Assertion and Funding Checklist: Plaintiff Structure, Standing, Funding Disclosure, Privilege, and Fee-Shifting Evidence

By Casey Scott McKay · 2023-12-17

This checklist runs the defence of an assertion-entity case in the order the decisions actually arise, with the front-loaded steps that determine the cost curve first. It opens with the day-one structure memorandum and the supplier tenders, then standing and venue, both of which can dispose of or relocate the case before the patents are read closely. It sets out defence group formation and cost sharing, the review time bar and real party analysis, and the dispositive motion sequencing. It covers proportionality limits on discovery, funding and real-party discovery framed to succeed, and the settlement model that prices the case against the plaintiff's structure. It closes with fee record building and the collection theory that determines whether an award is worth pursuing.

IP and Technology > Patent Litigation | Checklist | Published 17 December 2023 - Updated 7 February 2026 | Casey Scott McKay - marksy.us

Summary. This checklist runs the defence of an assertion-entity case in the order the decisions actually arise, with the front-loaded steps that determine the cost curve first. It opens with the day-one structure memorandum and the supplier tenders, then standing and venue, both of which can dispose of or relocate the case before the patents are read closely. It sets out defence group formation and cost sharing, the review time bar and real party analysis, and the dispositive motion sequencing. It covers proportionality limits on discovery, funding and real-party discovery framed to succeed, and the settlement model that prices the case against the plaintiff's structure. It closes with fee record building and the collection theory that determines whether an award is worth pursuing.

Keywords: assertion checklist · structure memorandum · corporate records search · docket history · assignment chain · retained rights · standing challenge · venue preservation · transfer motion · supplier indemnity tender · defence group formation · cost sharing formula · time bar diary · real party analysis · eligibility motion · proportionality limits · funding discovery · settlement modelling · fee record · collection theory

How to use this checklist

| Phase | What it covers | |---|---| | 1 | The structure memorandum | | 2 | Tenders and notifications | | 3 | Standing | | 4 | Venue and transfer | | 5 | The defence group | | 6 | The time bar | | 7 | Review petitions | | 8 | Dispositive motions | | 9 | Discovery proportionality | | 10 | Discovery from the plaintiff | | 11 | Funding and real party | | 12 | Privilege | | 13 | Damages and comparables | | 14 | Settlement modelling | | 15 | Licence terms | | 16 | Fee record | | 17 | Collection | | 18 | Campaign capability | | 19 | For funded plaintiffs | | 20 | Cadence |

Boxes marked [Gate] must clear before an answer is filed, a petition is submitted, or a settlement is agreed.

The matter. Forty defendants, four patents, a plaintiff formed the previous year. The defendants who spent day one on the structure and week two on a group settled at a fraction of what the ones who started with claim charts paid.

Phase 1. The structure memorandum

[ ] [Gate] Pull corporate records. Formation date, jurisdiction, registered agent, disclosed members or officers.
- Why. A shell formed months before filing is a structure, and the structure predicts the case better than the patents.
- Trap. Beginning with the technical analysis, which concedes the only front-loaded advantage available.
[ ] Search the docket for the plaintiff and its counsel.
- Why. Campaign patterns — number of defendants, settlement timing, cases tried — are public and tell you the model.
- Trap. Treating the case as isolated when it is one of forty.
[ ] Reconstruct the assignment chain from the named inventors forward, using recordations under 35 U.S.C. § 261.
- Why. It is where standing defects live.
- Trap. Accepting the complaint's ownership allegation.
[ ] Identify prior owners and what each retained. Revenue share, reversion, settlement approval, field limitation.
- Why. Retained rights bear directly on substantial rights under Lone Star Silicon Innovations v. Nanya Technology.
- Trap. Looking only at the final transfer.
[ ] Check Federal Rule of Civil Procedure 7.1 disclosures.
- Why. For a shell, the emptiness of the disclosure supports a request for more.
- Trap. Accepting it as complete.
[ ] Write the one-page assessment. Plaintiff type, counterclaim exposure, funding indicators, likely clearing number, recommended sequence.

