After much thought I invested the colored puzzle pieces on the ribbon and what it meant.  According to the Autism Society, “The puzzle pattern of this ribbon reflects the mystery and complexity of autism.  The different colors and shapes represents the diversity of people and families living with this disorder.  The brightness of this ribbon signals hope – hope through research and increasing awareness in people like you.”

Something to think about:  In January, during the Miss America pageant, the first girl with autism competed.  Temple Grandin has improved life for animals.  Bill Gates founded Microsoft.  Henry Ford founded Ford Motor Company.  Thomas Jefferson wrote the Declaration of Independence.  Thomas Edison invented the light bulb.  Mozart wrote many pieces of beautiful music.  Mark Twain wrote Tom Sawyer.  Jessica-Jane Applegate from England won a gold metal in the last Olympic games.  Who do you know who has Autism?

In the next few weeks, take notice of how many ribbons you see as you drive everyday.  It will soon come to your attention just how many people know and care about someone with autism.  The colored puzzle pieces now bring a smile to my face as  I think of all the abilities, uniquenesses and wonderful contributions our world has to look forward to as all the children with Autism grow up and enter into our society.

The most basic principle of winning is simple, yet profound. Sun Tzu knew it in ancient times. So did Aristotle, 2300 years ago. Ignore it, and you invite disaster. Skillfully apply it, and you gain exceptional advantage.

“Where you have strength, attack. Where there is weakness, defend.” This guidance is timeless. Heed it, and learn how its subtleties resonate through every legal and business situation you manage.

By my definition, we “attack” to (1) claim victory or (2) force a response. We “defend” to actively arrange resources to protect weak targets.

In business, the very decision to enter a market is to attack—we compel customers and competitors to respond or retreat. Our victory always requires attacking relentlessly, sooner or later. Indeed, every growth move or legal claim is a new attack. But to attack without a prepared defense is foolish.

In its lowest form, defense allows survival. At its highest, defense secretly prepares us for timely attack—and ultimate victory.

Patent prosecution and litigation always involve both attack and defense.

To attack and defend wisely, first know your strengths and weaknesses. Then, see them shift in the context of a new strategy. All too often, a first-time client carries doubtful assumptions about its situation, soon only to discover a new point of view. That’s good news; new clarity awakens untapped opportunities. Assess and prepare diligently, and those opportunities can be yours.

Tawfiq I. Ali is a sophisticated litigator and adviser from Chicago, IL. To learn more about skillfully managing the twin forces of attack and defense, visit www.alilawpractice.com or call 312-546-5081.

Two recent Federal Circuit decisions point to the current score: 0 wins – 2 losses, for two patent owners.  In both cases, a successful reexamination defense successfully supports the defense against patent infringement litigation.

Accused infringer Arkema is now feeling pretty good about that big hole that reexamination burned in Honeywell’s 1234YF environmentally-friendly automobile refrigerant portfolio.  Meanwhile, Google blew up Function Media’s (FM’s) patent claims directed to online advertising.  The above graphic tells the story about what a successful reexamination can do to a patent that has as many as 68 claims.  (Kudos for this result (in Google’s favor) to my old mentor, John Phillips of Fish & Richardson!)

In Arkema v Honeywell, Arkema sued Honeywell for a declaratory judgment that the 1234YF patents were invalid or not infringed.  Even though Arkema would not directly infringe and had no customers (yet) who were infringing, Arkema was successful in bringing a DJ action against patent owner Honeywell to have the Court declare Arkema’s status with respect to prospective indirect infringement.  In parallel with this law suit in federal court, a Mexican-based company pursued reexamination of the same claims in the US Patent Office.  Currently, all claims stand rejected, pending appeal at the Patent Trial and Appeal Board.

In Function Media v Google, FM sued Google for infringement in federal court.  In its defense, Google filed its own reexamination, and got all 68 patent claims wiped out as the above graphic makes clear.

What these two cases teach us is that successful “patent defense” can advance on two fronts simultaneously, as it did for Arkema and Google.  Therefore, you do not always have to choose the timing between i) the administrative reexamination at the PTO and ii) litigation in federal courts.

Why is this conclusion somewhat surprising?  First, normally one expects the District Court to stay litigation while reexamination is pending.  But in these two cases, reexamination and litigation proceeded in parallel.

Second, the accused infringer normally expects to have to fight largely alone to defend itself from the patent, while most other players take the nuisance license to settle and get out of the way.  In a recent example of this “you are all alone” effect, Newegg fought alone as about 10 other market players paid off Soverain (Soverain v Newegg) just to get out of the case.  In the Arkema case, Arkema was alone in the lawsuit, but benefited substantially from Mexichem’s reexamination against Honeywell’s 1234YF patent.  As a result of this third party’s work, Arkema now appears to have substantial leverage while Honeywell’s patent is on life support pending the appeal.

Takeaway: Patent owners are vulnerable to simultaneous attacks from both reexaminations in the PTO and in litigation in federal court.  Patent defenders should look for opportunities to have complementary defensive moves from third parties.  But do not trust to hope in third parties!

It worked out great for Arkema, but is the “Arkema Third Party Strategy” a reliable patent defense strategy?  Perhaps the best answer is: “only if the stars align!”  Before letting cost pressures lead you to reliance on that strategy, consider, for starters, the dangers that i) third parties may do a poor job executing the defense, and waste an opportunity  (I have seen weak lawyering in several reexaminations, so low quality reexamination results may be quite common!), or ii) take positions that do not fully protect you.  For example, the third party may selectively choose not to attack ALL claims that you care about.  Remember that claims are like torpedos — if even *one* hits you, then you *lose*!  Game over!

Finally, any collusion among reexamination and litigation parties may expose both parties to greater discovery and scrutiny.  For at least these reasons, an Arkema Third Party Strategy is more a “gift” to be thankful for if you are ever so lucky than it is a reliable strategy.  So you might just have to plan on doing your own reexamination defense, which is how it worked for Google.  This is the Goggle “If-you-want-it-done-right, do-it-yourself Strategy,” but calls for great lawyering.  (Way to go, John Phillips!)

For Patent Owners, I would suggest to start to think in terms of minimizing your reexamination risk profile.  For example, separate patents with claims of narrow scope have a much lower risk of reexamination.  To obtain reexamation-ready claims at lowest cost, you can surgically target claims to cover a competitor’s product- if you know all the moving parts needed to pull off this trick!  This is what we do routinely for our clients in our standard Agile Claim™ process.  If you want to learn more about this topic, I invite you to call!  Craige Thompson.   Ph. 763-557-4909.