Patent Attorneys - Infringement, Litigation, Assessment & Prosecution

Specializing In Patent & IP Issues: Traverse Legal has a registered patent attorney and/or patent agent available to assist you across a wide range of patent matters including: Patent Infringement; Patent Litigation; Patent Right Enforcement; Licensing; and Patentability. Whether you are an inventor or company whose patent rights are being violated, a company looking to extend your intellectual property portfolio or you require a patent litigator, our lawyers can add experience and business judgment to your team.

Attorney Katie Horvath: "Traverse Legal's patent attorneys know patent law and pride themselves on advanced litigation techniques which are both cost-effective and budget oriented. When it comes to patent infringement, threat letters, litigation, assessment & prosecution, Traverse Legal has you covered.  When it comes to client service, there are very few firms that can match our capabilities. Because we are a boutique litigation law firm, we know how to strategically and efficiently accomplish our client's patent and idea protection goals." View Katie's of-counsel profile here.

If you have a patent issue, or wish to register a patent, you may contact one of our patent attorneys for a free evaluation or call 866.936.7447 (International Toll Free).

Microsoft Challenges Invalidity “Clear and Convincing” Standard

In an en banc petition to the United States Court of Appeals for the Federal Circuit, Microsoft challenges the “clear and convincing” standard of proof required to render a patent invalid.

It is black letter law in the field of patents that once a patent is issued, it is presumed to be valid and “clear and convincing” evidence is required to overturn the presumption of validity to prove a patent invalid.  In its petition in the Lucent v. Gateway litigation originating in the United States District Court for the Southern District of California, Microsoft argues that the standard of proof for an invalidity defense should be “preponderance of the evidence” for prior art defenses where the prior art had not been before the U.S.P.T.O. examiner during prosecution of the patent-in-suit.

USPTO Issues Interim Examination Guidelines for 35 U.S.C. §101 Statutory Subject Matter

Pending U.S. Supreme Court review of the Federal Circuit’s Bilski decision and recognizing that the state of the law in this area is in flux, the USPTO has issued instructions for its examiners to use in determining patentability under 35 U.S.C. §101.   The guidelines state that §101 patentability includes two requirements: (1) subject matter; and (2) utility.

Patent Indemnity under the United Nations Convention on Contracts for the International Sale of Goods (“CISG”) Treaty

If you have been sued for patent infringement and the accusations are based upon goods that you purchased from an entity located in a different country, the CISG may be a vehicle to seek indemnity for patent damages.

Article 1 of the United Nations Convention on Contracts for the International Sale of Goods (“CISG”) treaty provides that it “applies to contracts of sale of goods between parties whose places of business are in different States” when the states are contracting states under the CISG.  Article 10 of the CISG provides that “if a party has more than one place of business, the place of business is that which has the closest relationship to the contract and its performance.

Active Inducement of Patent Infringement

35 U.S.C. 271(b) provides:

Whoever actively induces infringement of a patent shall be liable as an infringer.

Specific Intent

Liability for active inducement of infringement requires specific intent – that the inducer’s actions induced direct infringement and that he knew or should have known his actions would induce actual infringements.  DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293, 1304 (Fed. Cir. 2006) (en banc), citing, Manville Sales Corp. v. Paramount Systems, Inc., 917 F.2d 544, 554 (Fed. Cir. 1990); see also Cross Medical Products, Inc. v. Medtronic Sonfamor Danek, Inc., 424 F.3d 1293, 1312 (Fed. Cir. 2005) (“that the alleged infringer knowingly induced infringement and possessed specific intent to encourage another’s infringement”)

Contributory Infringement of Patent Rights

35 U.S.C. § 271(c) provides:

Whoever offers to sell or sells within the United States or imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringing use, shall be liable as a contributory infringer.

How do you determine if someone is infringing a patent?