Phase 2. Tenders and notifications

[ ] [Gate] Tender to component suppliers under indemnity provisions, on receipt.
- Why. Late tender can forfeit the right, and an accepted tender can shift the entire defence cost.
- Trap. Waiting for a technical analysis before tendering.
[ ] Notify insurers.
- Why. Some policies respond to patent defence costs, and notice provisions are strict. See IP Insurance and Risk Transfer Toolkit.
- Trap. Notifying after the first invoices, which is a coverage argument.
[ ] Issue the litigation hold, naming custodians and systems and suspending retention schedules.
- Why. Federal Rule of Civil Procedure 37 sanctions for failure to preserve are severe.
- Trap. A generic company-wide email that reaches no systems.
[ ] Notify customers where indemnity flows downstream, and assess the company's own obligations.

Phase 3. Standing

[ ] [Gate] Assess whether the plaintiff held substantial rights when the complaint was filed.
- Why. 35 U.S.C. § 281 requires it and standing is measured at filing.
- Trap. Assuming a recorded assignment settles it.
[ ] Apply the Lone Star Silicon Innovations v. Nanya Technology factors. Right to exclude, scope, sublicensing, litigation control, duration, retained rights.
[ ] Serve targeted document requests for the transfer instruments and side agreements.
- Why. Courts generally permit narrow standing discovery.
- Trap. A sweeping request that draws a proportionality objection.
[ ] Check for unnamed co-inventors who never assigned.
- Why. A co-owner must join, and refusal ends the case. See Inventorship and Patent Ownership Disputes Toolkit.
- Trap. Assuming the named inventors are the correct ones.
[ ] Note that a nunc pro tunc assignment does not cure a defect existing at filing.

Phase 4. Venue and transfer

[ ] [Gate] Raise venue before or with the answer.
- Why. It is waivable, and TC Heartland v. Kraft Foods Group Brands limits residence under 28 U.S.C. § 1400(b) to the state of incorporation.
- Trap. Answering first.
[ ] Analyse the second limb. A regular and established place of business, construed narrowly by In re Cray.
[ ] File a transfer motion under 28 U.S.C. § 1404 in the alternative.
- Why. Something must remain pending if the venue challenge fails.
- Trap. An all-or-nothing venue motion.
[ ] Check whether the entity is foreign, since foreign defendants may be sued anywhere.
[ ] Consider mandamus if the ruling is adverse; the Federal Circuit has granted it on venue and transfer.
[ ] Consider a declaratory action where the correspondence supports a case or controversy and a better forum is available.

Phase 5. The defence group

[ ] [Gate] Identify co-defendants from the docket within two weeks.
- Why. Positions harden and defendants settle; a group formed late captures less of the sharing.
- Trap. Waiting until after the answer.
[ ] Execute a common interest agreement before sharing anything.
- Why. Material shared before the agreement exists is shared without protection. See Privilege and Work Product Toolkit for IP Matters.
- Trap. Circulating prior art on a group call before signature.
[ ] Define what is shared and what is not. Prior art, invalidity, eligibility, and expert work on the patents; not infringement positions, which are product-specific.
[ ] Agree a cost-sharing formula — equal, revenue-weighted, or exposure-weighted — with a settlement notification provision.
- Why. Early settlers otherwise free-ride on work the remaining defendants funded.
- Trap. No formula, which produces disputes at exactly the moment coordination matters.
[ ] Appoint lead counsel or a steering group with a decision rule and a budget.
[ ] Provide for divergence. Return or destruction, continuing confidentiality, and no adverse use when a member settles.
[ ] Coordinate review petitions so one petition with joinder replaces several — subject to each member's own time bar.

Phase 6. The time bar

[ ] [Gate] Diary the 35 U.S.C. § 315(b) date on the day of service, for every defendant in the group.
- Why. The bar runs one year from service on the petitioner, a real party in interest, or a privy.
- Trap. Calculating from the complaint's filing date rather than from service.
[ ] Run the real party analysis before any petition names a joining party.
- Why. Applications in Internet Time v. RPX makes the inquiry flexible and fact-dependent, reaching those who fund, direct, or benefit.
- Trap. Importing a time-barred party's bar into an otherwise timely petition.
[ ] Note that the determination is unreviewable.
- Why. Thryv v. Click-to-Call Technologies forecloses appeal, so an error is permanent.
- Trap. Assuming a mistake can be corrected later.
[ ] Check privity — suppliers, customers, and indemnitors whose service dates may bind the petitioner.

