Standard Essential Patents for Litigation Strategy under Innovation Act

Recently, the U.S. House passed a new legislation (H.R. 3309) to address patent litigation abuses.  Especially, the new law (“innovation Act”) aimed at preventing patent trolls’ frivolous patent litigations and protecting the innovation system.

Two notable provisions that can affect the patent litigations are pleading disclosures and discovery that are included as a new Section 281A and 299A of Title 35 respectively. Specifically, the most significant terms are (1) complaints should identify each patent and claim asserted contrast with the accused products or processes to show how each asserted claim is mapped into the accused products or processes (claim charts) and (2) courts can limit discovery to claim interpretations until a claim construction (Markman hearing) decision is issued. 

The main issue with the two provisions is that usually the details about the legitimacy of the patent litigation allegations can be found only after acquiring information from experts, reverse engineering and infringing party.  Standard essential patents (SEPs) may provide some strategic options for patent litigation strategy to overcome the two provisions because of their rather easy of infringement proof characteristic: if one can establish essentiality of a SEP’s specific claim, one may presume that every standard-compatible products or processes infringe the SEP’s specific claim.

For more information, please contact Alex Lee at alexglee@techipm.com .

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