The recent sale of Nortel's patent portfolio for $ 4.5 billion underscores the value of intellectual property, particularly for technology companies. An intellectual patent portfolio is critical in defending one's business from charges of patent infringement. Typically, when a company is sued for infringement by a competitor, the company countersues using its own patents and ultimately reaches a cross-licensing deal that preserves its freedom of operation.
However, if that same company is sued by an entity that is not a competitor and provides no product or services, then even an extensive patent portfolio is of limited utility. These entities are often referred to as patent trolls. A company can not effectively counter a suit by a patent troll by asserting its own patent portfolio because the patent troll has no operations and never infringes patents.
Yet that same company may already have a substantial intellectual property portfolio that it can use if it is sued, and may not even be aware of its existence. That intellectual property portfolio is the legacy products of the company. These legacy products can often be used effectively in software patent litigation.
One of the most effective strategies for defending against a charge of software patent infringement is to invalidate the patent one is accessed of infringing. A patent is usually invalidated by showing that the elements of the patented invention were known before the patent application was filed, so that the patent should not have been granted because its invention was obvious. The key is to find these previous examples of the inventive elements, usually referred to as prior art.
When a patent application is examined, the examiner makes a careful search of the prior art. However, the examiner only has a limited time, and so the examiner usually focuses on similar conventions in other patent applications. As a result, a large body of technical literature and previous products are not considered.
The target of the patent infringement suit is typically accused of implementing a feature that is covered by the accuser's patent. That feature or portions of the feature may have appeared in the target company's products before the accuser's patent application was filed, yet it probably was not considered when the accuser's application was examined. As a result, those old products could be used to invalidate the accuser's patent.
To have your legacy products available as an intellectual property portfolio, it is important to archive those products. Save source code and production images of all products. Record the earliest release dates for each image. Marketing materials, tutorials, training material, and catalog text should also be saved. To insure that really old code is preserved, it is often a good idea to give a copy to corporate counsel or a law firm for safe keeping.
If your firm ever needs to use its product intellectual property portfolio, start by discussing the patent you are accused of interfering with the engineers and programmers that have been part of earlier product development efforts. They will usually be able to identify examples of the patent elements in your products if those elements were used. Have them focus on products that were released before the accused's patent application was filed. When they identify those elements, find the corresponding source code, production images, and documentation, and provide these to your attorneys. They can often be strong resources for anticipating in software patent litigation.