Software Patent Disputes

DisputeSoft's experts have extensive experience examining claims of software patent infringement and software copyright infringement

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Patent litigation and administrative proceedings can be challenging when software is involved. DisputeSoft provides support to patent attorneys in resolving disputes involving patent infringement claims before federal district courts, the International Trade Commission (ITC), and the U.S. Patent and Trademark Office Patent Trial and Appeals Board (PTAB). Our expert analysis is provided by skilled software engineers who can thoroughly analyze source code and other protectable elements in a cost-effective manner, allowing litigants to reduce their final costs while maximizing recovery and minimizing their exposure to damages.

District Court and ITC Software Patent Litigation

Our experts are experienced in providing analysis of technical issues relating to software during the discovery process and at trial in cases before both federal district courts and the ITC. We produce expert reports and are available to testify in deposition and at trial in software patent cases.

We regularly perform a variety of services in reaching opinions regarding the validity of a patent and whether the patent claims have been infringed, including: source code review, analysis of patent claims, specifications and file histories, prior art research, claim charting, and development of proposed claim constructions. We also provide testimony concerning inherent disclosure and its meaning to a person skilled in the art, factual analysis of the prosecution history and extrinsic evidence to support claim construction, and testimony regarding the effective dates of prior art references.

We provide detailed, claim-by-claim analysis to establish whether the claims recite patentable subject matter under Section 101 of the Patent Act, whether the patents at issue lack adequate written disclosure under Section 112, and whether the patent claims should be deemed invalid on the grounds of anticipation under Section 102 and obviousness under Section 103.

We have become very adept at cost-effectively tracing functionality through source code accused of infringing a patent.

We also provide technical support and expertise to attorneys and other testifying experts at latter stages in litigation, including analyzing and rebutting opposing expert opinions and preparing software demonstrations, technical presentations and other exhibits for trial.

Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Review (CBMR)

In addition to our patent litigation experience, DisputeSoft also provides expert opinions in support of petitions for review by the Patent Trial and Appeals Board (PTAB) under the provisions of the America Invents Act (AIA).   We are available to assist in proceedings for Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Review (CBMR).

In IPR, PGR and CBMR petitions and in responses to claim amendments proposed by the patent owner during the review process, the arguments of counsel cannot take the place of factually supported objective evidence such as an expert declaration or affidavit. DisputeSoft’s experts are experienced in providing written opinions and deposition testimony on technical issues relating to software. Our experts assist petitioners in construction of the claims at issue under the broadest reasonable interpretation standard, prior art research and analysis of the patent file wrapper and extrinsic evidence.

Alternatively, we also provide expert opinions in support of the patent owner’s rebuttal of the arguments made in a IPR, PGR, or CBMR petition.

Patent Protection through Reverse Engineering

Pioneering technology companies obtain thousands of new patents each year. Continuous monitoring of new competitor products is necessary to protect the massive investment required to develop such intellectual property. Reverse engineering is the process of deconstructing and analyzing a product by its subcomponents, and is one of the most effective methods of determining whether a patent owner’s intellectual property has been incorporated into a competitor’s product. At DisputeSoft, we provide reverse engineering services to assist our clients in their endeavor to continuously monitor developments in their patent landscape by providing them with information they need to determine whether their patents are being infringed.

Typically, our reverse engineering services include acquiring and disassembling competitor products to examine whether embedded software invades specific client patent claims. We use a variety of tools to assist us in our work, including forensic tools, decompilers, debuggers, packet sniffers, and bus analyzers. We trace source code and map its functions via claim charts to specific patent claims, and then work with clients to determine whether infringement elements are present. Where applicable, we also use less-intrusive methods of discovery, such as reviewing applicable literature and standards, physical inspection, and functional testing.

Through reverse engineering, we have examined operating system and controller code in mobile and desktop devices to assess interactions with hardware, communications, security, virtualization, and power management functions. We leverage the results of these investigations to assist our clients to determine the advisability of pursuing patent litigation , as well as to identify the specific patent claims for which litigation may be most effective.

Whether you are a patent owner needing assistance evaluating a competitor’s product for the presence of proprietary technology, or owner of a product accused of infringing a patent, we invite you to contact us for a confidential consultation as to how we may be of assistance.

Read about DisputeSoft’s software patent dispute cases…