So Your Client Has Been Sued: A Checklist for Dealing With a Patent Complaint Filed Against Your Client
By Jennifer L. Dzwonczyk
A complaint has been filed against your client—now what? Assuming you have the green light from the client or partner from whom you received the assignment, you should immediately consider the following first steps:
- Assess if the complaint has been served on the client; if so, calculate the due date of the answer or other response.
- Check that the patent-in-suit is currently in force, verifying the term, maintenance fees, and that there are no effective disclaimers on the patent-in-suit.
- Ascertain information on the plaintiff, whether a nonpracticing entity (NPE) or competitor.
- Check if the plaintiff or patent-in-suit have been involved in prior patent litigation or reexamination and, if so, obtain the relevant case dockets.
- Obtain the file history for the patent-in-suit.
- If possible, ascertain whether other companies have previously taken a license to the patent-in-suit.
- Obtain the local court rules for the district court, including patent rules if applicable.
- Gather intelligence on the assigned judge, including reviewing the judge’s webpage on the court’s website.
- Prepare a document preservation memo for the client to distribute to its employees.
- Send the complaint, likely a PDF document, to an assistant or word processing department to convert to Word format so that preparing an answer will be easier.
- Review recent Rule 16 orders from the judge to determine a likely schedule.
- Review the judge’s recent opinions in patent infringement cases.
- Reach out to colleagues experienced in this particular court or before the assigned judge.
- Retain local counsel, if needed.
- If it’s a multipatent suit (especially three or more related patents), prepare a chart or other visual aid to present critical information concerning the patents-in-suit.
- Determine if a Rule 12 motion may be appropriate, such as for lack of personal jurisdiction, improper venue, failure to state a claim, or failure to join an indispensable party.
- Determine if a transfer motion may be appropriate.
Jennifer L. Dzwonczyk is a partner in the Intellectual Property Group at Howrey LLP in Washington, DC. Her practice focuses primarily on patent litigation before federal district courts. She is also experienced in patent counseling and prosecution, as well as appellate matters. She can be reached at DZJen@howrey.com
Did you find this checklist helpful? Do you need more information on patent litigation? This checklist is excerpted from The Patent Litigator’s Job: A Survival Guide, which is available at a discount to ABA GP Solo Division members.
The Patent Litigator’s Job: A Survival Guide, by Jennifer L. Dzwonczyk, pp. 7–8, published by the ABA GP/Solo Division. Copyright 2010 © by the American Bar Association.