KEYS TO SUCCESSFULLY LITIGATING ON A TIGHT BUDGET
EMPOWERING INDIVIDUALS TO MAKE THE BEST DECISIONS WHEN CONSIDERING THEIR INTELLECTUAL PROPERTY RIGHTS
FOCUS IS EVERYTHING
The key to successfully litigating on a tight budget is focus. The scope of a patent case is a big variable in its cost. To limit a case's scope, focus your attention and the budget on the important case issues. Identifying and analyzing the important issues early takes work but can be invaluable. You need to perform an extensive analysis of your potential claims and/or defenses at the outset of the matter. Retaining an expert early can help you further build your case. Then ignore, to the extent feasible, all the remaining case noise. It is always easier and safer to keep everything in play until a decision must be made, but you cannot afford to do so on a tight budget.
STRIKE HARD AND SWIFTLY
Many courts require early exchanges of infringement, invalidity, and claim construction contentions so that the court can hold an early claim construction hearing (aka a Markman hearing). A claim construction hearing is one where the court resolves the parties' disputes over the meaning of patent claim terms. If you win, consider whether to soon file a summary judgment motion (even if success would only reduce a number of issues).
If your claim construction deadlines are far away, consider whether your court allows for early summary judgment motions that depend on claim construction issues. Courts have the discretion to construe claims before (and after) the formal claim construction process occurs, and that discretion includes the ability to construe claims when resolving summary judgment motions. IS EARLY SUMMARY JUDGMENT AN OPTION?
DON’T FLINCH
Just because you are focused on what matters does not mean your opponent will be. They might even try to make the case more complex if they see a benefit. So what can you do? Let the opposition go astray—and don't follow. If they ask for the world in discovery, give it. Current eDiscovery tools allow you to substantially limit the amount of information you need to review before producing requested discovery. Don't let the opposing party pull you into months of meaningless meet-and-confers.
If you cannot afford to sift through tens (or hundreds) of thousands of your opponent's documents "fishing" for something useful, simply don't. With respect to the discovery you need, be mindful that there are typically about 30 documents that will actually matter at trial or on summary judgment . Many of these documents will be known to the attorneys and/or clients in advance. So target the information you know you will need.
SEARCH FOR EVIDENCE YOU WILL ACTUALLY NEED
If you have a real concern about knowing what to ask for, as opposed to the general anxiety
SEARCH FOR EVIDENCE YOU WILL ACTUALLY NEED (CONT’)
caused by not asking for everything, take an early
deposition . Simply asking some questions first can save hundreds of thousands of dollars by bringing the important documents and points into focus.
DO YOUR DILIGENCE BEFORE ENGAGEMENT
Before engaging an attorney, ask not only about their qualifications but also about what else they are working on and whether your budget is aligned with what they have actually charged in similar matters. If your attorney is working on a number of larger cases, and generally charges more for cases of your type, consider how your case will get prioritized . You can
also ask your attorney to provide some examples of instances where they won under a tight budget.
CONTRIBUTOR
Eric G. J. Kaviar is counsel at Day Pitney and advises intellectual property owners— from Fortune 500 companies to established entrepreneurs and start-ups across various industries—on disputes and litigation, including patent, trademark,
Our Intellectual Property and Technology Group Every day, Day Pitney intellectual property attorneys help clients acquire, secure, transfer, defend, enforce and understand their intellectual property rights. We prosecute patents and trademarks; negotiate and draft agreements for the license and sale of intellectual property rights; litigate intellectual property disputes in federal and state courts around the country, including before the International Trade Commission (ITC) and the U.S. Patent and Trademark Office; and advise clients on the entire array of evolving intellectual property issues modern businesses confront, including workplace policies relating to Internet access and use, social media, and privacy.
and trade secret matters. ekaviar@daypitney.com
Emily Ferriter Russo, an associate at Day Pitney, started Patently Enabled , because she believes in empowering individuals to make the best decisions when considering their intellectual property rights. eferriterrusso@daypitney.com
Thank you for considering this post, which is a general summary meant to reduce complex issues for general practitioners and inventors. It is not intended to be exhaustive by any means. For any comments, questions, or other inquiries, please contact registered patent attorney George Chaclas at Day Pitney LLP. This communication is provided for educational and informational purposes only and is not intended and should not be construed as legal advice, nor does its distribution or receipt create an attorney-client relationship. This communication may be deemed advertising under applicable state laws. Prior results do not guarantee a similar outcome. If you have any questions regarding this communication, please contact Day Pitney LLP at 605 Third Avenue, 31st Floor, New York, NY 10158, (212) 297 5800.
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