Phase 7. Review petitions

[ ] Decide within the first sixty days.
- Why. Early filing improves stay prospects and reduces discretionary denial risk where parallel litigation is advanced.
- Trap. A decision deferred until the bar is close.
[ ] Price the estoppel. Grounds raised or reasonably available are surrendered in district court and at the Commission on final written decision.
[ ] Assess institution likelihood on the strength of the art and the claim construction position.
[ ] [Gate] Confirm the petition improves the stay analysis.
- Why. The stay is frequently worth more than the review outcome, because it stops the cost clock the settlement number depends on.
- Trap. Filing without a stay motion prepared.
[ ] Consider post-grant review under 35 U.S.C. § 321 if within nine months of issue, since the grounds are broader.
[ ] Coordinate joinder across the group with the real party analysis completed for each.

Phase 8. Dispositive motions

[ ] Sequence cheapest first.
- Why. The settlement number tracks the projected cost curve, and an early dispositive motion flattens it.
- Trap. Saving the best argument for summary judgment, by which point the leverage has passed.
[ ] Assess eligibility under 35 U.S.C. § 101 with the Alice v. CLS Bank International framework.
- Why. It can be decided on the pleadings where claim construction is not required.
- Trap. Filing where the specification asserts a technical improvement and conventionality is factually disputed.
[ ] Seek agreement on a representative claim where the claims do not differ materially.
[ ] Preserve indefiniteness under 35 U.S.C. § 112 for claim construction.
[ ] Identify a common non-infringement position across the campaign, since a construction excluding the accused functionality resolves many cases at once.
[ ] Note that even an unsuccessful motion changes the settlement dynamic by demonstrating willingness to litigate.

Phase 9. Discovery proportionality

[ ] [Gate] Resist the plaintiff's proposed schedule.
- Why. Federal Rule of Civil Procedure 26 proportionality weighs the parties' relative access to information and resources — every factor favours a defendant facing a shell.
- Trap. Accepting a schedule built for symmetric litigation.
[ ] Negotiate custodian limits by role, with a mechanism for additions on a showing.
[ ] Negotiate date ranges tied to the damages period and the product's release.
[ ] Agree a source code protocol before production — standalone machine, no network, logged access, printing limits, designated reviewers.
[ ] Limit financial discovery to the accused products and the damages period.
[ ] Insist on specific infringement contentions early.
- Why. A campaign that cannot chart its claims against the actual product is accumulating fee exposure.
- Trap. Allowing placeholder contentions to stand.

Phase 10. Discovery from the plaintiff

[ ] Transfer instruments and side agreements, for the standing analysis.
[ ] [Gate] Prior licences and settlements.
- Why. They are the damages comparables and frequently show settlements far below the current demand.
- Trap. Accepting confidentiality objections without an attorneys-eyes-only tier.
[ ] The pre-filing investigation.
- Why. Federal Rule of Civil Procedure 11 requires one, and its absence is fee evidence.
- Trap. Not asking, and then arguing the point without support.
[ ] Communications with prior owners, which reveal retained rights and the acquisition's terms.
[ ] Valuation materials prepared for the acquisition, which are the plaintiff's own view of the portfolio.
[ ] A corporate representative deposition on formation, acquisition, valuation, and pre-filing investigation.
- Why. Frequently the most productive deposition in the case.
- Trap. Deposing on the technology instead.

