How Loose Lips Sink Patent Ships

The RMS Titanic sinking was a tragedy, one that could have been avoided. Careless mistakes doomed it: not enough life boats, inexperienced staff, a reckless decision of the captain to navigate an iceberg field at high speed—all of which contributed to the disaster. While the loss of a patent covering a company’s key technology worth millions or billions of dollars is nothing like the Titanic tragedy, such a loss nonetheless is a major economic disaster that should be avoided.

But don’t give up the ship: There’s plenty you can do to steer clear of catastrophe.

Your Story

You sue one of your competitors for patent infringement because it’s trying to sell a generic copy of your blockbuster drug. If you win, your company continues to enjoy a healthy stream of income for years to come. But if you lose, the sun stops shining, the rain starts pouring, and your billions turn to millions or worse.

Your in-house counsel advises you that your case on infringement is solid, provided the patent withstands any validity challenges. You are cautiously optimistic. The defendant has a high burden to satisfy in litigation because a patent granted by the U.S. Patent and Trademark Office is presumed valid. The defendant will need to show in court, by clear and convincing evidence, that the patent is not valid.

The defendant alleges that it would have been obvious to invent the drug. Specifically, a person of ordinary skill in the art (POSITA) would have (1) selected a known lead compound, and (2) been motivated to modify the lead to make the claimed drug with a reasonable expectation of success. Consequently, the defendant argues, the patent is invalid.

To counter, you argue that there are at least two other lead compounds that a POSITA would have selected, and a POSITA would have been discouraged from making the modification alleged by the defendant because the prior art taught away from such a change.

Not the least bit deterred, the defendant offers a presentation from one of your inventors listed on the patent. This presentation, made publicly before the patent was filed and 15 years before the lawsuit was filed, contradicts your company’s position and effectively admits that the defendant’s lead was superior and at least comparable to the two other leads you argue are the better and more appropriate leads. MISTAKE NO. 1.

Next, the defendant offers two papers, both written by the same inventor and published long before the lawsuit, providing evidence that the defendant’s lead and the claimed drug are “structurally very similar.” MISTAKE NO. 2.

Finally, the defendant offers testimony obtained from another listed inventor of the patent in suit, explaining that he had “a very good idea” how to make the claimed drug because there were “tons of references available.” All he needed to do was “just put the pieces together” using a process “generally known by chemists.” MISTAKE NO. 3.

With their positions presented through your inventors’ words, the defendant rests. Your patent (the ship) is listing fatally to port. You’re the captain—what to do?

Loose Lips and Sunken Patent Ships