4 ms·

Am I understanding correctly that you (your company) found prior art and chose to settle instead of presenting it in court and killing the patent? Any idea why?

by franga2000 5y ago

Am I understanding correctly that you (your company) found prior art and chose to settle instead of presenting it in court and killing the patent? Any idea why? Isn't there some law that automatically awards you legal fees in the case of a frivolous lawsuit?

AlbertCory 5y ago
You don't present it "to court" because that might be decided by a jury of unsophisticated people. You file an Inter Partes Review, which goes to the Patent Trial and Appeal Board, and is cheaper (note I didn't say "cheap"). The U.S. doesn't have a "loser pays" model like other countries. You can file for attorney's fees, but the barriers are higher.
- freejazz 5y ago
  It's called an invalidity counterclaim.
  - AlbertCory 5y ago
    ??? what are you disputing here? IPRs, or defending against an infringement suit, or what?
    - burnished 5y ago
      Doesn't look like a dispute? I think they were trying to supply you with a phrase that slipped your mind.
      - AlbertCory 5y ago
        the question is the antecedent basis of "it"
        freejazz 5y ago
        You don't need to get an IPR, you just make an invalidity counterclaim. IPRs may or may not be desirable for a number of reasons.
        AlbertCory 5y ago
        TIL. We're talking about US law, right? I've never heard the term "invalidity counterclaim" and I was in Google Patent Litigation where suits come in constantly. IPRs were pretty standard. Maybe the lawyers did use it and I just never heard it. If something was going to trial, then "invalidity" was one of the possible defenses, as was "non-infringement." Who are you making this claim TO? The court? The PTO?
freejazz 5y ago
Finding prior art to invalidate a patent doesn't make the plaintiff's lawsuit frivolous, so they probably wouldn't be awarded atty's fees. If the court didn't invalidate the patent, then you are now stuck in a serious litigation where the plaintiff has no reason to settle.
NicoJuicy 5y ago
I can ask the lawyer, if you want and if you can wait a day ( or more) to see the reply. It happened during a very busy time for me and i wasn't involved, since it was a story that was shared during the weekly "covid update" that shares all the company news. It could be that they also filed a counter lawsuit to invalidate it. I think the main point was to defend successfully and not to attack/piss some big trolls off.

AlbertCory 5y ago

You don't present it "to court" because that might be decided by a jury of unsophisticated people. You file an Inter Partes Review, which goes to the Patent Trial and Appeal Board, and is cheaper (note I didn't say "cheap"). The U.S. doesn't have a "loser pays" model like other countries. You can file for attorney's fees, but the barriers are higher.

freejazz 5y ago
It's called an invalidity counterclaim.
- AlbertCory 5y ago
  ??? what are you disputing here? IPRs, or defending against an infringement suit, or what?
  - burnished 5y ago
    Doesn't look like a dispute? I think they were trying to supply you with a phrase that slipped your mind.
    - AlbertCory 5y ago
      the question is the antecedent basis of "it"
      - freejazz 5y ago
        You don't need to get an IPR, you just make an invalidity counterclaim. IPRs may or may not be desirable for a number of reasons.
        AlbertCory 5y ago
        TIL. We're talking about US law, right? I've never heard the term "invalidity counterclaim" and I was in Google Patent Litigation where suits come in constantly. IPRs were pretty standard. Maybe the lawyers did use it and I just never heard it. If something was going to trial, then "invalidity" was one of the possible defenses, as was "non-infringement." Who are you making this claim TO? The court? The PTO?

freejazz 5y ago

Finding prior art to invalidate a patent doesn't make the plaintiff's lawsuit frivolous, so they probably wouldn't be awarded atty's fees. If the court didn't invalidate the patent, then you are now stuck in a serious litigation where the plaintiff has no reason to settle.

NicoJuicy 5y ago

I can ask the lawyer, if you want and if you can wait a day ( or more) to see the reply. It happened during a very busy time for me and i wasn't involved, since it was a story that was shared during the weekly "covid update" that shares all the company news. It could be that they also filed a counter lawsuit to invalidate it. I think the main point was to defend successfully and not to attack/piss some big trolls off.