Patent infringement is a two step legal analysis.  First, the claims of the patent are construed to determine, as a matter of law, what they mean.  Claim construction, or the meaning of the patent claims, is generally determined by review of intrinsic evidence pertaining to the patent.  Intrinsic evidence includes the patent itself (claims, specification, drawings), the file history comprising records of the prosecution of the patent before the U.S.P.T.O, prior art made of record during the prosecution, and file history records of any related patent applications claiming common priority to the patent at issue.  If claim meaning cannot be determined by the intrinsic evidence, extrinsic evidence may be considered.  Extrinsic evidence may include technical dictionaries or treatises contemporary in time to the priority date of the patent and relevant to the particular field or industry, industry use, prior art patents, evidence of what one of ordinary skill in the relevant field knew and/or inventor or expert testimony. 

Provisional Patent Application

Q. What is a provisional patent? A.  There isn’t a provisional patent.

Rather, one type of application for a patent that may be filed with the USPTO is a provisional patent application.  Generally speaking, a provisional patent application preserves a filing/priority date and stays alive for one year, after which the applicant may elect to convert it to a regular utility patent application, or allow the provisional application to die.  Unlike regular utility patent applications, the USPTO does not examine the provisional application.  It merely sits on the PTO shelf.  If the applicant elects to convert it to a utility case, then regular PTO examination of the case proceeds.  If the applicant elects to discontinue patenting efforts for the subject matter, the provisional application merely expires and the file remains unpublished.

Patent Litigation – an Investment Opportunity

Investors seeking new investment choices are turning to IP.  VC’s and others having made a business out of investing in start-up companies relying upon intellectual property to support new emerging technologies and business plans, report that IP is still hot as a lucrative investment choice.  Technologies such as green energy or industries likely to be receiving bail-out funds are examples of IP areas viewed as possible hot investment options.  In addition, given that many traditional investments are less desirable in the current economy, investors not previously having turned to patent assets, are opening their eyes to new possibilities, including funding patent litigation.  Patent litigation investment opportunities may include funding an individual patent litigation for a return based upon recovered damages, or establishing a fund to support a handful of cases, and in that sense creating a more diversified portfolio to spread investment risk.  Teamed with patent litigation counsel performing due diligence on patents and infringement cases, some investors are carefully selecting patent litigations in which to invest.

Patent Protection Decreasing During Tough Economic Times

It is no surprise that applying for and obtaining a patent is an expensive endeavor.  It is no surprise that enforcing a patent through litigation or a licensing program is generally an even more expensive endeavor.  Traditionally during tough economic times, patent enforcement efforts pick up, as companies look to their IP portfolios as revenue producing assets, apart from normal product or service profits.  But is that happening today?

Patent Litigation: Congress Steps the USPTO Further Into Patent Litigation Strategy Considerations

The Patent Reform Act of 2009 (Senate Bill, House Bill), recently unveiled by Congress, includes new provisions that could be used as patent litigation tools.  Patent infringement lawsuits are brought before United States federal courts, and the United States Patent and Trademark Office (USPTO) does not adjudicate patent infringement.  The USPTO serves as the gatekeeper for deciding whether to issue patents and provides out of court means for determining some validity issues, including inventorship issues via patent interferences, post patent grant prior art validity issues via patent reexamination and post patent grant claim scope issues via reissue.  The 2009 Patent Reform Act includes a post-grant review proposal that allows a petitioner to challenge validity of a newly issued patent in a cancellation proceeding.

Patent Attorney Woes?

The USPTO is allowing a fewer percentage of patents than it did 10 years ago.  In 1998, the USPTO allowance rate was over 70%.  Yet in 2008, the USPTO allowance rate was less than 45%.  Why is it harder to get a patent today?

Patent Attorney Pitfalls

Whether attacking patent claims as part of building defenses to allegations of infringement, or trying to procure patent protection for technology, our patent attorneys are on the outlook for pitfalls in patent claim language.

Litigating Patents Post In Re Bilski

The Federal Circuit opinion, In re Bilski, provides new territory for attacking process claims in patent litigation.

Since the Federal Circuit proclaimed in State State Bank that business methods are not per se unpatentable, patentability under 35 U.S.C. §101 has been a hot topic.  Financial sector business method applications, such as the application at issue in In re Bilski, as well as applications concerning Internet business methods, computer software, electric signals, and other new technologies have pressed the Section 101 boundaries at the Unites States Patent and Trademark Office (USPTO) and the Federal Circuit.

