Infringement and Validity Opinions – Why They are Important to You

You’re involved in patent litigation. I’m Rich Beem. I’m a patent attorney in Chicago. One thing you need to know - you need to have - in a patent infringement situation, even when there’s an allegation of patent infringement or an allegation that’s about to be made, is to have a good assessment. To have a good opinion of patent counsel, as to the merits of the case. For an infringement case, it is necessary that at least one claim of a patent should read on – that is cover -the accused product or the accused method. If there’s one to one correspondence between the claim elements and the accused product, that’s in infringement. And that together with the presumption of validity is sufficient to bring a charge of patent infringement. It is sufficient to bring a complaint for patent infringement in district court. It satisfies the Rule 11 requirement. That’s Rule 11 of the federal rules of civil procedure - that there be an investigation and a determination that there’s a reasonable basis that in fact and law for filing the complaint. Now, for someone who is accused of patent infringement, an opinion can be even more important. And the reason why is because what’s even worse than a finding of infringement is a finding of willful infringement. There is a duty under the patent laws of the United States for a party accused of patent infringement to exercise due care. What due care means is that the party accused of patent infringement needs to look at the patent and have a patent attorney look at it, and determine whether that party is infringing that patent? And if they are, they need to stop, or they need to find a way to design around that patent. And design around is an important and valuable part of that process. On the other hand, if the accused infringer determines that they are not infringing the patent, then they have a good faith basis to say no we are not infringing, and even if you sue us we can file an answer that denies infringement and have a good faith basis for doing so, and avoid any potential liability for troubled damages and attorney fees. As well as avoiding Rule 11 sanctions. The other reason for an assessment and for an opinion is to make sure there’s a good case on the merits. Because the kind of case you want to bring in court, the kind of case you want to defend in court – you want to make sure it’s a good case. So, why is it important that you have an early assessment and opinion as to the merits of the patent infringement case or the denial of patent infringement? It’s because these are big ticket items, they can make or break a company. And you, as the decision maker in the patent infringement matter need to have a blueprint to describe where things are going. I’m Rich Beem. I do patent infringement litigation. It’s what I do every day, day in and day out – I’ve been doing it for 25 years. When you have a patent infringement matter, call me. I’m at 312-201-0011. Thank you!