In most cases, the accused infringer will also assert one or more counterclaims. Most of the time these counterclaims will be a request for a declaratory judgment of non-infringement and/or invalidity of the patent at issue.
In extreme cases, the accused infringer may assert an antitrust counterclaim. These antitrust counterclaims can take two forms:
1. When a party files a sham lawsuit
2. When the patentee commits intentional fraud upon the USPTO
The standard for a successful antitrust counterclaim is extremely high. Consequently, successful counterclaims for an antitrust violation are quite rare.
The accused infringer may also assert defenses, such as unfair competition or intentional interference with contractual relations. However, it should be noted that the patentees are provided a certain degree of privilege to make infringement claims, so that the patentees’ conduct must be very egregious to justify such counterclaims.
Special Issues for Defendants: Counterclaims
Thomas Joseph is a patent attorney in Pittsburgh, Pa. He maintains a solo practice in all areas of intellectual-property law. He has been practicing since 2001. Before starting his solo practice, Joseph was the General Counsel of Grant Street Group, a financial software firm. At Grant Street Group, he managed the company’s patent litigation against its primary competitors in the online-auction markets for tax certificates, foreclosures, tax deeds and municipal bonds. Joseph received a Bachelor of Science in Metallurgical Engineering and Materials Science from Carnegie Mellon University, a Master of Science in Materials Science and Engineering from the University of Florida and a Juris Doctorate from George Washington University.
You can contact him at www.joseph-iplaw.com.
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