Sometimes it's the people – not the patent – that provide the biggest challenge.
Lead trial counsel on the Waddey & Patterson team facilitated the settlement of a significant patent infringement case involving a U.S. Patent for a medical device used in imaging veins. W&P became involved in the early discovery stages of this case, not only due to complex technical issues pertaining to the invention, but equally difficult strategic problems, one of which was the inventor, a brilliant physicist who suffered from certain emotional issues which made his deposition a potential disaster. He had been fired by the client corporation (who also owned the patent); had publicly threatened suit against our client; and had been involved in attempt to oust the company's Board of Directors. W&P advised the client that our resources would be best focused on preparing the inventor for the upcoming deposition. As a result, five preparation sessions were arranged with the inventor, in order to prepare him for an effective and incident-free deposition. Each session was videotaped and followed by intensive analysis and discussion. Subsequently, the inventor was deposed over the course of two days by highly competent defense counsel, but as a result of thorough and effective preparation, his deposition created no difficulties for the plaintiff’s case, which was favorably settled less than a month later.
Protecting a client from being "spent into the ground" by an aggressive plaintiff
Waddey & Patterson served as lead trial counsel for the defendant, a start-up company charged with trademark and trade dress infringement, in an injunction proceeding and subsequent trial in Federal Court in Ohio. W&P was retained when the start-up was sued by a large and notoriously litigious company who had a reputation for long and costly litigation. After explaining to the client the potential cost and risk involved, we were authorized to make an offer to the plaintiff to proceed directly to trial, with a 90-day window to conclude all discovery; the plaintiff accepted. This strategy prevented the plaintiff from "spending the defendant into the ground." Our foreshortened discovery revealed that our client had an extremely strong case, coupled with significant counterclaims. The matter proceeded to trial about 100 days after filing, and was settled during the first day of trial after we concluded cross-examination of the plaintiff’s CEO. While the exact terms cannot be disclosed, our client received cash compensation in connection with the settlement; their trademarks use thereof remain unchanged.
Prior I.P. counsel pays off when competitors take action
Waddey & Patterson served as lead trial counsel for the defense in a declaratory judgment action in Federal Court in Tennessee. Our client was accused of infringing trade dress in connection with pill vials used in the pharmaceutical industry. W&P had previously, and successfully, counseled this client to design their product in such a manner as to avoid the other party’s patents, and viewed the plaintiff's trade dress claims as an effort to continue its patent owner’s monopoly. Our prior counsel proved invaluable in this case; our trial team counseled the client to ask for a declaratory judgment in the district court for its principal place of business. The parties subsequently concluded a settlement agreement, highly favorable to our client.
Patents
Obtaining maximum benefit with minimum risk
In one case we were prosecuting an application in which we had copied claims from a competitor’s patent for the purpose of ultimately invoking an interference proceeding. During the prosecution we were actually able to obtain allowance of claims broader than the copied claims and we made the strategic decision to simply accept those and not provoke the interference because we had achieved most of the benefit we could obtain in interference with none of the cost and risk.
Litigation is never 'inevitable'
A client recently retained us to resolve a dispute with a Fortune 500 company that was a customer of the client. The dispute resulted from the customer having filed and obtained a patent on a system invented by our client and disclosed to the customer. The client assumed that litigation would be necessary. Upon reviewing the facts and concluding that the client had a strong case, we contacted their customer, openly presented the facts to the customer’s patent counsel, and convinced the customer to cooperate in the filing of certificate of correction papers to correct the inventorship, thus achieving joint ownership of the patent for our client without litigation. Litigation would have most likely placed a significant cloud upon the patent’s validity and would have strained the relationship with the customer, both of which were avoided by the approach we took.
Why file twice, when once will do?
In developing a strategic approach to international filing for a client having a number of related applications filed within a twelve month period, we found several opportunities to consolidate two or more applications into a single application for foreign filing purposes. On each such occasion, the savings in foreign filing costs amounted to over $50,000.
Where others said no, we said yes (and ultimately prevailed)
In another case, a former collaboration partner of our client obtained a patent on technology our client believed had been derived from our client, after the client's former patent counsel had determined the technology was not patentable. After examining the facts, we designed and prosecuted an application and request for interference proceeding. The interference was initiated, which led to a settlement in favor of our client.
Truth is stronger than bluster.
In working on an analysis of a medical device, we proposed providing the client with a letter stating objective facts in which a patent holder in a related European patent application admitted that the claims as issued in the United States are unpatentable over patents not considered by the U.S. patent examiner who issued the case, thereby saving our client about ten thousand dollars and avoiding an argument that may adversely affect the validity of our client’s patent.