I started my legal career at a law firm that focused primarily on patent litigation, prosecution, and counseling. One of my first assignments—given to me by a partner—was a patent infringement analysis, which included comparing a client’s patented claims with a competitor’s product. This task was given to me with nominal information or direction—the partner gave me the patent, explained his client was a small company that designed and made widgets, and the client was concerned about a competitor’s rival knock-off widget. The partner wanted my input that week and we would then report back to the client.
I reviewed the widget patent, analyzed the patent’s file history and digested the cited art in the widget field. I spoke with the client’s design team to learn more about the client’s widget and the rival’s widget, and then looked at product specifications and photos of the widgets in various states of disassembly. I prepared a claim chart detailing how each and every element of the client’s widget claim was found in the rival’s widget. We had the rival dead to rights: infringement was rock solid and I saw no meaningful avenues of attack on the patent’s validity.
