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) strength assessments; (5) filing strategies; and (6) compelling story telling.
In this post, I’ll be discussing (5) filing strategies.
As a patent holder, your venue selection (i.e., the district court in which you file your complaint) is your battleground. It will be the forum in which you litigate issues of claim scope, infringement, validity, and enforceability.
A monetization strategy may be a total success or failure, depending on the forum–select your venue carefully.
Factor in the following considerations when selecting your venue: (1) transfer risk; (2) risk of stayed litigation; and (3) plaintiff/defendant deference re: claim constructions.
(1) Transfer Risk
If you file in any district court, you’ll always risk the defendant successfully transferring the case to another district.
If you’re transferred to another district, you’ll fight your battle in the defendant’s home territory and it’ll increase your costs.
Even worse, if you file lawsuits against various defendants and a number of them transfer their respective cases to forums across the country, you’ll fight your war on multiple fronts—avoid this at all costs.
For the forum you contemplate in which to file, how have judges in that district ruled on motion to transfers? What factors caused them to keep or transfer cases?
All motions to transfer are decided on a balancing test—are there enough factors in your favor to win a motion to transfer in that district?
(2) Risk of Stayed Litigation
When patent holders initiate lawsuits in district court, a common strategy amongst defendants is to challenge the validity of the patents in an alternate forum—typically in the patent office with a reexamination proceeding or, more recently, in a parallel trial with an Inter Partes Review.
In doing so, defendants concurrently file a motion to stay the litigation, pending the outcome of validity rulings from the reexamination or Inter Partes Review—the argument: if the alternative forum invalidates the patents, there will be no need for the district court to expend resources trying the case.
Stays are detrimental to your monetization campaign—it will stall time-to-money for several years and nullify your litigation leverage. .
For the forum you contemplate in which to file, how have judges in the district ruled on motion to stays? If judges in the district routinely grant stays, avoid the district.
(3) Plaintiff / Defendant Deference re: Claim Constructions
Determining claim scope is a legal matter decided by a judge (during the Markman hearing and subsequent Markman order). Some judges are deferential to patent holders, while others are not. File in district courts in which the judges are deferential to plaintiffs.
For the district in which you plan to file, review the Markman orders issued by its judges. For each judge, ask yourself the following:
a. For the claim terms in dispute, do the judges have a tendency to side with the plaintiff’s construction or the defendant’s?
b. To what extent do the judges add in limitations from the specification or file history?
c. To what extent do the judges limit claim scope due to written-description or enablement requirements?
If judges have a tendency to side with defendants’ proposed constructions, add in limitations from the specification or file history, or limit claim scope due to written-description or enablement requirements, they are likely deferential to the defendants—avoid these districts.