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

Conducted on Wednesday, March 30, 2011

Recorded event now available

or call 1-800-926-7926
Course Materials

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.


The first several hours after receiving a notice letter or being served with a complaint are critically important for companies and their counsel. This is the most valuable period to develop good defenses quickly.

Counsel must evaluate the patent threat and determine the most viable defenses and arguments to achieve the client's goals and defeat a patent threat—and quickly gather ammunition for use in a pre-litigation discussion or in drafting an answer to a complaint.

The key to success is understanding the techniques and strategies to improving the position of an accused infringer in a patent case or pre-litigation in a manner that is both time and cost efficient.

Listen as our authoritative panel of patent litigators examines tactics for identifying inherent defects in the patent, finding prior art and potential inequitable conduct without a “scorched earth” search, and formulating other defenses in a cost-effective way. They will provide a practical checklist with steps to take when facing a patent threat.



  1. Ascertaining the threat
    1. The patent holder and its counsel
    2. The judge and forum
    3. Possibility of an injunction
    4. Products potentially at risk
  2. Identifying inherent defects in the patent
    1. Assignments/ownership
    2. Maintenance fees
    3. Small entity status
    4. Written description
    5. Indefiniteness
  3. Finding prior art and evidence of inequitable conduct
    1. Prior art that inventors or prosecuting attorney knew about
    2. Other sources of easily-found prior art
  4. Identifying other defenses
    1. Waiver
    2. Implied licenses/ exhaustion
    3. Laches
    4. Standards


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
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

Dr. Marc D. Peters
Dr. Marc D. Peters

Morrison & Foerster

He focuses on representing clients in litigation and counseling involving electronics, semiconductor, and...  |  Read More

Lisa Launer
Lisa Launer
Director and Associate General Counsel

She is responsible for worldwide Intellectual Property litigation for Logitech Inc. and its affiliated foreign entities...  |  Read More

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