Phase 11. Funding and real party

[ ] Check the district's standing orders on funding disclosure before moving.
- Why. Several districts require it as a matter of course, and the scope varies.
- Trap. Briefing a motion for relief the standing order already provides.
[ ] [Gate] Frame the request around standing and real party status, not settlement pricing.
- Why. Courts permit discovery bearing on Lone Star Silicon Innovations v. Nanya Technology standing and on the Applications in Internet Time v. RPX analysis, and refuse it where the purpose is to price the case.
- Trap. A request that plainly seeks the funder's return threshold.
[ ] Seek the commercial terms and control provisions, not the case assessments.
- Why. The assessments attract work product objections; the terms generally do not.
- Trap. A single broad request that fails on privilege for the part that would have succeeded.
[ ] Assess champerty where the jurisdiction retains it. See champerty and maintenance in litigation funding.
[ ] Consider preclusion exposure under Taylor v. Sturgell where a non-party assumed control.

Phase 12. Privilege

[ ] Execute the common interest agreement before sharing across the defence group.
[ ] Route joint work through counsel, so that shared analysis is work product under Federal Rule of Civil Procedure 26(b)(3).
[ ] [Gate] Request a Rule 502(d) order at the first scheduling conference.
- Why. Federal Rule of Evidence 502 permits an order under which disclosure does not waive, and it removes an entire category of dispute.
- Trap. Burying it in the protective order.
[ ] Negotiate categorical privilege logging rather than document-by-document.
[ ] Log shared group material with the common interest basis stated accurately.

Phase 13. Damages and comparables

[ ] Obtain the plaintiff's prior licences and build the comparability table.
[ ] Identify litigation-driven settlements, which reflect defence cost rather than value.
[ ] Apportion under 35 U.S.C. § 284, and test the plaintiff's base selection.
[ ] Check marking and notice under 35 U.S.C. § 287, which can cut the damages period substantially.
[ ] [Gate] Confirm no realistic injunction exposure under eBay v. MercExchange, since a plaintiff with no products rarely establishes irreparable harm.
- Why. It changes the settlement posture entirely.
- Trap. Negotiating as though an injunction were available.

Phase 14. Settlement modelling

[ ] Build the cost curve through each stage: dispositive motion, claim construction, close of fact discovery, expert reports, trial.
[ ] Probability-weight the outcomes at each stage, including the review petition.
[ ] Estimate the clearing number from the structure — funder return, contingency share, prior owner revenue share — and from comparable settlements in the campaign.
[ ] [Gate] Model each lever's effect. Transfer, group formation, stay, and proportionality limits each lower the curve and should lower the demand.
[ ] Time the approach. Cheapest before significant expenditure and again immediately after a favourable ruling.
[ ] Consider the campaign effect — whether settling funds the assertion against peers, and whether the company is willing to bear the cost of litigating.

Phase 15. Licence terms

[ ] Scope covering the asserted patents, their families, and patents claiming priority to them.
- Why. A licence limited to the asserted patents invites a second suit on a continuation.
- Trap. Settling narrowly to save money and paying twice.
[ ] Affiliates and successors on both sides, defined.
[ ] Have-made rights and coverage for suppliers and customers.
- Why. Downstream suits are the common follow-on.
- Trap. A release that leaves the company's customers exposed.
[ ] Release for past acts and a covenant not to sue.
[ ] Future products, at least within the defined field.
[ ] Most-favoured terms with a defined comparison mechanism, where the campaign is broad.
[ ] [Gate] Dismissal with prejudice in every pending action, in every jurisdiction.
[ ] Confidentiality, understanding that the terms may become a comparable in someone else's case.

Phase 16. Fee record

[ ] [Gate] Send a specific deficiency letter early, identifying why the claims do not read on the product, with the analysis attached, and requesting withdrawal.
- Why. Octane Fitness v. ICON Health & Fitness looks at the totality, and a documented refusal to withdraw after a specific showing is the strongest available fact.
- Trap. A general denial letter that shows nothing.
[ ] Record every subsequent notification and the response.
[ ] Document theory shifts in the infringement contentions after a defect is exposed.
[ ] Discover the pre-filing investigation and record its adequacy.
[ ] Track the campaign's settlement pattern, where public.
[ ] Preserve the discovery misconduct record separately, as an independent route.
[ ] Consider 28 U.S.C. § 1927 where the conduct is counsel's.
[ ] Request security for fees early, since some courts will require a bond from a shell.
[ ] Be selective. Moving in every case won destroys credibility for the case that deserves it, and Highmark v. Allcare Health Management Systems makes a well-founded award durable.

