Lawyer Monthly - September 2023

litigation. In essence, an IPR is a mini trial on invalidity conducted before a panel of patent experts at the USPTO. It is attractive as a less expensive alternative to litigation. Critically, invalidity is adjudged under the preponderance of evidence standard, which is far less stringent than the clear and convincing standard required in a patent litigation. If an opinion of noninfringement or invalidity is reached in the investigation, the strength of the opinion may dictate whether a company moves forward. If moving forward, a written opinion can be prepared and issued to the client respecting the lack of liability from making and selling the product. An opinion letter provides a business with guidance on moving forward not only with the specific product but also in the future for improved generations of that product. Ideally, the business always has a well-thought planning tool it can rely on to explain how it can move forward to best avoid an expensive and disruptive patent litigation. An opinion letter also serves as the initial road map for a litigation brought against an accused infringer by a patent owner. Moreover, the opinion letter is the best evidence of a good faith belief that it is not treading on anyone’s intellectual property. Such evidence can be used to rebut a charge of willfulness by a patent owner seeking treble damages should it prove that the infringement, if found over the defences, was a willful act by the infringer. Prior to reducing an opinion to writing, the evaluation of the strength of the positions underlying an opinion may guide a decision to redesign a product or process to establish or improve a defence of noninfringement. Here, it is all about creativity and socialising the efforts so ideas for a redesign are generated and pressure tested. The right patent attorney can be invaluable in achieving a successful redesign to avoid infringement. Even more so, redesign efforts often lead to a more marketable product. Forced to creatively solve the problem of infringement, designers often find solutions that improve upon the original design. Significantly, that improvement may very well be patentable so that the product enjoys exclusivity, preventing others from making, using or selling a competitive product that uses the redesign. Thus, robust diligence efforts may result in more than developing solid defences to an assertion of infringement. Value can be realised when a redesign results in a superior product that will perform better in the marketplace. Robust freedom to operate programs establish a culture within a company that maintains the focus of management and others to consider third-party rights prior to making moves in the marketplace that can be extremely disruptive and even detrimental to a business. An investment in such a program facilitates prophylactic steps to avoid or minimise litigation and a byproduct may be an improved product. Finally, as an overall return on investment, regular investigations provide critical knowledge of third-party patent filings in the industry, and companies gain a keen understanding of the technology development within the industry. EXPERT INSIGHT 57 About Keith Gilman Keith Gilman is a leading intellectual property counsellor and managing partner of Lerner David. Involved in all facets of the firm’s IP practice, he counsels clients on maximising the value of their IP assets and advises on risks associated with new product designs and acquisitions. With an extensive background in litigation, licensing and due diligence, Keith was also an original Master of the John J. Gibbons Inn of Court, the first IP Inn of Court of its kind in New Jersey involving attorneys and judges, which is now considered the preeminent Inn of Court for federal practice in New Jersey. About Lerner David LLP Lerner David is a boutique law firm that specialises solely in providing intellectual property counsel. Established in 1969, the firm’s expert team of counsellors boast extensive experience and broad international resources, and strives to obtain peerless results for their corporate clients both in court and before the United States Patent and Trademark Office. Contact Keith Gilman Managing Partner Lerner David LLP 20 Commerce Drive, Cranford, New Jersey 07016, USA Tel: +1 908-518-6308 E:

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