Patent Attorneys as Specialists

Patent law is one of the few areas of law recognized as a specialty.  Though attorneys in other areas of law may limit their practices to a particular field (such as real estate law, family law, etc.), those practice areas are generally not recognized as specialties.  Under ethical rules governing attorney conduct in most states, patent attorneys may hold themselves out to the public as specialists.  Patent attorneys usually are registered to practice before the United States Patent and Trademark Office (USPTO).  This registration allows the attorney to file and prosecute patent applications before the USPTO on behalf of clients.  Patent attorneys may also litigate patent infringement, patent validity and/or patent enforceability disputes in court.  Patent litigations are generally federal court cases.  Patent attorneys may also typically prepare and negotiate patent licenses or other contracts involving patent rights, perform patent due diligence investigations, analyze patent portfolios, give advice for developing patenting programs, and/or prepare patent infringement and/or patent validity analyses and opinions.

Patent and Trade Secret Attorneys: Patent v. Trade Secret

Patents grant a limited monopoly for a term of generally 20 years from the filing date, giving the patent holder the right to exclude others from making, using, offering for sale or selling the invention in the United States, or importing the invention into the United States.  In exchange for this limited monopoly, the patent applicant must describe the details of the invention in the patent, which becomes a public document.  Thus, after the 20 year term expires, the public is free to practice what was formerly protected by the patent without incurring liability for infringing that patent.  (Note: it is possible that practicing what the patent describes could still infringe another non-expired patent, so one is not necessarily free from patent infringement by virtue of one patent expiring.)  One of the requirements of patentability is that the applicant must disclose the “best mode” known for carrying out the invention.  I.e. – she cannot leave the secret sauce out of the patent.  Failure to comply with this statutory requirement renders the patent invalid.

Patent Prosecution and Litigation Attorneys: Patent Due Diligence in a Corporate Acquisition

When valuating corporate assets during corporate acquisition, the patent intellectual property assets should not be ignored.  A patent portfolio may prove to be a revenue source by generating licensing fees, or become money-making if patent infringement is proven for monetary damages.  Similarly, a patent may be a stand alone asset that another entity seeks to purchase for freedom to practice or other reasons.

Patent Attorney Questions: What Is Patent Due Diligence?

Patent due diligence is an investigation about a patent.  Due diligence is often done prior to patent acquisition, so that the potential purchaser knows more about the asset that she is acquiring.  Due diligence investigations may reveal patent validity problems, patent enforceability problems, or patent prosecution events that impact patent claim scope, which in turn may impact patent infringement.  Generally, in a due diligence investigation, a patent professional will review the patent and patent file wrapper documenting prosecution of the patent application before the United States Patent and Trademark Office (USPTO).  Due diligence investigations may include analysis of information concerning the patent owner, named inventors, technical field or market.  Because every patent is unique, patent due diligence should be handled with an individualized approach on a patent-by-patent or portfolio-by-portfolio basis.  Rather than purchasing a patent and finding out later on that the patent claims are worthless, due diligence is a tool that may be used to learn about a patent upfront.

Patent Enforcement Attorneys: How Does a Patent Owner Enforce a Patent?

A patent owner may enforce his patent rights in a federal court proceeding.  Patent infringement disputes are not handled by the United States Patent and Trademark Office (USPTO).  Generally, a patent owner may initiate a law suit in federal court seeking monetary damages and injunctive relief to prevent an accused infringer from infringing his patent.  Because patent disputes arising under the Patent Laws are questions of federal law, federal courts and not state courts are the appropriate forum for resolving patent disputes.

Patent Attorney Discussion: What Rights Does a U.S. Patent Give to a Patent Holder?

Under United States law, a patent gives the patent owner the right to exclude others from making, using, offering for sale or selling the invention in the United States, or importing the invention into the United States.  Generally, a patent holder may seek monetary damages and sometimes injunctive relief in a federal court proceeding for patent infringement.  However, a patent does not give the patent holder the right to make, use, offer for sale, sell or import what his patent claims.  This may seem counter-intuitive – the patent holder does not necessarily have freedom to practice what his patent claims.  It is possible that practicing what the patent claims could infringe a different patent, such as a blocking patent.  Thus, the patent laws grant prevention rights but not proactive rights– to exclude others from practicing what the patent claims.

