When a client embarks in a new commercial direction or learns of a problematic patent, it must make sound business decisions to avoid patent infringement. These decisions can be made only with a thorough knowledge of the landscape of relevant patents and a deep understanding of the breadth, strength and enforceability of any patents that appear to apply to the client’s products. Because of their training and experience, our attorneys are in a unique position to develop this information and help our clients through the decision-making process.
Our attorneys bring the firm’s extensive resources to bear in locating and assessing the significance of patents that could pose a problem for a client’s business. Our deep experience in obtaining patents places them in the best possible position to grasp the extent of any potential infringement threats or the vulnerability of a patent to challenge, either in the United States Patent and Trademark Office or in the Courts. Our attorneys’ technical backgrounds also give them insight into distinctions and defenses that other attorneys might miss.
We assist clients of all sizes in clearing products from a patent standpoint and overcoming or working around any patents that might initially seem to raise a problem. We are routinely asked to clear products before significant business decisions are made or to investigate and opine when a patent is asserted against a client. In cases where disputes arise, our attorneys have successfully testified on behalf of clients as fact and/or expert witnesses.
The following is a small sampling of our attorneys’ experience in the area:
- Conducted massive product and process clearance (i.e., “freedom to operate”) study and formal opinion to support an investment of $150 Million on a novel thin film silicon photovoltaic production line for the world’s leading photovoltaic manufacturer.
- Conducted a similar study and opinion for a copper indium diselenide photovoltaic production line.
- Analyzed and provided extensive non-infringement and/or invalidity opinions on a portfolio of patents directed to methods and systems for controlling electrical current in a highly explosive environment.
- Analyzed and provided in-depth non-infringement and non-enforceability opinions on patents in the intersection-control space. The grounds of potential defense were communicated to the threatening party and the threats were dropped without litigation.
- Analyzed and provided in-depth non-infringement opinions on a portfolio of patents for plumbing valves. The logic of our opinions was used successfully to secure a favorable settlement of existing litigation.
- Conducted clearance studies on two different products for growing tissue in a host animal. The results of these studies were examined and adopted in a major due diligence effort by the law firm of a prospective licensee.
- Conducted a thorough validity analysis of patents to a medical records retention system and testified as an expert by deposition in support of invalidity defense.