Patent Analysis and Opinions

MKW provides patent opinions, searches, and other types of patent analysis for various purposes.

• New product freedom to operate (“FTO”): When bringing a new product or service to market, the manufacturer or provider and other stakeholders in the product or service have an interest in assessing the risk of patent infringement. For example, major retailers often require analysis of infringement risks posed by a new mass-market consumer product before placing purchase orders for the product. Investors sometimes insist on reviewing FTO evidence and analysis prior to making a major investment in a company whose value depends on bringing a new product or service to market. Also, a company’s market strategy might depend on properly assessing infringement risks. This assessment might include an FTO search and analysis (or formal opinion) and/or might advise regarding how to design around existing patents.
• Defense against willful infringement: The Supreme Court’s 2016 Halo decision made it easier for patent holders to prove willful infringement. The question of an accused infringer’s subjective willfulness regarding infringement is now the sole issue and Halo lowered the standard of proof from “clear and convincing evidence” to merely “a preponderance of the evidence.” A well-reasoned patent opinion can provide the necessary written record supporting an accused infringer’s position that it had a clear basis for subjectively believing that the relevant patent was not infringed and/or invalid. Therefore, a written opinion can be an important part of lowering the risk of treble damages that arises with a finding of willful infringement.
• Assertion or defense analysis: A patent holder considering enforcing a patent or a potential defendant seeking leverage in resisting a license demand each require careful patent analysis to guide their actions before litigation arises. A thorough infringement analysis can help patent holders maximize leverage in pre-litigation negotiations. Under newly heightened pleading standards, the infringement case must be developed in some detail before preparing a complaint. Potential defendants facing patent assertions require careful patent analysis to decide whether and how much to pay for a license. Also, communicating a clear non-infringement and/or invalidity position to a patent holder can help the accused infringer convince the patent holder to either cease or reduce its license demand.

MKW attorneys have many years of experience assisting clients with formal opinions or other relevant analysis in all of the above contexts. Because we know what happens to patents in courts and in USPTO validity challenges, we have been able to give clients a clear-headed view of the risks and opportunities associated with issued patents.