Case Study: Defending Against Patent Infringement Claims for a Leading Software Solutions Provider

Successfully managing critical international patent filings under extreme time constraints for a leading medical equipment manufacturer.

Medical Devices | Global IP Strategy | PCT Filings

Client Overview

Our client is a renowned software solutions company with an extensive portfolio of clients, including several Fortune 500 companies. The client develops innovative software tools used across multiple industries, including finance, healthcare, and logistics. Due to their market leadership and innovation, the company was targeted with a patent infringement accusation from a competitor, which threatened to disrupt their business operations.

Challenge

The client was accused of infringing on a competitor’s patented technology. In support of the accusation, the competitor supplied claim charts depicting alleged infringement by the client’s software. The client sought anovIP’s assistance in critically examining these claim charts, providing an in-depth analysis of their validity, and assessing whether the infringement claim was substantiated.

Assessing the strength of the claim charts provided by the accuser.
Determining the validity of the infringement claims, considering both literal and constructive infringement.
Conducting a thorough analysis of the evidence supporting the infringement claims.
Providing the client with actionable insights to defend against the claims and mitigate potential legal and financial risks.

Our Approach

At anovIP, we utilized our cross-disciplinary expertise to provide a comprehensive, technical, and strategic analysis of the claim charts and infringement evidence. The following steps were taken to address the challenge

1. Cross-Disciplinary Collaboration

We formed a specialized team drawn from our various divisions to ensure the analysis was both legally rigorous and technically sound

anovIP Analytics: Our patent analytics team performed a detailed reverse claim mapping analysis, comparing each claim element with the accused product to assess literal infringement.
anovIP App (Technology Transfer & Licensing): Our technical experts, including software engineers and patent specialists, analyzed the technological aspects of the accused product and reviewed the technical specification of the patents.
anovIP Paralegal: Our paralegals assisted with document management, ensuring that all supporting evidence was thoroughly examined and accurately incorporated into the analysis.

2. Claim Construction and Legal Analysis

The team studied each claim of the patent in the context of the supporting specification and relevant case law. We used established legal principles to:

Formulate claim construction: Our legal experts, in coordination with the technical team, reconstructed the claims to determine their precise scope.
Perform reverse claim mapping: This process helped us trace each element of the claim to its corresponding component in the accused product, identifying potential literal infringement.
Determine constructive infringement: Beyond literal infringement, we assessed whether the accused product performed the same function in substantially the same way, leading to constructive infringement.

3. In-Depth Evidence Evaluation

Our Patent Analytics division conducted a detailed review of the provided claim charts to identify gaps, assumptions, and potential misinterpretations that could weaken the infringement claims. We:

Analyzed the strength of each claim chart, verifying the accuracy and completeness of the evidence.
Identified critical gaps and misassumptions in the claim charts, which helped us understand why the infringement claim might be unfounded.
Evaluated the source of the evidence used in the charts, checking for inconsistencies or overstatements that could undermine the validity of the infringement case.

4. “Whole” Claim to Product Mapping

Our team conducted a full claim-to-product mapping analysis to determine the exact nature and extent of the alleged infringement. This was done by:

Comparing the entire claim, not just individual elements, with the accused product.
Assessing whether the product as a whole mirrored the functionality or technology described in the patent claims.
Evaluating whether any features of the product fell outside the scope of the patent’s claims.

5. Expert Commentary

Our technical experts provided detailed insights into the strengths and weaknesses of the claim charts. They explained the nuances of each element, offering commentary on the likelihood of the client’s infringement, based on the technical evidence and legal arguments.

Deliverables & Results

Deliverables

A comprehensive report outlining the findings of our reverse claim mapping analysis, claim-to-product mapping, and evidence evaluation.

The report included a negation of the infringement acquisition, providing a clear explanation of why the client’s product did not infringe on the competitor’s patents.
Expert technical insights: Detailed commentary on each claim element’s strength, identifying critical gaps in the provided claim charts.
Strategic defense recommendations: Legal strategies to effectively address the infringement claim and protect the client’s interests.

Infringement Acquisition Defense

The analysis provided the client with the necessary technical and legal support to refute the infringement accusation. With this data, the client was empowered to engage in negotiations with the accuser and take swift action to protect their reputation.

Results

With the insights provided by our detailed report, the client was able to successfully

Negotiate the infringement acquisition: Armed with technical evidence and expert commentary, the client presented a strong defense to the accuser, demonstrating that the infringement claim was not valid.
Issue a defamation notice: In addition to refuting the infringement claim, the client issued a defamation notice to the accuser, warning them of potential legal consequences if they continued with the false allegations.

Why Clients Trust anovIP

The success of this case highlights the value of partnering with anovIP for IP-related challenges. Here’s why clients trust us:

Cross-Disciplinary Expertise

Our team’s ability to integrate technical, legal, and industry expertise enables us to provide holistic and comprehensive IP solutions.

Deep Technical Knowledge

Our experts in anovIP Analytics and anovIP App (Technology Transfer & Licensing) bring advanced knowledge of the client’s industry and technology, ensuring that our analyses are not only legally sound but technically accurate.

Thorough, Actionable Insights

Our reports go beyond simple analysis, offering clients actionable insights that help them make informed decisions and develop effective strategies.

Global Reach with Local Insights

With our extensive global network and local knowledge of patent law across multiple jurisdictions, we provide tailored advice and solutions suited to each client’s specific market and legal landscape.

Client Feedback

“ anovIP’s deep technical understanding and cross-disciplinary approach were instrumental in helping us navigate a complex patent infringement case. Their detailed analysis of the claim charts not only saved us from a potentially damaging lawsuit but also empowered us to take proactive action against false claims. We have full confidence in anovIP’s ability to protect our intellectual property in future cases.”

anovIP’s Expertise

This case study demonstrates anovIP’s unique ability to handle complex patent infringement cases by combining legal expertise with technical insight. Our client was able to successfully defend their software solution from an unfounded infringement claim, thanks to our strategic analysis and detailed reporting. Whether you are facing an infringement challenge or need support in evaluating the strength of a claim, anovIP offers the expertise, experience, and global network to safeguard your intellectual property effectively.

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