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By Richard Gearhart
Founding Partner

Facing a patent infringement allegation can feel overwhelming, as it threatens your business and brings significant legal challenges. It’s a situation that can disrupt your business, drain your resources, and cloud your future with uncertainty. But, as with any challenge, some strategies and defenses can turn the tide in your favor. Here, we will provide guidance on defense strategies to help you effectively respond to these legal challenges.

Understanding Patent Infringement

Patent infringement occurs when someone uses, sells, or manufactures a patented invention without permission from the patent holder. It’s essential to grasp the specifics of the patent claims involved, as these details determine whether your product or process infringes on the patent. A key part of this involves comparing the accused product or process directly with the patent claims to identify any overlap. This comparison is not always straightforward; it requires a careful analysis to interpret the scope and limitations of the patent claims accurately. By fully understanding the parameters of the patent and how they apply to your situation, you can better assess your position and formulate an effective defense strategy.

Common Defense Strategies

  • Non-Infringement: This approach hinges on demonstrating that your product or service does not infringe on the patent’s claims because it operates differently or uses a distinct method. It requires a detailed comparison of your offering to the patent claims to identify clear distinctions. Successfully arguing non-infringement can often hinge on technical details and nuances in patent language, making it crucial to thoroughly understand both the patent and your product.
  • Invalidity of the Patent: Challenging the validity of the patent itself is a powerful defense. This strategy involves proving that the patented invention was not new, was obvious to someone skilled in the area, or the patent did not fully disclose how to use the invention. Evidence of prior art, such as previous patents or publications, plays a critical role in this defense, aiming to show that the patent should not have been granted in the first place.
  • Prior Use: If you can establish that you were using the invention publicly or commercially before the patent application was filed, you may claim the “prior use” defense. This requires providing concrete evidence of your prior use, such as sales receipts, manufacturing records, or dated prototypes. It’s a defense rooted in fairness, preventing patent holders from monopolizing practices already in public use.
  • Patent Exhaustion: This defense argues that the patent holder’s rights end after the authorized sale of a patented item, allowing the purchaser to use or resell the item freely. It’s based on the principle that patent rights should not extend to subsequent uses or sales once the product has been lawfully sold. Documentation of the purchase and the chain of ownership may be necessary to substantiate this defense, emphasizing that once a patented product is sold, its control by the patentee is exhausted.

Navigating the Legal Process

The legal process for defending against patent infringement allegations involves several key steps, starting with a thorough response to the initial complaint. It’s important to gather and analyze all relevant evidence, such as development documents, prior art, and product specifications, which can support your defense. The discovery phase allows both parties to exchange this information, which can be pivotal in building a strong case. Engaging with experienced intellectual property attorneys is essential, as they can guide you through each phase, from pre-trial motions to potential settlement discussions or trials. They can ensure that your defense is articulated clearly and effectively, maximizing your chances of a favorable outcome.

Contact an Experienced Patent Infringement Attorney

At Gearhart Law, we bring a wealth of experience and a personalized approach to each patent infringement defense. Our dedicated team is ready to explore all possible strategies to protect your interests. Don’t face this challenge alone; reach out to us for guidance and support tailored to your unique situation.

About the Author
Richard Gearhart, Esq. is the founder of Gearhart Law and the host of a weekly radio show for entrepreneurs called “Passage to Profit”. He has built a firm with an international presence that helps entrepreneurs from around the world with their patent, trademark and copyright needs. Richard commands a breadth of experience that comes from nearly 30 years of practice in the writing and prosecution of hundreds of patents, and in all aspects of Intellectual Property law. In 2022, Richard was recognized by ROI New Jersey as a 2022 ROI Influencer in the Law List category for being one of the best of the best in New Jersey for intellectual property law. Gearhart Law emerged from Richard’s passion for entrepreneurship and startups and his belief that entrepreneurship grows the economy and creates jobs. When we started Gearhart Law, our goal was to help and support the new business ventures of 500 entrepreneurs and inventors. After 12 years, the firm has far surpassed this goal; today, we look forward to helping even more inventors and entrepreneurs get off to a great start and reach their own goals.