. Read the patent and know what it is about. Preserve any documents related to the patent or the accused product. Ask your attorney what the patent covers and any other questions you may have after reading the patent. It may not cover what you are doing. Know what you’ve already done and realize patent litigation is going to be invasive. Patent cases typically involve disclosing confidential information like product design and development documents, company financials, and customer data. This information can be protected and many courts have developed standardized orders to help you keep your information protected. Often this information is kept in emails on multiple servers at multiple locations stored by multiple employees. Gathering it all can take time, so start early. Doing so will help minimize the amount of disruption the case can have on your business.   

It all boils down to this: if you get sued, call. I’m happy to help answer questions and protect your business during what can be a very stressful time for many.

Scott Johnson is the Chair of the Litigation Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visitwww.ipmvs.com or contact Scott directly via email at r.scott.johnson@ipmvs.com .