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How To Wield A Patent After A Settlement Axes Invalidity

  • 01.05.16
  • Law360

Robert Sokohl, a director in the firm's Electronics Group, is quoted in Law360's article, "How To Wield A Patent After A Settlement Axes Invalidity" that discusses the implications of a judge's decision finding Good Technology Corp.'s data security patents invalid and then "knocking out" the invalidity decision through a settlement.

According to the article, typically, once a patent is found invalid and then the decision is "knocked out" by a settlement, the patent is damaged. However, Sokohl stated the patent can still be useful to its owner through strategic lawyering.

"There's going to be a cloud over the patents, but it's just a cloud," said Sokohl. "At the end of the day, patents that are not invalid can be enforced."

If the patent is not saved during settlement, it can be appealed and a new strategy can be created at the Federal Circuit.

"There's always the arguments you were going to use on appeal about why you believe the judge really got it wrong," Sokohl said.

Sokohl noted that there are several reasons why a patent owner may want to craft a settlement in a decision such as this.

For one, the patent owner may have existing licenses for the patent with other companies that could seek to get out of the license had the patent been invalidated, Sokohl said. Vacating the invalidity decision keeps those licenses in play, even if the patent owner never plans to file another new infringement suit. He noted further that by using those mechanisms, a patent owner could potentially "turn around and file suit with stronger patents."

To read the full article, please visit Law360.com.

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