USE CASE · U.S. PATENT LAW
Sued for patent infringement in the U.S.?
A U.S. patent lawsuit, a cease-and-desist letter, or a licensing demand 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 legal issues, there are also practical challenges related to communication, documentation, and coordination across time zones.
Together with our U.S. team, we will assist you in assessing the allegations and developing a defense 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 U.S. patent litigation.
The Case at a Glance
Background
A U.S. patent infringement allegation involves products, distribution, or business planning and requires a prompt and reliable assessment.
Objective
Examine risks, lines of defense, and procedural options in relation to the economic objectives.
Support
German-speaking representatives coordinate the technical and legal work with the U.S. 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 regulatory agency 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 that does not manufacture the product itself—often referred to as an NPE—requires a careful case-by-case review. The appropriate response depends, among other things, on the patent, the product, the stage of the proceedings, and business objectives.
Our Support
We analyze the facts of the case, collaborate with the technical experts at your company, and evaluate potential lines of defense. These may include the absence of patent infringement, issues regarding the validity of the patent, and procedural options.
Depending on the circumstances, we tailor our approach in U.S. courts, before the Patent Trial and Appeal Board, or before the U.S. International Trade Commission. Decisions regarding settlements, licensing negotiations, or litigation are prepared based on a solid foundation of information.
Discuss the U.S. patent allegation confidentially
Describe your situation to Matthias Schuhmacher and Raphael Tautz. We’ll determine what information is needed for an initial legal assessment and bring in the appropriate members of the U.S. team.
Defense in the U.S. Patent Dispute
Our support is tailored to the type of proceeding, the allegations, and the company’s objectives. The following topics outline typical components of a defense in the United States; which of these are relevant and how they interact can only be determined after reviewing the specific case.
U.S. patent lawsuit, cease-and-desist letter, or claim by an NPE
Combine the specification, products, and process status.
Upon receipt of a lawsuit or a cease-and-desist letter, we first document the parties, the patents asserted, the affected patent claims, the products involved, and the correspondence to date. In the case of a licensing claim, we also assess its legal and economic context. This applies even if the claim comes from an NPE—that is, a patent holder that does not itself use the protected technology in its products.
Based on this, we can determine what information is needed and which procedural steps should be reviewed. We assess applicable deadlines based on the date of service, the type of proceeding, and court requirements. In pending proceedings, we take these requirements into account and coordinate our efforts with the relevant individuals within the company. A robust strategy requires that technical analysis, business interests, and the procedural situation be considered together.
Non-Infringement and Invalidity
Review technical differences and legal validity.
Non-infringement involves determining whether the challenged product or process meets all the features of an asserted patent claim. To this end, we rely 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 legal validity of the asserted patent claims can be challenged. In this context, factors such as prior 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 analysis into the overall strategy for the U.S. proceedings.
IPR, Discovery, and the Course of the U.S. Proceedings
Coordinate litigation, private international law, and discovery.
An Inter Partes Review (IPR) is a proceeding before the Patent Trial and Appeal Board of the USPTO. It allows for the review of certain patent claims based on selected statutory grounds and specific publications. Whether an IPR is appropriate must be evaluated in the context of the parallel dispute and its implications.
In U.S. court 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 opinions. We assist in structuring requirements early on, 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 Import Bans
Classify imports and potential exclusion measures.
Section 337 proceedings before the U.S. International Trade Commission often involve allegations that imported goods infringe U.S. intellectual property rights. Possible remedies include, in particular, orders that restrict the importation of certain products or prohibit certain actions. This can have significant business implications for manufacturers, importers, and distribution partners.
We are working with the U.S. team to determine which products, supply chains, and patent claims are at issue in the proceedings and what defense strategies arise from them. In addition to infringement and validity, technical evidence, import-related issues, and the remedies sought by the opposing party may be relevant. Since ITC proceedings follow their own rules and procedures, they should be coordinated with any potential parallel court proceedings and the company’s business priorities.
Your Contacts
For clients from Germany and the DACH region, Matthias Schuhmacher and Raphael Tautz coordinate German-language support and collaboration with the U.S. litigation team. This allows for the integration of technical information, business objectives, and the requirements of the U.S. proceedings.
Partner · STEM Practice Group
Your contact in Munich
Partner · STEM Practice Group
Your contact in Munich
Partner · U.S. Litigation Practice Group
U.S. Team in New York
Partner · U.S. Litigation Practice Group
U.S. Team in New York
Frequently Asked Questions
First, the complaint, exhibits, service information, and internal background information should be organized. The appropriate response depends on the court, the stage of the proceedings, and specific requirements. We will review these documents with the U.S. team and coordinate the next steps with you.
"Non-infringement" refers to the position that the challenged product or process does not infringe the asserted patent claim. The decisive factor is a case-by-case comparison of the claim features with the actual technical configuration.
An IPR is a contentious proceeding before the USPTO's Patent Trial and Appeal Board. In this proceeding, a third party may request a review of the patentability of certain patent claims for specific reasons and based on patents or published documents. Its appropriateness depends on the specific case.
Discovery is used to obtain and exchange information relevant to a case. Depending on the proceedings, it may include documents and electronic data, written statements, witness interviews, and expert testimony. Court orders establish the specific framework.
A Section 337 proceeding may be relevant if imported products are challenged in the United States due to an alleged infringement of intellectual property rights. If an infringement is found, the USITC may, among other things, issue exclusion orders and cease-and-desist orders. The implications for the affected company must be assessed on a case-by-case basis.
Additional Information
What is an Inter Partes Review (IPR)?
Where to File Patent Infringement Cases in the US
Overview of the US Patent Infringement Procedure
Litigation & Dispute Resolution
Assistance with disputes and legal proceedings in the United States.
Intellectual Property
Consulting services related to patents and other intellectual property rights.
International Patent Litigation Team
Pearl Cohen's international litigation practice.
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