Patent Attorneys: Inequitable Conduct Renders a Patent Unenforceable

During prosecution of a patent application, the patent applicant has a Duty of Candor to the United States Patent and Trademark Office (USPTO), requiring the applicant to formally inform the USPTO of information known by the applicant that is material to patentability of the claimed subject matter in her application.  The Duty of Candor extends to those involved in the filing and prosecution of the patent application, including the named inventors, patent assignee and the attorneys or agents representing the applicant.  Failure to include material prior art in an Information Disclosure Statement to the USPTO may constitute inequitable conduct and render a patent unenforceable.

Patent Attorney Discusses the Difference Between Patent Validity and Patent enforceability?

Patent validity and patent enforceability are often confused.  Patent validity refers to whether the patent meets the statutory requirements for patentability, enumerated in the Patent Laws, 35 U.S.C. § 101 et seq.  The Patent Laws specify the subject matter for which a patent may be obtained and the conditions for patentability.  For example, to be patentable, a claimed invention must be useful, novel and not obvious.  If claimed subject matter fails to meet any of the requirements for patentability, the patent is not valid.

Patent Attorneys Handling Patent Prosecution: How Can An Issued Patent be Invalid?

An issued patent is presumed to be valid.  The United States Patent and Trademark Office (USPTO) reviews a patent application for compliance with the statutory requirements of patentability when determining whether to allow the patent.  However, sometimes a patent issues that is later determined invalid, such as by a court during patent litigation.  For example, if during patent litigation, new prior art is uncovered that had not been considered by the USPTO during prosecution of that patent application, a court may determine that the patent is not valid in light of the new prior art.  Prior art may be a patent, publication, public use or offer for sale of the claimed subject matter that dated before the invention date of the subject matter claimed in the patent.

Specific statutory requirements of patentability include 35 U.S.C. §101 et seq.

Patent Infringement Attorneys: Patent Infringement Defenses and Counterclaims

When faced with allegations of patent infringement, an accused infringer may raise various defenses recognized by the Patent Laws, 35 U.S.C. § 282.  First, an accused infringer may raise non-infringement as a defense – arguing that the accused product does not meet the language of the patent claim(s) at issue.  Patent invalidity is another defense recognized by the Patent Laws - that the patent does not meet the statutory criteria for patentability set out in 35 U.S.C. §101 et seq.  Patent unenforceability may be a further defense in a patent suit – that the patent is not enforceable due to equitable reasons, such as inequitable conduct during prosecution of the patent.  Defenses in patent cases are fact specific, depending upon the particular patent-in-suit, accused device, pre-suit actions of the patent holder and pre-suit interactions between the parties.  Other defenses or counterclaims sometimes raised in patent infringement litigation may include patent misuse, unclean hands, estoppel, laches, Walker Process antitrust claim, or procedural defenses based upon the pleadings.

Patent Enforcement Attorney Discusses the Difference between Patent Infringement vs. Patent Invalidity

Patent infringement is the unauthorized making, using, offering for sale, or selling a patented invention within the United States, or importing a patented invention into the United States.  The patent claims determine the scope of what the patent covers.  Patent infringement is a two step inquiry: (1) what do the patent claims mean; and (2) comparison of the patent claims to the accused device.  The meaning of the patent claims is determined by the court in a claim construction or Markman proceeding.  Then the construed claims are compared to the accused device to determine whether the accused product infringes the patent.  Infringement occurs when every claim limitation of a patent claim is met literally, or by equivalents, by the accused device.

Attorneys Handling Patent Portfolio Management in Times of Economic Crises

Even a year ago, budgets were bigger for pursuing patent protection for technologies.  In the face of current economic crises, organizations are using a more critical eye to scrutinize all areas of corporate expenses, including resources allocated for building a patent portfolio.  Companies with a long term view that recognizes patents as assets, rather than expenses, may have greater tolerance for budgeting money towards IP acquisition.  But, the bottom line is that most of America is cutting back, and as a result, faced with difficult trade-off decisions.