Patent Litigation Against Non-Practicing Entities Toolkit

Resources to assist an accused infringer's counsel in defending a client against a patent infringement claim by a non-practicing entity (NPE), including key considerations for NPE patent litigation, responding to a patent notice (cease and desist) letter, evaluating motions to dismiss or transfer the case to a more favorable venue, answering the complaint, and negotiating and drafting a settlement or license agreement.

Practical Law Intellectual Property & Technology

A substantial percentage of new patent infringement lawsuits are brought by non-practicing entities ( www.practicallaw.com/4-513-0928) (NPEs), persons or entities that acquire and enforce patent rights, but do not practice the patented invention. Defending against an NPE's patent claims presents several challenges, including that NPEs:

  • Are less susceptible to retaliatory claims by the accused infringer.

  • Can save time and money by asserting the same patent against multiple defendants.

This Toolkit provides several continuously maintained resources to help an accused infringer's counsel defend a client against an NPE's patent infringement claim, including resources explaining how to:

  • Litigate a patent case against an NPE.

  • Assess the NPE's patent claims and the client's potential defenses.

  • Respond to a patent notice letter.

  • Answer a patent infringement complaint.

  • Evaluate a motion to:

    • dismiss; or

    • transfer the case to a more favorable venue.

  • Evaluate preemptive legal actions such as proceedings at the US Patent and Trademark Office (USPTO).

  • Negotiate and draft a patent license or settlement agreement.

 

NPE Considerations

 

Evaluating Claims and Defenses

 

Pleadings, Notice Letter Responses, and Initial Motions

 

USPTO Proceedings

 

Licensing and Settlement

 
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