Phase 17. Collection

[ ] [Gate] Decide the collection theory before spending on the motion.
- Why. An award against an assetless shell is a moral victory unless someone else can be reached.
- Trap. Winning fees and recovering nothing.
[ ] Identify reachable parties. Parent entities, funders, prior owners with revenue shares, and counsel on contingency.
[ ] Assess alter ego and veil-piercing under the applicable state law.
[ ] Assess control-based theories under Taylor v. Sturgell, where a non-party assumed control of the litigation.
[ ] Consider real party findings from the review proceeding as support.
[ ] Weigh the campaign effect. A single collected award changes the economics of every remaining case, which can justify pursuing collection beyond its own value.

Phase 18. Campaign capability

[ ] A docket watch on known assertion entities and their counsel in the company's technology areas.
[ ] An assignment watch on transfers from operating companies to vehicles under 35 U.S.C. § 261, which lead campaigns.
[ ] A prior art library, indexed by technology, built from past defences.
[ ] Standing relationships with defence group organisers, search vendors, and counsel who have faced the same plaintiffs.
[ ] A structure-analysis protocol reduced to a checklist so every complaint gets it.
[ ] A review-petition decision framework with criteria and a timeline, since the time bar does not accommodate deliberation.
[ ] Settlement authority tiers agreed in advance.
[ ] An indemnity map of which suppliers cover which components.
[ ] Insurance position known before a complaint rather than after.

Phase 19. For funded plaintiffs

The mirror image, because firms act on both sides and the requirements differ.

[ ] [Gate] Complete the chain of title before filing.
- Why. Standing is assessed at filing under 35 U.S.C. § 281, the Lone Star Silicon Innovations v. Nanya Technology analysis is exacting, and a nunc pro tunc assignment does not cure.
- Trap. Filing to beat a limitations concern with a defective chain.
[ ] Structure funding without control. Capital and a return for the funder; strategy and settlement authority with the client and counsel.
- Why. It preserves privilege arguments, avoids real party complications, and answers champerty where it survives.
- Trap. A veto over settlement, which converts a funder into a real party.
[ ] Document the separation expressly, and make the practice match the document.
[ ] Anticipate disclosure. Several districts require it by standing order and the trend is toward more.
[ ] Protect the work product. Share assessments under confidentiality and a common interest agreement, on the Federal Rule of Civil Procedure 26(b)(3) analysis.
[ ] Conduct a real pre-filing investigation under Federal Rule of Civil Procedure 11, and keep it.
[ ] Chart the claims against the actual accused product, not against the standard or the category.
[ ] Withdraw claims shown to be baseless, promptly and in writing.
- Why. It is the single most effective answer to a later 35 U.S.C. § 285 motion.
- Trap. Maintaining a claim for settlement leverage after its defect has been demonstrated.
[ ] Build the case as a damages case, since eBay v. MercExchange makes injunctive relief unlikely for a non-practising plaintiff.
[ ] Anticipate real party arguments under Applications in Internet Time v. RPX and preclusion under Taylor v. Sturgell.

Phase 20. Cadence

[ ] Day 1. Structure memorandum.
[ ] Days 3–5. Supplier tenders, insurance notification, litigation hold.
[ ] Days 5–10. Venue and transfer analysis; time-bar diary.
[ ] Days 10–14. Co-defendant identification and group approach.
[ ] Days 14–21. Claim reading, strongest non-infringement and eligibility positions, first deficiency letter drafted.
[ ] Days 21–30. Venue and transfer motions filed with the answer; deficiency letter sent and docketed.
[ ] Days 30–40. Group formed, cost formula agreed, prior art commissioned jointly.
[ ] Days 40–50. Eligibility motion drafted; review petition decision taken with the real party analysis complete.
[ ] Days 50–60. Discovery schedule negotiated with proportionality limits; standing requests served; settlement model built.
[ ] Monthly thereafter. Fee record updated; campaign docket monitored; settlement model refreshed against actual spend.
[ ] On any favourable ruling. Settlement approach within days, because the window is short.
[ ] On any settlement by a group member. Cost-sharing reconciliation and confirmation that shared material is handled per the agreement.
[ ] At conclusion. Post-mortem into the campaign capability — what the structure memorandum missed, what the group did well, and what the prior art library should retain.

