USE CASE · US PATENT LAW
Sued in the US for patent infringement?
A US patent lawsuit, a cease-and-desist letter or a licence claim can have far-reaching consequences for sales, products and business planning. For companies based in Germany and the DACH region in particular, in addition to the legal issues, there are also practical challenges relating to communication, documentation and coordination across time zones.
Together with our US team, we will assist you in assessing the allegations and developing a defence strategy tailored to the specific case. Matthias Schuhmacher and Raphael Tautz coordinate the collaboration for German-speaking clients; David Loewenstein and Guy Yonay contribute their experience in US patent litigation.
The case at a glance
Background
A US patent infringement allegation relates to products, distribution or business planning and requires a swift and robust assessment.
Objective
Assess risks, lines of defence and procedural options in relation to the economic objectives.
Support
German-speaking contacts coordinate the technical and legal work with the US litigation team.
Your situation
The process often begins with incomplete information: which patent claims are being asserted, which products are affected, and before which court or authority are the proceedings taking place? At the same time, technical, economic and procedural aspects must be brought together.
Even a claim made by a patent holder who does not manufacture the product themselves – often referred to as an NPE – requires a careful assessment on a case-by-case basis. The appropriate response depends, amongst other things, on the patent, the product, the stage of the proceedings and the business objectives.
Our support
We analyse the facts of the case, work closely with the technical experts at your company, and assess potential defences. These may include the absence of patent infringement, issues relating to the validity of the patent, and procedural options.
Depending on the circumstances, we tailor our approach in US courts, before the Patent Trial and Appeal Board or the US International Trade Commission. Decisions regarding settlements, licence negotiations or litigation are prepared on the basis of sound information.
Discuss the US patent allegation in confidence
Explain your situation to Matthias Schuhmacher and Raphael Tautz. We will clarify the information required for an initial legal assessment and involve the relevant members of the US team.
Defence in the US patent dispute
The support we provide depends on the type of proceedings, the allegations and the company’s objectives. The following topics outline typical elements of a defence strategy in the US; which of these are relevant and how they interplay can only be determined after a review of the specific case.
US patent infringement claim, cease-and-desist letter or claim from an NPE
Combine the specification, products and process status.
Upon receipt of a claim or a cease-and-desist letter, we first record the parties involved, the patents asserted, the patent claims concerned, the products in question and the correspondence to date. In the case of a licence claim, we also assess its legal and economic context. This also applies if the claim originates from an NPE, i.e. a patent holder who does not itself utilise the protected technology in its own products.
On this basis, we can determine what information is required and which procedural steps should be reviewed. We assess the applicable time limits based on the date of service, the type of proceedings and court requirements. In the case of pending proceedings, we take these requirements into account and coordinate our work with the relevant personnel within the company. A robust strategy requires that technical analysis, business interests and the procedural situation be considered together.
Non-infringement and invalidity
Check for technical differences and legal validity.
Non-infringement concerns the question of whether the product or process in question fulfils all the features of an asserted patent claim. To this end, we draw on technical documentation, product knowledge and the interpretation of the patent claims. Differences between the claimed invention and the actual embodiment must be clearly identified.
In addition, it may be necessary to examine whether, and to what extent, the validity of the asserted patent claims can be challenged. In this context, factors such as earlier patents, technical publications and other legally relevant considerations may play a role. Which arguments are tenable and in which proceedings they can be raised depends on the individual case. We integrate this assessment into the overall strategy for the US proceedings.
IPR, discovery and the conduct of US proceedings
Co-ordinating legal proceedings, private international law and discovery.
An Inter Partes Review, or IPR for short, is a procedure before the USPTO’s Patent Trial and Appeal Board. It allows for the review of specific patent claims on the basis of selected statutory grounds and specific publications. Whether an IPR is an option must be assessed in the context of the parallel dispute and its implications.
In US legal proceedings, discovery is the phase during which the parties exchange case-related information and gather evidence. This may include documents, electronic data, written questions, witness interviews and expert reports. We provide support in structuring requirements at an early stage, clarifying responsibilities and coordinating the technical and legal work. The scope and process depend on the court, the case and the relevant orders.
ITC proceedings and the threat of an import ban
Classify imports and any potential exclusion measures.
Proceedings under Section 337 before the US International Trade Commission frequently involve allegations that imported goods infringe US intellectual property rights. Possible remedies include, in particular, orders restricting the import of certain products or prohibiting certain acts. This can have significant commercial implications for manufacturers, importers and distribution partners.
We are working with the US team to determine which products, supply chains and patent claims are the subject of the proceedings and what defence issues arise from this. In addition to infringement and the validity of the claims, technical evidence, import-related issues and the measures sought by the opposing party may be relevant. As ITC proceedings follow their own rules and procedures, they should be coordinated with any parallel court proceedings and the company’s commercial priorities.
Your points of contact
For clients from Germany and the DACH region, Matthias Schuhmacher and Raphael Tautz coordinate German-language support and collaboration with the US litigation team. This enables technical information, business objectives and the requirements of the US proceedings to be brought together.
Partner · STEM Practice Group
Your contact in Munich
Partner · STEM Practice Group
Your contact in Munich
Partner · US Litigation Practice Group
US team in New York
Partner · US Litigation Practice Group
US team in New York
Frequently Asked Questions
Firstly, the statement of claim, annexes, service details and internal information should be organised. The appropriate response will depend on the court, the stage of the proceedings and specific requirements. We will review these documents with the US team and consult with you on the next steps.
‘Non-infringement’ refers to the position that the product or process in question does not infringe the patent claim in question. The decisive factor is a case-by-case comparison of the features of the claim with the actual technical configuration.
An IPR is an adversarial proceeding before the Patent Trial and Appeal Board of the USPTO. In such proceedings, a third party may request a review of the patentability of specific patent claims on selected grounds and on the basis of patents or published documents. Its suitability depends on the individual case.
Discovery is used to gather and exchange information in relation to a specific case. Depending on the proceedings, it may include documents and electronic data, written statements, witness interviews and expert evidence. Court orders determine the specific scope.
Section 337 proceedings may be relevant if imported products are challenged in the US on the grounds of an alleged infringement of intellectual property rights. If an infringement is found, the USITC may, amongst other things, issue exclusion orders and cease-and-desist orders. The implications for the company concerned must be assessed on a case-by-case basis.
Further information
What is an Inter Partes Review (IPR)?
Where to File Patent Infringement Cases in the US
Overview of the US patent infringement process
Litigation & Dispute Resolution
Support in the event of disputes and legal proceedings in the USA.
Intellectual Property
Advice on patents and other intellectual property rights.
International Patent Litigation Team
Pearl Cohen’s international litigation practice.
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