Friday, April 22, 2005

MORE ON PROACTIVE LAWYERING - I've received quite a bit of e-mail on this topic, where no particular consensus was reached whether monitoring and reacting to competitor's patenting activity was "good" or "bad." To clarify my previous post, I just wanted to go on the record to say that being able to monitor prior art and patenting activity is is a desirable course of action for any client. It's no secret that many institutional clients track such information on their own to identify potential licensing/merger partners, and to spot "discounted" patents that may be eligible for a cheap purchase. And yes, they also track patents to spot "roadblocks" and to identify potential infringing activity.

Also, I'm not aware of any instance, where a defendant was found to be willful simply because they were in possession of the asserted patent prior to a lawsuit (I will try to research this more later). And being overly fixated on willfulness is like putting the cart before the horse - you'd better focus first on avoiding direct infringement before you should start worrying about any willful activity.

The part that gives attorneys the greatest anxiety in this regard is the fact that each document sent to a client can be potentially discovered (privileges notwithstanding), and shaped by opposing counsel to mean something that it really isn't in front of a jury. There are many cases where seemingly benign documents are seized upon by plaintiff's attorneys, and formed into key pieces of evidence for a case. And attorneys (being the way they are) will eternally fret over whether or not a letter or document contains something that could potentially prove problematic in later actions (for example, 1.131 affidavits are great ways for breaching the A/C privilege in subsequent litigation, but try getting reasonably broad patents without them (yes, I know - redact, redact, redact!)).

I suppose the anti-disclosure sentiment can be summed up this way: your chances of getting struck by lightning is less than 0.00001% - but everyone knows to run like hell from the golf course when the thunderclouds roll in . . .

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