Phase 21. The structure memorandum template

Plaintiff. [Entity], formed [date] in [jurisdiction]. Registered agent [name/address]. Disclosed members or officers: [list / none disclosed]. Federal Rule of Civil Procedure 7.1 disclosure: [content / empty].

Docket history. [N] actions filed by this plaintiff since [date]; [N] by the same counsel on overlapping patents. Dispositions: [N] settled, [N] dismissed, [N] adjudicated, [N] tried. Median time to dismissal: [days]. Settlement amounts where public: [range].

Patents. [Numbers], issued [dates], expiring [dates]. Technology: [description]. Prior assertions of the same patents: [cases].

Assignment chain. [Inventors] → [original assignee, date, reel/frame] → [intermediate vehicle, date, reel/frame] → [plaintiff, date, reel/frame]. Gaps identified: [list / none]. Unnamed potential co-inventors: [assessment].

Retained rights. [Prior owner] retains [revenue share / reversion / settlement approval / field limitation / none], per [instrument]. Standing assessment under Lone Star Silicon Innovations v. Nanya Technology: [sound / challengeable, on X basis].

Related entities. Common members, addresses, counsel, or patents with: [entities].

Funding indicators. [Contingency counsel / disclosed funder / unexplained capacity to litigate / none apparent].

Assessment. Plaintiff type: [shell / acquisition vehicle / operating company / institution / individual]. Counterclaim exposure: [none / limited / substantial]. Injunction exposure under eBay v. MercExchange: [none realistic / assess]. Estimated clearing number: [range, with basis]. Recommended sequence: [venue / standing / group / eligibility / review].

Phase 22. Three worked situations

The nuisance campaign. Forty defendants, four patents, demands calibrated below each defendant's cost of defence. The correct response is almost entirely mechanical: tender to suppliers, raise venue, form the group, file the cheapest dispositive motion, and negotiate proportionality limits. The merits are barely engaged and the outcome is a settlement at a fraction of the demand. A defendant that instead commissions a full technical analysis in month one has spent the settlement value before the first motion.

The serious assertion. A well-capitalised plaintiff with strong patents, a real infringement read, and a demonstrated willingness to try a case. Every step in this checklist still applies, and none of it resolves the matter. The structure memorandum is what tells you which case you have, and confusing the two is the most expensive error available in either direction — treating a serious case as a nuisance campaign, or spending campaign-defence money on a case that needs a real defence.

The standing collapse. The chain shows the prior owner retained approval over settlement and a majority of proceeds. Under Lone Star Silicon Innovations v. Nanya Technology the plaintiff may not hold all substantial rights, and the prior owner — in liquidation, with a trustee unwilling to fund litigation — must be joined. That finding, from a day of public records work and a narrow document request, is worth more than any prior art search in the case.

Phase 23. Working with other advisers

[ ] Local counsel in the plaintiff's district, for venue and transfer practice and the judge's actual preferences.
[ ] Prior art search vendors, engaged by the group so cost is shared and results are common.
[ ] Technical experts on the accused product, engaged early enough to inform the position rather than defend one already taken.
[ ] Review counsel where the petition strategy diverges from district court strategy and the estoppel needs independent assessment.
[ ] Corporate investigators where public records are thin, particularly on offshore vehicles and beneficial ownership.
[ ] Insurance brokers, on notice provisions and coverage for defence costs.
[ ] Procurement, for the indemnity map and tender.
[ ] Finance, because the settle-or-fight decision is a cost curve against a demand.
[ ] Communications, where the campaign is public.

