Patent Litigation Services

patent_litigation_support

Patent litigation is complex, resource intensive, and a costly exercise. The task is challenging particularly while understanding and interpreting technical terms and construing of claim(s) of the patent. Broadly speaking, the decision to enforce or challenge a patent is a critical task and takes into account goals of the organization.

Our litigation support team adopts a disciplined approach to analyze all aspects of the business, and accordingly advise you on issues faced and opportunities available. We gather deep understanding of complex patent cases for both patent holders and accused infringers in jurisdictions across the globe. We have the technical prowess to handle most complex legal cases. Our team works closely with you and provide effective business solutions to protect your intellectual property and minimize the likelihood of litigation.

We help you in performing various patent searches such as invalidity search, prior art search, claim charts, document review, code analysis, and tear down review and analysis of file wrapper/file history.

Our patent litigation services spectrum includes:

For Plaintiffs:

  • Due diligence support – technical and legal analysis including validity search, inequitable conduct objections, fees, etc.
  • Search for infringement and relevant evidence
  • Reverse engineering and physical testing for features (mobile phones, tablets, e-books, software solutions etc.)
  • Preparing initial claim charts/rule 11 charts
  • Review of relevant documents to improve contentions
  • Review of opposing party reports
  • Search for adverse statements by opposing party in their publications/patents

For Defendants:

  • Non-infringement analysis
  • Invalidity searches covering patent and non-patent literature in English, Japanese, Korean, and Chinese languages
  • File history analysis
  • Review of relevant documents to improve contentions
  • Review of opposing parties reports
  • Search for adverse statements by opposing parties experts
  • Prepare graphics for trials
  • Deposition summarization

Recent Projects

Patent Evaluation

One of the patent brokerage companies needed assistance in patent ranking and bucketing. Through our indigenous method of manual screening and ranking, we assisted the client in the evaluation of patent portfolio and identified patents worth monetizing. For the high value patents, we developed EoU charts that indicated commercial prospects.

 

Asian Language Search

We assisted a leading law firm in conducting native Chinese language searches. The objective was to uncover prior art references in the Asian languages that do not have an English language counterpart. The results identified were carefully screened in English language as well as native languages.

 

Patent Searches

A US-based technology company wanted to develop a patent filing strategy. The objective was to identify white spaces and technology which would enable them to channelize their research and development initiatives. Our team structured a methodical search strategy that comprised of defining apt technology taxonomy, identified and classified patents pertinent to the taxonomy. The search enabled the client to take well-informed decisions and save cost.

 

Patent Licensing Support

Effectual assisted a US-based company in successfully out-licensing more than 50 patents to multiple players, which resulted in maximizing revenue more than 60 million dollars. We worked closely with the company’s attorney to identify target products and companies and developed Evidence of Use charts and infringement contentions. Our team provided support in preparing claim to specification charts and prepared responses to invalidity contentions.

 

Patent Drafting and Filing

A California-based technology company wanted to protect their innovative software and associated products. Despite the stringent patentability criteria for software and business method arts, we assisted them in building a strong patent portfolio. We adopted a robust approach that included a strategically planned pre-filing search to locate patents in the similar technology domain and helped them to modify and re-draft the patent claims. Through this laborious process, we were able to procure a strong patent portfolio for the company and helped in increasing their revenue.

 

IP Support Services

A Silicon Valley-based IP law firm was facing challenges related to managing its docketing backlog. Effectual supported the firm through a dedicated team of paralegals who maintain and manage patent dockets and coordinate with the concerned attorneys in preparing filing forms, sending reminders, tracking deadlines, assignment documents, and document classification and management.

 

Information Disclosure Statement (IDS)

A leading corporate filed a significant number of patent applications and faced challenges with the preparation of their IDS forms. The arduous task involved tracking and identifying the IDSs filed globally. We assisted the client in gathering the prior art from various patent databases and track the references filed in the IDSs globally. We identified all the references in the patent application and submitted the IDS as per the guidelines defined by PTO.

 

Proofreading Services

A US based law firm based was facing challenges in proofreading patent applications. The objective was to highlight clerical errors and check the subject contextually. The client partnered with us to undertake the paralegal task and minimize the office action. We identified the clerical errors such as spelling, bibliographic details, consistency in terms, claim dependencies, etc. Our service yielded significant benefits in terms of minimizing work pressure and helped the client to focus on primary areas.

 
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