How to Effectively Respond to Plaintiff's Patent Invalidation Request, Patent Infringement Lawsuit with High Compensation Claims

CHANG TSI
Insights

November05
2024

In a case handled by our team, Plaintiff filed requests for invalidation against multiple patents held by Defendant. Simultaneously, Plaintiff initiated a civil lawsuit for Defendant's production and sale of the accused infringing product (which has a design patent that the plaintiff has also filed an invalidation attack) and demanded high compensation.

As the defendant's legal representatives, we implemented the following strategies:
1.    File invalidation requests against the plaintiff's patent.
2.    Actively responded to Plaintiff's invalidation requests against Defendant's multiple patents.
3.    Actively sought settlement and engaged in settlement negotiations with Plaintiff.

During the civil litigation process, the progress of the above strategies was as follows:
1.    Plaintiff's asserted patent was upheld by the CNIPA.
2.    Among the multiple invalidation requests filed by Plaintiff against Defendant's patents, over 90% of Defendant's patents were upheld as valid. Notably, the design patent of Defendant's accused infringing product was upheld as valid. The cited prior art used cited by Plaintiff in the invalidation proceedings was precisely the design patent asserted by Plaintiff in the civil lawsuit. This means that the CNIPA determined that Defendant's design patent was neither identical nor similar to Plaintiff's design patent.
3.    In the settlement process, the negotiations reached an impasse due to Plaintiff's stringent demands for compensation and settlement conditions.

Since the design patent of Defendant's accused infringing product was successfully upheld in the invalidation proceedings, we promptly adjusted our negotiation strategy. If Plaintiff continued to insist on stringent settlement conditions and compensation amounts, Defendant would abandon the settlement. Concurrently, in the civil lawsuit, we leveraged the favorable results from the invalidation process to actively persuade the panel that the accused infringing product was neither identical nor similar to Plaintiff's design patent.

Ultimately, the court ruled in the civil case that Defendant did not constitute infringement and dismissed all of Plaintiff's claims. In this case, despite the immense pressure from Plaintiff, we helped Defendant respond calmly and adjust strategies in a timely manner, successfully mitigating the crisis and avoiding significant losses tof Defendant in market share, reputation, and property.

 

Nancy Qu
Partner | Attorney at Law | Patent Attorney
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