Sunstein Patent Litigation Strategy

We try cases. Trying cases is a cornerstone of our practice. Just as we deliver the broadest possible protection for our clients’ inventions through adroit prosecution, so too we aggressively safeguard their rights by means of litigation. Many of our professionals are trial lawyers. We can mobilize in support or defense of time-sensitive motions for preliminary injunction, and also wage prolonged contests of the most complex patent matters. We efficiently staff each case and diligently craft a controlling strategy. Some examples of our successes appear in Patent Litigation Cases.

Start with a strategy. As we explain in Sunstein Approach to Litigation, our attorneys devise a long-range game plan from the earliest stages of a suit. We will never merely file a complaint, or answer one, only to take a wait-and-see attitude. A clear strategy is essential for keeping our client’s goals in focus through the myriad events and skirmishes of a patent litigation. Our strategy must be rigorous enough to distinguish between what will and what won’t advance the cause, and nimble enough to seize unexpected opportunities.

Think ahead. Patent cases create a ceaseless demand for creative problem-solving. Before lowering the litigation boom on behalf of a patentee, we make as certain as possible that the patent is forearmed against predictable attacks and defenses. Our patent and trial lawyers will collaborate to draft, reexamine or reissue a patent to provide maximum coverage that can withstand the rigors of litigation. We try to repel foreseeable challenges to the validity of the patent by triple-checking that no action by the client or the inventor renders the patent vulnerable.

Work creatively. Our wins on behalf of our clients are based on the exhaustive amassing of evidence and the often painstaking identification of the clinching argument or defense. We succeeded in invalidating one opponent’s patent by locating a highly obscure Japanese-language reference and showing that it anticipated the patentee’s invention. In another defense, we achieved victory on the rarely successful basis of patent misuse, a doctrine that bars a patent owner from exploiting the advantages of a patent for anticompetitive purposes. By demonstrating that the patentee had tried to restrict its customers’ ability to resell the patented product, we obtained a judgment that the patent could not be enforced against our client.

In a case in which we represented one of several alleged infringers, we advised our client to break from the other defendants who were intent on a joint strategy of positing a broad claim construction that would support invalidating the patent on grounds of obviousness or anticipation. Instead, we advanced a narrow claim construction, based on which we won a judgment that our client’s products did not infringe.

In a case in which pretrial discovery pointed us toward mounting a non-infringement (rather than patent invalidity) defense, we switched our approach at the trial itself when, in his testimony, the inventor attributed far greater breadth to his patent than he had in his pretrial deposition. Rather than impeach him based on his deposition, our cross-examination went toward reinforcing the inventor’s expansive construction of his patent. We successfully used his testimony to invalidate the patent based on obviousness and anticipation.

Leverage our patent expertise. In the year 2012, the America Invents Act established litigation procedures in the United States Patent and Trademark Office (USPTO) in which the validity of patents may be challenged relatively quickly and efficiently. These proceedings include post grant reviews, inter partes reviews and covered business method patent reviews. Our patent and trial attorneys have collaborated in filing numerous of these new post-grant proceedings. Inter partes reviews have been used to obtain a stay of litigation in court, stopping the litigation until a decision is reached by the USPTO on the patentability of the claims. If successful, the inter partes review can terminate or settle the overall litigation between the parties.

Team up with great experts. Vetting potential expert witnesses is a task we approach very seriously. In several cases, we have interviewed tens of candidates, checking their background, examining their publications, and questioning their references closely. Senior members of the trial team meet with the finalists to determine whose personality, communicativeness and other, more indefinable, qualities will connect best with the jury.

The thoroughgoing effort we dedicate to selecting the right expert witness has, we have found, paid for itself in successful outcomes for our clients at trial. Sunstein’s representation of several top universities, and our professional and personal contacts with yet others, provide us with unsurpassed access to the leading lights in numerous technological fields. Verdicts can turn on our chosen expert’s stature, credibility and simple knack for teaching. We could not have achieved many of our successes in patent-infringement trials without the support of our formidable experts.

