In a competitive business environment, claims of infringement pose considerable risks to defendants. While some allegations are unfounded and brought by patent trolls, others may have merit. Distinguishing between the two, and taking appropriate and decisive action to respond to an infringement claim, is a matter that demands the immediate attention of attorneys who have the insight and experience to provide the counsel that minimizes risks.
With extensive experience handling infringement claims and intellectual property disputes, our Houston-based lawyers work closely with parties who have been threatened over alleged creation, use, or sale of intellectual property, including patents, trademarks, and copyrights. The insight we’ve accumulated representing both parties in infringement claims enables us to thoroughly understand the laws governing their use and the means with which to pursue positive resolutions.
Defense Against Patent Infringement Allegations
Patent owners have the burden of proving infringement. Whether allegations are brought by legitimate parties or patent trolls who buy the rights to existing or latent patents in order to extort ransoms, infringement claims and litigation can be costly and time-consuming. As such, swift and meticulous pre-trial work – including discovery and investigation – is critical to not only evaluating the defendant’s intent and merits of their allegations (including whether there is in fact a relevant patent), but also practical considerations and appropriate response strategies.
Defending against patent infringement allegations is tailored to the individual facts of a case and the various stages of action involved. This includes:
- Challenging Patent Validity – Patent validity can be challenged if the patent has lapsed or if it is invalid for failing to comply with conditions established by federal law. This may take the form of motions to dismiss in cases involving patents of abstract concepts (which are not entitled to protection) or patents tied to a machine or apparatus or which transform something into a different state or object (machine or transformation test). Challenges made in Invalidity Contentions (within 30 to 60 days) may also allege a lack of legal protection due to un-patentable subject matter, obviousness, prior art, and indefiniteness, among others.
- Challenging Infringement Contentions – Infringement claims must make specific allegations as part of Preliminary Infringement Contentions (PICs). Attacking infringement contentions may involve proving a defendant’s failure to comply with procedural rules or applicable legal standards, which may result in a judge striking the allegations.
- Claims Construction – Defending against patent infringement claims may require preparation and effective arguments in pre-trial Markman hearings, during which judges examine relevant evidence to determine appropriate meanings of terms and concepts in a claim. Arguing narrow or broad interpretation of these claims is critical to construction that aligns with the best interests of clients and their defense.
- Arguing Non-Infringement – Parties facing infringement allegations can move for summary judgment of non-infringement by showing there is no genuine issue of material fact, and that they are therefore entitled to a judgment and case dismissal. This strategy requires argument over the plaintiff’s absence of evidence.
In addition to these defense strategies, tailored responses can also be made in situations involving unique issues. This includes cases where customers of our clients are sued for infringement (such in cases of licensing) and indemnification from liability secured through a declaratory judgement and patent invalidity. It may also involve appropriate responses against patent trolls, or non-practicing entities which exist solely to levy threats.
Trademark Infringement Defenses
Trademark infringement claims seek injunctive relief and damages from defendants alleged to have likely caused confusion in the marketplace as a result of using recognizable (or similar incarnations of) trademarks that connote a unique product, brand, or service – especially when combined with other similarities involving goods or services, purchasing channels, and more. Because defending against threats of trademark litigation can drain valuable resources, as well as threaten brand and reputation, timely and decisive action and proven legal counsel are so critical.
Just as when handling patent infringement allegations, an individualized approach, due diligence, and preparation are vital when determining appropriate actions when responding to trademark infringement threats and defending against claims, such as:
- Challenging Likelihood of Confusion – Trademark infringement allegations can be taken to court when there is a likelihood of confusion, which is why claims must be evaluated in order to raise arguments that risks for consumer or corporate confusion is low (such as when businesses operate in distinctly different industries or other states).
- Fair Use / Collateral Use – The fair use defense may be raised against trademark infringement claims, provided that claimed parodies (artistic and editorial) were not used for commercial purposes. It is also a viable defense in cases of alleged copyright infringement. Collateral use may also protect defendants who use trademarks as part of larger project or product, provided its use does not deceive consumers.
- Prior Use – Prior use of a trademark before its use by the claimant, in respect to particularly territory, affords the right to use design, words, or combinations regardless of trademark.
- Doctrine of Laches – The doctrine of laches refers to a claimant’s unreasonable delay in bringing a claim. An affirmative defense (or justifiable excuse), it asserts the claim was not brought quickly enough and is now out of time.
- Estoppel – The doctrine of estoppel refers to a claimant’s tacit submission to the use of a trademark and consists of elements related to the defendant’s position of authority, the plaintiff’s assumed submission, and harm suffered as a direct result. An example may include a claimant’s failure to file a timely objection with the U.S. Patent and Trademark Office (USPTO).
- Unclean Hands – This defense may be raised when a claimant otherwise entitled to relief acted with purposeful ill-intent in regard to infringement allegations, such as registering a similar trademark in order to cause confusion.
- Congestible Registration – This may be an appropriate defense in cases contesting exclusive use of a new trademark (one that has been in use for less than 5 years).
If you are facing allegations over infringement of a patent, trademark, or copyright, taking immediate action to investigate where they are coming from, evaluate their underlying merits, and determine your available options for response and defense is one of the most important things you can do to reduce exposure to risks and litigation, protect your resources, and secure the most positive outcome possible. Our patent and trademark infringement defense attorneys at Hendershot Cowart P.C. are readily available to discuss your case, and proudly serve clients across Texas and the U.S. Call (713) 909-7323 to request an initial consultation.
