Responding to a warning letter by invalidating the competitor’s patent
Our client works with large infrastructure projects all over Sweden.
The client received a warning letter from a competitor who claimed that our client was infringing one of their existing patents. The warning letter made a reference to the patent at hand and demanded that our client immediately cease the alleged infringement. The warning letter was written by a lawyer at a renowned IP law firm and contained a threat of legal proceedings and claims for damages, but also an “offer” for a settlement, based on a large compensation from our client to the competitor.
After careful strategic considerations we decided to question the validity of the competitor’s patent. Instead of “buying out” and admitting any infringement we initiated investigations of the counterpart’s patents. Our goal of course was to find prior art technology at the time when the patent application was filed. We could then use this information to invalidate the counterpart’s patents and thus make the warning letter irrelevant. With our in-house experience and expertise in performing validity searches and our ability to analyze the results of such a search, we succeeded in finding relevant technology that was known prior to the filing of the counterpart’s patent application. This means that the counterpart’s patent was falsely granted and therefore had no legal effect. The patent simply did not meet the requirements of novelty in order to obtain exclusive rights to a technical solution, i.e. a patent. We confronted the counterpart with our analysis, after which they dropped not only the Swedish patent but the entire patent family and withdrew the claims for damages from our client. Our client is now able to freely use their technology without any risk of new claims from the competitor.
"With creativity and careful analysis of known technology our partner Groth & Co managed to show that the counterpart's patent was invalid"