Phase 24. Metrics

[ ] Days from service to structure memorandum. Target: two.
[ ] Days from service to supplier tender. Target: five.
[ ] Venue and transfer motions filed before or with the answer. Yes or no.
[ ] Days from service to group formation. Target: twenty-one.
[ ] Time-bar diary completed for every group member. Yes or no.
[ ] Shared cost per defendant against solo-defence estimate.
[ ] Projected cost curve at schedule agreement against the plaintiff's proposed schedule.
[ ] Demand movement after each lever — transfer, group, stay, proportionality.
[ ] Fee record completeness. Deficiency letters sent, responses recorded, theory shifts documented.
[ ] Settlement multiple against the estimated clearing number.
[ ] For repeat campaigns: cost of the second campaign against the first.

Phase 25. If you can only do four things

[ ] Write the structure memorandum on day one. Public records, one day, and it determines everything.
[ ] Tender to suppliers immediately, before any technical analysis.
[ ] Raise venue before answering, with a transfer motion in the alternative.
[ ] Diary the 35 U.S.C. § 315(b) bar on the day of service, because Thryv v. Click-to-Call Technologies makes an error permanent.

Phase 26. Scoping and the client conversation

[ ] Say at the outset that the demand is priced against the defence budget, not against the patents. Clients find this counterintuitive and it reframes every subsequent decision.
[ ] Present the cost curve, not a legal opinion. Stages, projected spend, probability-weighted outcomes, and the demand overlaid.
[ ] Identify which case this is. Nuisance campaign or serious assertion. The structure memorandum answers it and the answer determines the budget.
[ ] Explain the group. Engineering-led clients resist sharing with competitors; the answer is that the sharing is confined to the patents, which are common, and excludes product information, which is not.
[ ] Set the review decision deadline explicitly, because the 35 U.S.C. § 315(b) clock does not accommodate a deliberative process.
[ ] Agree settlement authority in advance, at tiers, so that a nuisance-value resolution does not require an escalation and a significant one gets proper attention.
[ ] Be candid about fee recovery. A 35 U.S.C. § 285 award against a shell is frequently uncollectable, and pursuing one is a campaign-level decision rather than a case-level one.
[ ] And say what the realistic best outcome is. In most campaigns it is a modest settlement reached early on good terms — not a judgment, and not a fee award.

Phase 27. The one-page position

Assertion matter — [defendant], [date]. Plaintiff [entity], formed [date]; type [shell / vehicle / operating / institution]; prior filings [N], settled [N], tried [N]. Chain: [summary]; retained rights [list]; standing assessment [sound / challengeable]. Venue: incorporation [state]; place of business in district [yes/no]; motion filed [date]; transfer motion filed [date]. Tenders: [suppliers, dates, responses]; insurance notified [date]. Group: [N] members; agreement [date]; cost formula [type]; shared spend [amount]; per-defendant saving [estimate]. Time bar: service [date]; 35 U.S.C. § 315(b) deadline [date]; real party analysis [date]; petition [filed/declined]. Dispositive: eligibility motion [filed/assessed]; indefiniteness [preserved]. Discovery: custodians [N]; range [dates]; source code protocol [date]; plaintiff production [N] documents; prior licences obtained [N]. Funding discovery [sought/obtained/denied]. Fee record: deficiency letters [dates]; theory shifts [N]; security requested [date]. Damages: marking and notice under 35 U.S.C. § 287 [assessed]; comparables [N]; injunction exposure under eBay [none realistic]. Settlement: cost curve [figures by stage]; clearing estimate [range]; current demand [amount]; authority [tier]. Recommended actions: [file eligibility motion / negotiate custodian limits / take the corporate deposition / approach settlement after the stay ruling].

