What differentiates General Patent Corporation (GPC) from any other organization in the intellectual property sector is the GPC Suite of Services, a package of value-added programs we provide to patent owners for whom we manage and finance a patent enforcement campaign. A patentee does not typically use every service offered, but takes advantage of those services that are applicable to the patent owner’s needs and the dynamics of his (or her or its) patent infringement assertion.
Evaluate the Viability of Your Patent Infringement Claim: It only makes sense to pursue a patent infringement claim if the assertion has merit, the patent-at-suit is valid and enforceable, and there are sufficient damages to make the venture financially viable. Other issues that need to be considered are if the infringement is willful and how many infringers there are. At no cost to the patent owner, we will perform an analysis of your patent infringement claim to determine its viability.
Determine Who the Infringers Are: When a patentee comes to us, he has often identified one company that is infringing the patent. We are often able to uncover additional infringers, and the more infringers there are, the more financially viable it becomes to pursue a patent enforcement campaign, and the more profitable it is for the patent owner. Also, once an initial patent infringement lawsuit is won at trial or settled out-of-court, it becomes increasingly easier to settle with additional infringers.
Minimize the Patent Owner’s Potential Liability: Every patent owner that decides to assert a patent runs the risk of counter-lawsuits from the infringers. General Patent created – as part of our unique patent enforcement model – a methodology that substantially reduces risk and liability for the patent owner.
Select and Engage a Law Firm (or Law Firms): General Patent has worked with many law firms over the last 20-plus years to litigate lawsuits on behalf of patent owners, so we have first-hand experience with many of the finest IP litigators. Selecting the right law firm – the firm with the right technological expertise, and the right mix of talent and resources for the lawsuit it will be litigating – is critical to a successful outcome. When there are multiple infringers, it may be necessary to engage more than one law firm as some firms may have conflicts of interest. The patent owner who has never been involved in patent infringement litigation simply does not have the expertise required to select the appropriate law firm to represent him!
Supervise and Coordinate the Work of the Law Firm(s): General Patent staff attorneys are experienced patent litigators who in their prior careers were partners in major law firms and/or managed corporate legal departments. They have litigated and supervised many patent infringement lawsuits. Our in-house legal staff works closely with the outside litigation counsel, devising an optimal litigation strategy. We are involved in day-to-day tactical decisions, and we review and often contribute to legal briefs before they are filed in court. Together, our in-house attorneys and outside litigators form a winning legal team!
Provide Strategic Direction: Before a patent infringement lawsuit is filed, several key decisions need to be made, such as which venue (court location) will be most favorable to the plaintiff, which infringer should be sued first (if there are several infringers), and whether to file in U.S. District Court or before the ITC (International Trade Commission), or both.
Manage Reexamination of the Patent: If the patent-at-suit is forced into reexamination, or if we decide to voluntarily put the patent into reexamination to eliminate validity issues and create a stronger patent, General Patent handles the entire process. That includes engaging a patent attorney to defend the patent before the Patent Office and paying for the process.
Manage Continuation(s) or Divisional(s): If the client has pending U.S. patent applications, General Patent may recommend that a continuation or continuations-in-part (CIP) of the parent patent be filed with the Patent Office. Or we might file for a divisional that will result in more than one patent being issued. This could result in the issuance of additional patents containing different claims, creating a more robust patent portfolio. Also, these new patents – with their new claims – could create additional licensing and enforcement opportunities. GPC engages a patent attorney to prosecute these continuation(s) and pays all costs associated with these filings.
Underwrite All Litigation Expenses: Among all civil litigation, patent infringement is among the most expensive, second only to anti-trust litigation. Known in legal parlance as “disbursements,” litigation expenses are the out-of-pocket costs involved in trying a lawsuit.
- Filing Fees: While these are not a major cost, they can run into the thousands of dollars, especially if there are multiple defendants.
- Travel Costs: These can be substantial, especially if fact-witnesses are scattered all over the country or, worse yet, all over the world, which is often the case with multi-national infringers.
- Depositions: Witnesses need to be deposed. Prospective witnesses are questioned by the attorneys litigating the case prior to actually testifying in court. This is part of the process known as “discovery.” These depositions must be recorded by a court-stenographer and transcribed to produce a written document. We sometimes also videotape depositions of important witnesses, which can be expensive.
