STRATEGIC CONSIDERATIONS WHEN ASSERTING DEFENSES AGAINST A CLAIM FOR INFRINGEMENT OF A PATENT THAT READS ON AN INDUSTRY STANDARD

Mark A. Flagel, and Michael J. Lawrence

1/01/2005
(Original Publish Date: 4/25/2002)

Over the past decade, industry-wide standards have played an increasingly important role in the commercialization of new technologies. Courts have tried keep pace with this trend by balancing the principles of antitrust law and intellectual property rights. Today, it is well settled that a patent owner may be found guilty of some form of unfair competition or abuse of patent rights by enforcing its patent against a party practicing an industry standard where the owner, having encouraged the adoption of the standard, failed to notify the standard-setting body that it held a patent covering the standard prior to the standard's adoption. For the accused infringer who practices the standard, that party can raise a number of affirmative defenses against a claim for patent infringement. Alternatively, the accused infringer may wish to adopt a more aggressive stance and plead counterclaims against the patentee. This article addresses the various legal options available to the accused infringer in the standard-setting context. (Article is on pages 47-64)