safet metjahic's War Story

LEVERAGING PATENT OFFICE EXPERIENCE IN LITIGATION

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A closely-held technology company with a long history of litigation initiated more than a dozen patent infringement lawsuits in United States district courts, asserting three U.S. patents against each of the defendants.  The client, a leader in its industry, was named as defendant in one of the lawsuits.  The lawsuit alleged that a number of the client’s popular product lines of LED lighting solutions infringed the asserted patents.  While some defendants continued to litigate, and others settled for undisclosed amounts, I was able to persuade the plaintiff to voluntarily dismiss its lawsuit against the client, without ever having to file an answer.

After an initial consultation with the client, I reviewed the asserted patents and quickly realized that the patent claims were susceptible to a validity challenge.  Importantly, I also recognized that the prosecution histories of the patent families of all three asserted patents were likely to have facts that I could leverage in the litigation.  Based on my more than sixteen years of experience as a master-level patent examiner, primary examiner and supervisory patent examiner at the U.S. Patent Office, I was able to hone in on those portions of the prosecution histories that were likely to provide evidence that would render the patents vulnerable to validity and enforceability challenges.  In my review of the patent files, I found clear evidence of fraud along with prior art that would render the patent claims invalid.

I analyzed the file histories of all three patents, along with the file histories of other patents and patent applications by the same inventors.  In the file history of an abandoned patent application that was filed on the same day as one of the patents-in-suit, I found an anticipatory reference that was used to reject claims very similar to those in the patents-in-suit.  The prosecution history of the abandoned application suggested that the patentee might have abandoned the application to avoid the rejection, and at the same time pursue similar claims in the patent-in-suit application that was filed on the same day.  The patent-in-suit application issued without the patentee ever disclosing the anticipatory reference to the examiner of the application. 

After completing my review of the prosecution histories and finding clear evidence of fraud, together with prior art that would invalidate claims in the patents-in-suit, I advised the client against settling the case, and instead recommended that we reach out to plaintiff’s counsel and share the fruits of the investigation.  After hearing evidence of fraud perpetrated on the U.S. Patent Office, as well as the existence of an anticipatory reference that would invalidate claims in the patents-in-suit, Plaintiff voluntarily dismissed the action.