- Expert Witnesses: Patent infringement litigation always requires testimony from experts. In fact, patent infringement litigation is often called a “battle of the experts.” Every patent case requires technical experts who testify on the questions of infringement and validity, plus damages experts who testify on the issues of damages and reasonable royalties. Some cases require additional experts, such as licensing experts who testify about licensing practices, and patent experts who respond to questions about Patent Office procedures and inequitable conduct. The choice of experts and their testimony is crucial to successful litigation. This is no place to cut corners and look for bargains! GPC has worked with some of the very best experts in these areas, and we spare no expense in securing the services of the most capable and talented expert witnesses.
- Trial Demonstratives: We prepare technical tutorials that describe the technology in lay terms so the jurors can understand it. Trial demonstratives can include audio-visuals such as PowerPoint presentations, videos, charts, graphs and diagrams. In addition, scale models, prototypes, props and displays are often used to illustrate infringement and drive home important points for the jury. No expense is spared to create and prepare trial demonstratives that will help convince a jury deliver a favorable verdict for the patent owner!
- Jury Consultants: When a lot of money is at stake, nothing is left to chance. It has become increasingly more common in recent years for litigators to rely on jury consultants to help them select jurors who will be sympathetic to their client and their client’s claims. Jury consultants are usually psychologists who help attorneys select winning arguments and the language that will most effectively deliver these arguments.
- Mock Jury Trials: Mock jury trials are essentially dress rehearsals. The jury consultant goes to the city in which the trial will take place and hires “jurors” from the same pool of people from which the actual jury will be selected. These hired “jurors” represent not only the mentality of the actual jurors who will hear the case, but they also share the demographics of the jury that will hear the case. The attorneys split into plaintiff and defense teams, and the two teams try the case before the hired jurors. Several mock juries are recruited, and the trial is repeated several times with different juries using different arguments and approaches. Jury deliberation is video-recorded to uncover what issues the jurors focus on, and what arguments work – and do not work – with the jurors. While this is a very useful process, it is also very expensive. Hundreds of thousands of dollars can be spent conducting mock jury trials. That is why they are most often used only by well healed corporate litigants with millions at stake. General Patent Corporation is the only firm in this business that, when warranted, hires jury consultants to conduct mock jury trials.
- Reexaminations and Continuations: If the patent goes into reexamination or we decide to file for a continuation(s) or divisional of the patent, General Patent pays for a patent attorney to prosecute them before the U.S. Patent and Trademark Office.
Supervise Settlement Negotiations: While General Patent and the attorneys we engage to litigate each lawsuit are prepared to go to trial, many lawsuits never make it to a jury. Instead, the defendant decides to settle before going to trial in what is known as an “out-of-court settlement.” Both the attorney litigating the case and GPC’s legal and licensing professionals are involved in these negotiations. General Patent’s three decades of experience in negotiating the settlement of patent infringement cases is unmatched. Negotiating license agreements and settlements of lawsuits is like a game of chess – we take pains to develop a negotiating strategy in which each move is anticipated and every counter-move is planned in advance. We’ve developed our own proprietary negotiation strategies that have been battle-tested in multi-million dollar disputes.
Manage Licensing Negotiations: We refer to General Patent as a “patent licensing and enforcement” firm because we do not always have to go to court to secure compensation for our clients. When there are multiple infringers, it is not uncommon for us to file a patent infringement lawsuit against two or three infringers. Once we win or settle with one or two defendants, we may be able to negotiate licenses with the other infringers without having to file lawsuits against each and every one of them. GPC handles all license negotiations, and over the years we’ve negotiated hundreds of patent license agreements. For one client, Digital Technology Licensing, we’ve negotiated over 40 licenses!
Monitor Royalty Payments: Once we’ve turned the infringers into licensees, General Patent continuously monitors all licensees to make sure they pay all royalties in a timely manner on all licensed products. Since some licensing agreements are based on dollar or unit sales, GPC maintains the right to audit the licensee’s books to make sure that you, the patent owner, is paid every penny you are owed under all license agreements.
Maintain the Patent(s): General Patent also ensures that our clients’ patents or patent portfolios are properly maintained. That includes making sure that all patents are docketed in our system, and all maintenance fees are paid so the patent remains in force over its full term.
While not every client needs all of these services, those services that a client needs are available at no charge as part of the comprehensive patent enforcement campaign that GPC manages and finances on behalf of the patent owners it represents. If you believe your U.S. Patent has been infringed, complete a Project Submission Form. There is no charge for our analysis, and the service is confidential.