Creating an effective monetization strategy requires a multi-dimensional game plan, a game plan involving (1) acquisition considerations; (2) campaign costs; (3) revenue potential, taking into account the (i) market landscape and (ii) importance of the read; (4) assessments regarding the (i) strength of the read; (ii) claim construction positions; (iii) validity, including (a) forum considerations and (b) validity assessments; (5) filing strategies; and (6) compelling story telling.
In this post, I’ll be discussing (4)(i) assessments regarding the strength of the read.
Strength of the read?
This is the foundation of your campaign. If you’re read is weak, the campaign will inevitably crumble.
The extent of a read’s strength is a question of degree—a question ultimately resolved by a jury, should it get there.
The question’s framework stems from a reasonable-person’s test—the entirety of the law is based on this principle.
If your position comes across as more reasonable and fair, you’ll likely win. If the defendant’s position comes across as more reasonable and/or fair, the defendant will likely win.
From a monetization standpoint, if your read is weak, target for lower settlements. If your read is strong, then you may have the opportunity to hold out for higher-value licenses.
To the nuts-and-bolts, what’s the best way to assess your read’s strength? Below are questions to assist you:
1. How simple is the read?
If the read is explainable to a junior high or high school student, then the juror will more likely understand the story.
The strength or weakness will be more easily exposed when the read is simple.
2. How credible is your infringement position?
Is the read in line with the purpose of the invention? If not, you may be going for a stretch read. If so, your read is weak.
3. Do PTO statement corroborate your read?
Studies have shown United States Patent & Trademark (“USPTO”) statements, particularly by the examiner or reviewing board, to be highly persuasive.
If USPTO statements contradict your read, your read is extremely weak.
If USPTO statements are neutral—no ground gain or lost.
If USPTO statements corroborate your read, this is very persuasive evidence of infringement. Your read is strong.