Benjamin Jensen

Whenever a company finds itself in the cross-hairs of a cease-and-desist letter or patent infringement lawsuit, a license may not be a viable option. That is often the case when the patent holder is a competitor intent on enforcing a patent against its rivals… The lesson to be taken away is that the efficacy of a design-around is likely to depend on how significant the change is in terms of the claimed invention’s novelty and/or functionality. One should also consider the possibility of incorporating changes that make use of long-standing prior art techniques, methods or elements, especially any that were cited by the patent examiner, in response to which prior art the patentee either amended its claims or distinguished its invention from such prior art during the course of prosecution.