How to Respond to a Patent Infringement Complaint. Episode 109

Background

A few episodes ago, I talked about what goes into a patent infringement complaint. That episode covered suing someone for infringing your patent. In this episode, we’re taking the other side—how to respond if you get served with a complaint claiming you’re infringing someone else’s patent.

The “Answer”

When you respond to a complaint, your response is called an “Answer.” How you answer depends on several factors: the strength of the plaintiff’s case, your defenses, whether you can countersue, whether you might challenge the patent at the USPTO instead of in court, and whether you want to settle early.

I’ll go over a bare-bones example of an answer. Let’s say you received a complaint, and you’ve read the patent in question. You don’t think your product infringes because it’s materially different.

Deadlines and Formatting

As mentioned earlier, you typically have 21 days to file an answer or motion in federal court—unless you come to an agreement with the other party to extend the deadline. Early in the process, attorneys usually agree to extensions as a professional courtesy.

The Answer Format

On pleading paper, the top half of the first page will contain information about the court and parties. Your first heading might be something like:

Defendant’s Answer, Defenses, and Counterclaims to Plaintiff’s Complaint for Patent Infringement

You’ll then go paragraph by paragraph through the plaintiff’s complaint. For example, if Paragraph 1 of the complaint states that the plaintiff is a California corporation, you can say:

“Defendants are without knowledge or information sufficient to form a belief as to the truth of the allegations set forth in Paragraph 1, and on that basis, deny them.”

If the complaint lists your own business address, you might admit that—but don’t admit anything unless you’re 100% sure it’s true.

If something is false, just say:

“Defendants deny the allegations set forth in Paragraph X.”

You’re not required to explain. You can amend later if you gain more information.

Jurisdiction and Venue

The complaint might include a section on jurisdiction and venue. Patent cases belong in federal court, so you might admit jurisdiction. But venue can be disputed. Maybe the court they chose isn’t the correct one. Again, deny if you’re unsure.

Asserted Patents

If the plaintiff attaches a copy of a patent, you can admit that a document appears to be a patent on its face. But don’t admit more than that—don’t confirm inventorship, ownership, or accuracy unless you know for sure.

Claims of Infringement

The plaintiff may have a section like “Claim 1 – Infringement of the Patent.” You’ll respond to each paragraph with a denial:

“Defendants deny the allegations set forth in Paragraph 30.”

“Defendants deny the allegations set forth in Paragraph 31.”

Continue for each relevant paragraph.

Prayer for Relief

If the complaint includes a section on requested relief, you’ll include a heading such as:

Denial of Plaintiff’s Prayer for Relief

And write something like:

“Defendants respectfully request that the Court deny Plaintiff’s Prayer for Relief as stated in the Complaint.”

Defenses

Common defenses include:

First Defense: Invalidity

“The patents-in-suit are invalid for failing to comply with one or more provisions of the patent laws, Title 35 U.S.C., including without limitation 35 U.S.C. §§ 101, 102, 103, and 112.”

Limitation on Damages

Maybe the statute of limitations has passed, or the plaintiff failed to mark the product as patented.

Unclean Hands / Inequitable Conduct

Even if the patent is valid, the plaintiff might have engaged in misconduct that makes enforcement improper.

License and Patent Exhaustion

Maybe you purchased a licensed product and modified it legally.

You’ll also want to include a general affirmative defense that the defendant has not infringed any valid, enforceable claim under any theory.

Jury Trial and Prayer for Relief

You can also demand a jury trial and include your own prayer for relief, such as:

• Judgment in favor of Defendant

• A finding of non-infringement

• A finding of invalidity

• A finding of unenforceability

• A finding that the case is exceptional under 35 U.S.C. § 285, entitling Defendant to fees

• Any other relief the Court deems just and proper

Counterclaims

You can include counterclaims if you believe the plaintiff is infringing your patents. Just follow the same structure as a complaint: parties, jurisdiction, asserted patents, infringement, and prayer for relief.

That’s the basic structure of an answer. Strategy will vary—sometimes it makes sense to settle quickly, especially if you were infringing or litigation costs would be too high. Work closely with your attorney to develop your response.