Basic scenario:

  • BigCorp applies for a patent for an overly broad software independent claim requiring the elements a+b+c+d+e+f
  • The patent office rejects the application, back and forth, and BigCorp adds element g to narrow the claim.
  • The Patent office awards a patent for claim a+b+c+d+e+f+g
  • The former designer of the original software leaves BigCorp to create a startup
  • The startup creates software that loosely satisfies a+b+c+d+e+f, but visibly NOT g
  • The startup gets a written opinion of non-infringement from a reputable attorney
  • The code is clean, all new, no copyright, stolen data, etc. GitHub and Gmail are squeaky clean.
  • The startup gets customers, not stealing customers from BigCorp, just succeeding in the shadow.

What if BigCorp decides to get ornery just to be ornery? What should the startup consider in its contingency planning? More specifically, what legal budget would be roughly "enough" to defend? Or is this hypothetical, just a distraction, and don't look in the rear-view mirror?

Related: Ask Patents question General knowledge on how software patent-infringement lawsuits are evaluated.

  • This is a difficult question to answer (for example, does Startup have 'g' by the doctrine of equivalents? Will it induce infringement by controlling who performs 'g'?) basically because it will depend on your specific facts. Applying law to specific facts what you should retain an attorney to do.
    – PatKilg
    Sep 25 '13 at 2:59
  • @EntropyWins Great question. Per opinion of noninfringement (g) was added by estoppel, it's absent in the invention, and customer not induced to include it. By rights, its truly not infringing. But the attorney said, "Being right is an advantageous position in a dispute". My question is more business -- how does one brace for possibility of defending a suit when you're in the right? I read that patent suits can cost millions (which I can't afford) but i can afford several tens of thousands or more.
    – prototype
    Sep 27 '13 at 14:51
  • 1
    Well, to be perfectly honest, even having a non-infringement opinion isn't some lock-solid thing. It is, after all, an opinion. Nothing is "truely not infringing" these days until the Fed. Cir. says so. That said, generally, if an infringement suit is truly crap (read: objectively baseless, thus exceptional per 35 USC 285) you can get the plaintiff to pay attorney's fees. This is, however, quite rarely done. Read up on a recent example: ipwatchdog.com/2013/07/09/…
    – PatKilg
    Sep 28 '13 at 18:05

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