Phase 28. What this costs

[ ] The structure memorandum. One day of public records work, and the highest-value day in the matter.
[ ] Tenders and notifications. Hours, and an accepted tender can move the entire defence cost to a supplier.
[ ] Venue and transfer motions. Modest, decided early, and they change the forum, the timetable, and the cost together.
[ ] The defence group. An agreement and a formula; sharing typically cuts invalidity and prior art cost by an order of magnitude per defendant.
[ ] An eligibility motion. A fraction of claim construction and potentially dispositive.
[ ] A review petition. Substantial, plus surrendered grounds, and worth it where institution is likely and a stay follows — because the stay stops the clock the demand is anchored to.
[ ] Proportionality practice. Days of negotiation removing months of review.
[ ] The fee record. Incremental to work already being done.
[ ] Against all of it: the demand, which tracks the cost curve. Every lever that lowers the curve lowers the demand, which is why sequencing matters more than total spend and why a budget concentrated in the first sixty days outperforms one spread across three years.

[ ] And for a company facing repeat campaigns, build the capability once. A standing protocol, a prior art library, and pre-agreed authority tiers turn the second campaign into a fraction of the first — a governance conclusion rather than a litigation one, and one that belongs in front of a general counsel.

Outcome. The structure memorandum took a day and reframed the matter: a shell formed fourteen months earlier, patents from a liquidated operating company through an intermediate vehicle that retained settlement approval rights, and eleven prior cases with nine settlements and no trials. Two supplier tenders were accepted, shifting part of the defence. A venue motion under TC Heartland v. Kraft Foods Group Brands with a transfer motion in the alternative moved the case to the defendant's home district. Eighteen of twenty-two co-defendants formed a group, cutting shared invalidity cost by roughly an order of magnitude each. The retained settlement-approval right supported a standing challenge that forced joinder of the prior owner. A review petition, filed inside the 35 U.S.C. § 315(b) window with the real party analysis completed, was instituted on two patents and produced a stay that stopped the cost clock at month ten. Two patents were held unpatentable; the remaining two faced a pending eligibility motion. Settlement came at month eighteen for a small fraction of the opening demand, on a licence covering the family, affiliates, suppliers, and successors. The merits were reached only at the Board.

Key Authorities at a Glance

| Authority | Where it applies | |---|---| | 35 U.S.C. § 281 | Phase 3 | | 35 U.S.C. § 261 | Phases 1, 3 | | 35 U.S.C. § 271 | Phase 8 | | 35 U.S.C. § 101 | Phase 8 | | 35 U.S.C. § 112 | Phase 8 | | 35 U.S.C. § 284 | Phase 13 | | 35 U.S.C. § 285 | Phases 16, 17 | | 35 U.S.C. § 311 | Phase 7 | | 35 U.S.C. § 315 | Phases 6, 11 | | 28 U.S.C. § 1400 | Phase 4 | | 28 U.S.C. § 1404 | Phase 4 | | 28 U.S.C. § 1927 | Phase 16 | | TC Heartland v. Kraft Foods Group Brands | Phase 4 | | In re Cray | Phase 4 | | Lone Star Silicon Innovations v. Nanya Technology | Phase 3 | | Applications in Internet Time v. RPX | Phases 6, 11 | | Thryv v. Click-to-Call Technologies | Phase 6 | | Alice v. CLS Bank International | Phase 8 | | Octane Fitness v. ICON Health & Fitness | Phase 16 | | Highmark v. Allcare Health Management Systems | Phase 16 | | Taylor v. Sturgell | Phase 17 | | eBay v. MercExchange | Phase 14 | | Fed. R. Civ. P. 7.1 | Phases 1, 11 | | Fed. R. Civ. P. 11 | Phase 16 | | Fed. R. Civ. P. 26 | Phases 9, 12 | | Fed. R. Civ. P. 37 | Phase 2 |

The five things people get wrong

Reading the patents before reading the plaintiff. The structure memorandum costs a day and determines the strategy; the technical analysis costs weeks and rarely changes the outcome.

Answering without raising venue, waiving the TC Heartland v. Kraft Foods Group Brands defence that reshaped this practice.

Missing the 35 U.S.C. § 315(b) time bar, which Thryv v. Click-to-Call Technologies makes unreviewable — a permanent error made in the first weeks.

Settling alone in a campaign, funding the assertion against your competitors and forfeiting the sharing that inverts the model.

Building no fee record, then discovering that the file assembled for the merits does not support a 35 U.S.C. § 285 motion.