Seed IP partner Jeffrey E. Danley recently authored, "So, You’ve Been Sued. Now What?," which serves as an introduction to patent litigation for small and medium-sized businesses. The article was also published in the August 2022 E-Edition of the King County Bar Bar Bulletin. This is the first of a four-part series focusing on best practices to consider when one is sued for IP infringement.

So, You’ve Been Sued. Now What?

IT HAPPENED. After months or even years of development, countless hours of research and copious amounts of market analysis, you’re hours away from going live. Exciting times; and then – you get served.  A complaint for patent infringement arrives from a company you’ve never heard of alleging that you’re using technology they claim to have invented years ago.  You’re rightfully stunned; you know this happens, obviously, but to you?  You’d been so careful; what could have happened?  

The thing you perhaps didn’t realize (that you’re now learning the hard way) is that the patent owner doesn’t have to prove that you knew about the patent beforehand to bring a claim of infringement.  This means that despite the most deliberate measures taken by you and your business to prevent this possibility, you can still step unknowingly into a patent minefield that results in a lawsuit.

The pressing issue now is not to analyze what actions you could have taken to prevent this mess -- that’s in the past. Now it’s time to prepare for the challenges that lie ahead. You’ve heard that patent litigation can last for years, which is true, but the decisions you make early on can significantly impact the defenses you’re able to raise later, even much later, in the lawsuit. Laying solid legal groundwork now, can pave the way for future success.  

In the following series of articles, I will describe the detailed steps to take when faced with this situation and what to expect along the way.

As you can imagine, the first and most critical step is to contact:

A PATENT ATTORNEY.

Chances are you already have an attorney who assisted you in setting up your business or handled various legal issues that arose in the past. For many types of civil litigation, situations that are relatable to an ordinary person, your attorney would be the right call; a tree falls on a car resulting in damages, house repairs have gone wrong causing flooding, or a store didn’t clean up a spill and a customer slipped. Although the legal questions may be debatable, the situation is one that ordinary people can understand. Not so with patent litigation, because by definition, it involves technology. In addition, a whole host of issues arise in patent lawsuits that don’t occur in other types of civil suits.  In fact, a number of district courts throughout the country have specialized local rules specifically designed to handle patent lawsuits.

In a patent lawsuit, a jury is asked to reach conclusions based on their best understanding of cutting-edge technology. A judge is asked to make important legal decisions based on the same technology.  That may sound simplistic, but it has far-ranging practical consequences.  Imagine trying to explain the inner workings of computer memory or a car engine to someone with no background in the field, engineering, or technology.  If your attorneys can’t understand the technology, chances are they won’t explain it very effectively to the non-technical audience in court, which generally doesn’t lead to a very good outcome. So, now’s not the time for your business attorney to bone-up on the patent law course they took back in law school.  You need experienced attorneys with the right background.  You need the legal experts.

More to the point, you need someone who not only understands the technology but also has the skills to translate that technical knowledge into a compelling legal presentation that ordinary people can comprehend and appreciate. These are the most important skills that an experienced patent litigator can bring to your case.

Experience is crucial as well, providing the attorney with an acute and earned knowledge of case law, procedures, and practices for patent cases.  For example, patent plaintiffs normally have to serve infringement contentions that describe why an accused product infringes their patent, and in turn, patent defendants normally have to serve invalidity contentions explaining why they believe the patent claims are not valid.  In some jurisdictions, these contentions are due very early in the case and can have the effect of locking the parties into the arguments made in the contentions.  An experienced patent litigator will know these deadlines, will be aware of the amount of work that the contentions require, and will ensure that their client’s positions are protected during the early stages of a case.  And because there are significant consequences that can flow from these early case deadlines, it’s also imperative that you choose your attorney and assemble your legal team as quickly as possible.

‍Conclusion: Once you’ve been sued for infringing a patent, you should contact your patent attorney as soon as possible. If you don’t have a patent attorney, ask your regular attorney or other colleagues for recommendations.

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About Jeffrey Danley

Jeff focuses his practice on IP enforcement, defense, and litigation matters across all industry groups. In 1999, he received a Bachelor in Electrical Engineering with Highest Honors from Georgia Institute of Technology, where he focused his studies on communication networks and signal processing. Jeff received an M.S. degree in Electrical Engineering from the University of California at Berkeley in 2001, where he focused his studies and research on communication networks. He was awarded his J.D. from the University of California - Berkeley School of Law (Boalt Hall) in 2005.

Jeff is admitted to the state bars of California and Washington, and is registered to practice before the U.S. Patent and Trademark Office. He is a member of the Washington State Patent Law Association (WSPLA).

Learn more about Jeffrey Danley.

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