By way of examples, when our client was accused of infringing a method for the manufacture of specialized carpeting, our successful defense was aided by the trial testimony of one of the world’s foremost authorities on the performance of textile materials in the manufacture process. When we prevailed on another client’s claim that its immunoassay-related patent was infringed by a competitor’s pregnancy test kits, we relied on the report and testimony of an eminent Boston-area professor who had influential publications in the field.

Tell a strong story. Making the client’s case to a jury is the acid test of the trial lawyer’s art. Our firm speaks the language of science and technology, and we count among our attorneys mechanical engineers, aerospace engineers, electrical engineers, biochemists, physicists, and computer scientists. Our challenge is to make sure that the complexity of the technology and the disparate threads of trial testimony do not prevent us from presenting a compelling narrative that prompts the jury to weigh the evidence in a manner beneficial to our cause. We present a clear theme to help jurors give shape to the case.

We always seek out ways to communicate powerfully with the people who make up our juries. Because Americans increasingly expect that information will be offered in visually appealing ways, there is, for better or worse, an entertainment aspect to patent litigation. Our firm uses the latest and most effective trial-presentation software and hardware tools, and teams up with outside graphics experts to help stage our presentation with maximum vividness. We have also used mock juries to help craft our approach in major cases.

Extract maximum value. The value of successful patent litigation to a patent-holder only begins when we help procure a verdict that the defendant infringes. We are equally assiduous in the ensuing phase of litigation—maximizing our client’s recovery of damages. To this end, we dig up every piece of data that can boost the award, sometimes by tracking accused goods internationally. Securing a rich award also requires coordinating the written and oral testimony of top economics experts.

In one litigation, we pursued proceedings before a Hong Kong magistrate to identify the defendant’s sales to a distributor of infringing products that were slated for resale in the United States. Our argument that the defendant had infringed our client’s patent was so powerful that we obtained triple damages, a very rare outcome that was upheld by the Federal Circuit Court of Appeals.

Go get the evidence. Marshalling evidence can present logistical hurdles. In an infringement action against a major international corporation, we assembled a team of translators to extract valuable support for our case from Japanese documents and to help us take the testimony of the many Japanese-speaking witnesses. Adapting to cultural differences, we refined our customary deposition techniques to overcome witnesses’ inclination to provide answers deemed acceptable to the group and to elicit personal testimony instead.

When long-range travel has threatened to drive up discovery costs in any given litigation, we have taken depositions by video conference when we feel they can substitute for face-to-face questioning.

Sheer doggedness is sometimes rewarded. After we were frustrated in obtaining a key statement from an uncooperative foreign witness, whose testimony in his homeland the federal court could not compel, we learned that he was planning a trip to Boston. We printed a photograph of the individual from a German website, and handed it to a constable who was able to recognize, and subpoena, the witness at Logan Airport. We procured the testimony.

Live to fight another day. Litigation is rightly the occasion for rethinking design and sales strategies altogether. Our clients who sell products internationally sometimes face competitors who are determined to use their domestic and foreign patents to slow our clients’ global sales efforts. Even successful litigation defenses can amount to Pyrrhic victories, so we create a plan for averting the expense and distraction of litigation.

Thus, while defending any infringement lawsuit, we can combine our in-house engineering and litigation skills to guide clients in designing their products around competitors’ patents. This is a complex project, in view of the often varying scope of such patents and the need to ensure that a design that avoids U.S. patents also gets around patents issued by other countries where our client does business. We also advise on the differing standards of foreign courts in adjudicating patent disputes. The outcome is freedom to resume global marketing without the inhibiting threat of suit.

By taking this approach, we have steered clients toward relatively inexpensive outcomes. We have experience too in achieving successful results in patent cases through alternative dispute resolution. In one recent example, we obtained through mediation a settlement agreement and consent judgment that provided valuable rights to our client. We secured an acknowledgment of the validity of our client’s patents, favorable terms for assigning them, and the right, if the opposing party defaults in payment, to recover twice the balance then outstanding under the agreement.

Whether our trial lawyers are enforcing patents or defending against allegations of infringement, our extensive patent litigation experience and technical depth enable us to provide maximum protection for our clients’ rights.

If you have any questions about patent litigation or would like to discuss the handling of patent litigation in the context of your business, contact a member of our Litigation Practice Group.