Patent Litigation: Responding to Invalidity Contentions

Patent litigation can move fast—and one of the most critical phases is responding to invalidity contentions. Defendants typically challenge the asserted claims based on alleged prior art and arguments around anticipation, obviousness, or indefiniteness. For plaintiffs, how you respond can shape the entire litigation strategy and outcome.

That’s where Your Patent Counsel comes in.

We Decode the File Wrapper—Fast

Our team specializes in complex patent prosecution consulting. We don’t just skim your file history—we mine it for claim scope arguments, amendments, disclaimers, and examiner statements. These can be leveraged to narrow or eliminate invalidity defenses.

We respond to invalidity contentions with arguments and mine for key statements in the file wrapper record. This supports the notion that a reference is substantially the same prior art and arguments as those already presented during prosecution and considered by the Examiner.

We Understand How the PTO’s Record Impacts Litigation

Your Patent Counsel bridges the gap between prosecution and litigation. With extensive experience in both patent prosecution, Inter Partes Review (IPR) defense, and litigation, we’re uniquely positioned to anticipate how your file history will be interpreted in court. We know how best to respond to references that were already considered (or could have been).

We Draft Strategic, Substantive Responses

When invalidity contentions allege anticipation or obviousness based on prior art, we help build robust responses that:

• Highlight distinctions between the art and the claim language.

• Point to arguments or amendments made during prosecution that distinguish the reference.

• Challenge the motivation to combine in obviousness theories.

• Support arguments with expert testimony.

• Leverage secondary considerations of non-obviousness (if available).

  
  

We don't just help with the technical arguments—we help craft the narrative.

Why Work With Us?

Your Patent Counsel is led by a former IP law firm partner. This expert has personally handled over 650 patent applications, served as second chair in patent trials, and represented clients in over 20 IPRs. We know how to support litigation teams when the pressure is high and the deadlines are tight.

Whether you need a deep dive into the prosecution record, help interpreting prior art, or a second set of eyes on your response strategy—Your Patent Counsel is your partner in high-stakes litigation.

The Importance of Timely Responses

In patent litigation, timing is crucial. Delays in responding to invalidity contentions can weaken your position. It can also lead to missed opportunities to present strong arguments. Our team ensures that your responses are timely and strategically sound.

Tailored Strategies for Unique Cases

Every patent case is unique. We understand that a one-size-fits-all approach won't work. Our team tailors strategies to fit the specific needs of your case. This personalized approach helps in addressing the nuances of your situation effectively.

Building a Strong Defense

Invalidity contentions can be daunting. However, with the right strategies, you can build a strong defense. Our expertise allows us to identify the best arguments and evidence to support your position. We work diligently to ensure that your case is well-prepared for any challenges that may arise.

Conclusion

Need help responding to invalidity contentions in a current case? Contact us today for expert support tailored to your case strategy. With Your Patent Counsel, you gain a partner dedicated to navigating the complexities of patent litigation effectively.

By leveraging our experience and insights, you can enhance your litigation strategy and improve your chances of a favorable outcome.

Schedule an Initial Consultation