Insights
Publications

A Plea from the Trenches: How Prosecutors Can Make the Lives of Litigators Easier

9/1/2009 Articles

Published in the August 2009 issue of IP Litigator

The lives of patent prosecutors are not easy.  They toil away day-in and day-out on difficult, rather esoteric matters to achieve a singular goal:  the issuance of patents for inventions of critical importance to their clients.  One would hope that after they reach the holy grail of an issued patent that prosecutors could rest on their laurels and accept congratulations for a job well done.

Regrettably, however, that is not always the case.  More often than not, the patents prosecutors work so hard to obtain become the centerpieces of highly charged, take-no-prisoners litigation, during which the prosecutors' prized patents get scrutinized, criticized, ripped apart, attacked, deconstructed, ridiculed, torched - and worse.  Then, the ultimate fate of the patent is decided by a judge or jury who almost certainly has no background, familiarity or experience with the technology at issue or the patents themselves.

While prosecutors and litigators typically have no more in common than cats and dogs, we can nevertheless learn from one another.  The purpose of this paper is to discuss how some errors made during the patent prosecution process play out in litigation - not to dump on prosecutors, but hopefully to provide constructive suggestions on how problems can be avoided.

Resources

Firm Highlights

Publication

Monetizing University Patent Portfolios During the Economic Downturn

Colleges and universities may be leaving money on the table with under-utilized patent portfolios. The time is right, as the law has shifted in favor of patent owners, both in inter partes review litigation...

Read More
News

Winston Liaw Selected as 2020 Leadership Council on Legal Diversity Pathfinder

Read More
Publication

Artificial Intelligence Can’t Patent Inventions: So What?

The USPTO’s  recent landmark decision  ( 16/524,350 ) concluding artificial intelligence (AI) cannot be a named patent inventor perhaps sparked fears of super-robots inventing critical technologies that, alas, receive no patent protection. If an...

Read More
Publication

Strategy Lessons From Wells Fargo Fintech Patent Litigation

United States Automobile Association (USAA) is a financial services company that provides insurance, banking, investment, and retirement products and services for members of the military and their families. On June 7, 2018, USAA filed...

Read More
Publication

Breaking up the Patent Monopoly for the Benefit of Batteries

The patent monopoly is at odds with the global need for battery storage technology. As the world mobilizes towards climate change solutions, companies with battery patents will face increasing pressure to share this critical...

Read More
News

Farella Braun + Martel Attorneys Named 2020 IP Stars by Managing Intellectual Property - Firm Recommended for Patent Litigation

Farella Braun + Martel’s James L. Day , Jeffrey M. Fisher , Eugene Mar , Stephanie P. Skaff and Roderick M. Thompson have been named IP Stars by Managing Intellectual Property in its 2020...

Read More
News

Farella Represents Adobe Inc. in Prevailing on Petition to Transfer Patent Case Out of Western District of Texas

SAN FRANCISCO, July 29, 2020: Farella Braun + Martel announces that the Federal Circuit Court of Appeals has granted its client Adobe Inc.’s writ of mandamus petition seeking to transfer a patent case from...

Read More
Publication

COVID-19 IP Lessons: Consider the Big Picture

In any crisis, there are always those that look to take advantage of the situation.  The coronavirus pandemic is no different. Here, we have highlighted a few of the most egregious fortune hunters, attempting...

Read More
Publication

How Antitrust and Unfair Competition Laws Affect Platform Providers’ Relationships With ISVs, API Developers, and Scrapers

A wide variety of business and consumer platforms host mutually beneficial ecosystems. But these ecosystems are also fraught with antitrust risk that arises when platforms try to terminate or modify the terms of third-party...

Read More
Publication

How Defense Strategies Can Go Awry When Pursuing Concurrent PTAB Relief in Financial Services Patent Litigation

United States Automobile Association (USAA), a financial services company that provides insurance, banking, investment, and retirement products and services for members of the military and their families, filed a surprising patent infringement complaint against Wells Fargo...

Read More