Patent Threats: Initial Response Strategies
Evaluating Patent Defenses When Faced With a Notice Letter or Complaint
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will provide guidance for IP counsel to identify inherent defects in a patent, find prior art and potential inequitable conduct without a “scorched earth” search, and formulate other defenses using time and cost-effective methods.
- Ascertaining the threat
- The patent holder and its counsel
- The judge and forum
- Possibility of an injunction
- Products potentially at risk
- Identifying inherent defects in the patent
- Maintenance fees
- Small entity status
- Written description
- Finding prior art and evidence of inequitable conduct
- Prior art that inventors or prosecuting attorney knew about
- Other sources of easily-found prior art
- Identifying other defenses
- Implied licenses/ exhaustion
The panel will review these and other key questions:
- How can counsel quickly gather ammunition for use in a pre-litigation conversation with a patent holder who has sent a patent notice letter?
- Once a lawsuit has been filed, which defenses are “low-hanging fruit” that can be formulated and supported with evidence quickly and cheaply?
- What strategies can counsel employ to develop strong defenses in a short amount of time?
Following the speaker presentations, you'll have an opportunity to get answers to your specific questions during the interactive Q&A.
Brent K. Yamashita
DLA Piper US
He is a patent litigator, with experience in computer hardware and software, hard disk drive, optical drive, storage... | Read More
He is a patent litigator, with experience in computer hardware and software, hard disk drive, optical drive, storage systems, communication and mobile device technologies. He also prepares and prosecutes patents and reexamination petitions and regularly advises companies on IP issues.Close
Dr. Marc D. Peters
Morrison & Foerster
He focuses on representing clients in litigation and counseling involving electronics, semiconductor, and... | Read More
He focuses on representing clients in litigation and counseling involving electronics, semiconductor, and computer-related technologies. His experience also includes representing clients in a variety of industries and in trade secret, antitrust, copyright, and trademark matters.Close
Director and Associate General Counsel
She is responsible for worldwide Intellectual Property litigation for Logitech Inc. and its affiliated foreign entities... | Read More
She is responsible for worldwide Intellectual Property litigation for Logitech Inc. and its affiliated foreign entities around the world. She is also a collaborator on worldwide patent strategy.Close