Defending against a patent infringement claim in a fracking operation
Our Client: A major provider of well completion services and equipment to operators of fracking wells.
Where we began: Our client and three other completion companies were sued for patent infringement.
Our approach: The main defences were that the patent was invalid as obvious over prior art and that the invention was disclosed by the plaintiff to the public more than a year prior to filing. One focus was on the plaintiff’s claim that its otherwise invalidating public disclosure was in confidence. Neil Kathol applied his experience in trade secret law/law of confidential information to identify the holes in the plaintiff’s claim of confidentiality.
The Result: The four-week "validity trial" occured in early 2017. A decision is on reserve.
IP solutions to meet business goals
Working with Shohini Bagchee, an oil and gas equipment and service provider based in Western Canada, successfully resolved a patent infringement suit. During the process, they took stock of their own IP portfolio and quickly realized that the patent protection of their own technology was sorely lacking. They approached Field Law, looking for ways to have patentability and freedom to operate play a more prominent role in their product development process.
Shohini reviewed their technology, prioritized devices and methods for patent review, prepared and filed patent applications and provided an overview of the current patent landscape. This overview identified opportunities for her client. As the relationship evolved, Shohini started to provide patent strategy, proactively advising when and where to file for protection to best meet their business goals.
As a result, the client now has a robust portfolio of patent protection with patents granted or pending in all key markets. They have also been able to work on developing tools and systems with patentability in mind, giving them the edge in a very competitive market.
The importance of an IP strategy
Having worked with an international medical equipment manufacturer to obtain a couple of patents, Shohini was the first to receive a call when they received a cease and desist letter from a competitor. Her client needed confirmation of freedom to operate and they needed to reconsider the role IP played in their industry.
Shohini reviewed the competitor’s patents and determined that the patents were most likely invalid for obviousness reasons. She responded as much to the competitor and the client was not bothered again.
This shifted their focus. With the client now understanding the value of a robust patent strategy, Shohini helped them decide what they could patent and prepared and filed for patent protection in key technology areas. The client now has a patent portfolio that covers their target products and product areas and meets regularly with Shohini to review their overall IP portfolio.
To patent or not to patent?
We worked with an Alberta oil and gas tools and services provider who was very aware of the value of patent protection and had many patents and applications in their portfolio. However, in mid-2010s, as oil prices fell, contracts became scarce and their customers were asking for steep discounts. As a result, our client needed to take a good look at their IP portfolio and decide which patents to keep and which to delay. They also needed to develop a more stringent test for deciding to patent or not.
We sat down with our client to review their tools and determine if they were still selling those tool and if so where? Could prosecution on any applications be delayed and if so what were the risks? Were there alternative ways to keep their competitors at bay without filing for patent protection immediately?
Working with the client, we tailored their patent portfolio to accommodate their budget, while still protecting their key technology areas. We’ve developed patent strategies to delay prosecution and allow the client to hold off filing for patents until the energy sector picks up. We also helped our client develop better criteria for making the decision to patent or not.