Before You File the Patent Lawsuit: A Checklist for Your Prefiling Investigation
By Jennifer L. Dzwonczyk
A client is considering filing a complaint for patent infringement. The client (or perhaps a partner) comes to you and asks you to file a lawsuit. But there’s much more behind the scenes than just filing a complaint. Here are some important issues to consider before launching (or even preparing) that complaint:
- purposes of enforcing the patent(s):
- to obtain an injunction;
- to obtain a settlement, license, and/or money;
- to preserve the client’s market position;
- to preserve the client’s patent rights;
- to enforce obligations under an existing agreement;
- who can bring the suit (standing);
- anticipated costs and likely timeline;
- location of suit (forum);
- identification of potential defendant(s);
- possible counterclaims;
- past communications between your client and potential defendant(s) (including previous litigation or licenses);
- mediation or other alternative dispute resolution;
- substantive assessment of patent strength and infringement issues; and
- potential reexamination.
Clients often have widely varying reasons for filing a complaint; be sure to understand them before preparing a complaint.
Before filing, you should:
- carefully check the patent’s status (maintenance fees, ownership, chain of title, assignments, proper claim to priority, terminal and/or statutory disclaimers);
- check the diligence file history;
- check for foreign patents/litigation;
- consider compliance with 35 U.S.C. § 287, if applicable;
- consider the validity of:
- any new prior art,
- reexamination risk,
- inventorship issues;
- consider prior art searching;
- consider potential unenforceability counterclaims, including inequitable conduct, misuse, and other equitable defenses such as laches;
- consider potential antitrust counterclaims;
- consider filing a preliminary injunction motion if the client is severely harmed;
- consider infringement issues, including claim construction;
- consider whether more information is needed;
- obtain defendant’s product(s) if possible;
- consider electronic discovery issues; and
- if manufacturing is offshore, consider an ITC § 337 action.
Another consideration is whether to send a cease-and-desist letter to the potential defendant before (or in lieu of) filing a lawsuit. Such letters may have a significant impact, as they may give rise to an actual controversy and potentially trigger the filing of a declaratory judgment action; on the other hand, the letters may bring a company to the settlement table.
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.