ipCapital Group, Inc. (ipCG) has worked with hundreds of clients, many of whom are defending against a claim of infringement, preparing to make an infringement claim, or in the process of deciding whether they should otherwise enforce their patents. Many of our clients have come to recognize that, although legal advice is essential, business, technical, and strategic advice is needed also, in order to handle these matters effectively.

Clients that defend against a claim of infringement ask us to work with legal counsel to answer the following questions:

1. Is there anything that can be done to gain strength in our position?
2. Are there ways to find prior art?
3. Are there ways to invent around the patent asserted?
4. Are there ways to develop or find “trading card” IP?
5. Can we understand the IP strategy that the asserter may be using?

Clients that prepare to make an infringement claim or decide to enforce their patent rights ask us to work with legal counsel to answer the following questions:

1. What are the alternatives?
2. How can we strengthen our position?
3. Can we get an understanding of the potential value of our patents to be asserted?
4. Can we estimate the likely responses of the infringers?
5. How will the outcome help us in our markets?
6. How will our company’s future competitive posture be seen, as a result of our decision?

Many of the questions can be answered with data-driven, creative, systematic processes that rely on strategic thinking between the business, technical, and marketing teams.

For clients who are defending against a claim of infringement, we have recommended that they, in collaboration with legal counsel:

1. Gain strength prior to any litigation, by rapidly building a directed portfolio to invent in front of the asserter’s business, and use this result to set back the strength of the asserter’s position;
2. Use invent around tools, to find ways to change the product in question;
3. Use functional searches to find prior art;
4. Do an ipLandscape^® and ipMapping^SM of the asserter’s intellectual property (IP) space, to find strategic weaknesses in the asserter’s portfolio and to find patents for purchase or development that will allow the client to obtain “trading card” IP; and
5. Reverse engineer the strategy of the asserter, by use of systematic ipStrategy^® methods.

For clients who are preparing to make an infringement claim or deciding to enforce their patent rights, we have recommended that they, in collaboration with legal counsel:

1. Look at leveraging the infringer’s customers or do proactive “stick” licensing, as alternatives;
2. Develop a complete understanding of the infringer’s IP Landscape and Patent Map, to assess whether the potential infringer has any IP that may be of concern;
3. Develop invent arounds and invent on top ofs, to strengthen the portfolio further, in order to achieve maximum strength;
4. Use the tools described above to create a “devil’s advocate process,” identifying potential responses that will help them understand the strength of their position;
5. Determine the value of the patents to be asserted;
6. Develop strategic scenarios, to help them understand the likely responses of the potential infringers;
7. Evaluate the outcome of the damages and the impact of litigation on the market and on the company’s future position, through the use of a pro forma financial model; and
8. Evaluate the direction that the infringer may take in a competitive response, based upon an ipStrategy, by use of the data-driven ipLandscape and ipMapping.

ipCG can help you work through the complex business issues that surround defending against a claimed infringement or asserting your patent rights.

To obtain more information or discuss your unique challenges please contact us.