Patent Case Assessment Checklist: Standing, Venue, Prior Art, Exposure, and Budget

By Casey Scott McKay · 2026-01-26

The first ninety days of a patent case decide most of what follows, and almost all of the decisive work is cheap. This checklist runs the assessment in nine phases: preserve and triage, run the complete defenses that end cases in days, tender and notify, test venue and standing, screen the claims for eligibility and divided performance, commission the prior art search, decide the post-grant question, build the exposure model, and set the budget against it. Each box gives the reason, the authority, and the trap. Boxes marked as gates should clear before any substantial spending. The checklist is written from the defense chair but every item has a plaintiff-side mirror, and those are noted. A worked matter runs throughout.

IP and Technology > Patent Litigation | Checklist | Published 26 January 2026 - Updated 7 April 2026 | Casey Scott McKay - marksy.us

Summary. The first ninety days of a patent case decide most of what follows, and almost all of the decisive work is cheap. This checklist runs the assessment in nine phases: preserve and triage, run the complete defenses that end cases in days, tender and notify, test venue and standing, screen the claims for eligibility and divided performance, commission the prior art search, decide the post-grant question, build the exposure model, and set the budget against it. Each box gives the reason, the authority, and the trap. Boxes marked as gates should clear before any substantial spending. The checklist is written from the defense chair but every item has a plaintiff-side mirror, and those are noted. A worked matter runs throughout.

Keywords: patent case assessment, litigation hold, chain of title, exclusive licensee standing, co-owner joinder, exhaustion, implied license, venue analysis, regular and established place of business, transfer motion, prior art search, post-grant timing, eligibility screen, divided infringement screen, marking analysis, exposure ceiling, defense budget, indemnity tender, insurance notice, fee shifting record

How to use this checklist

| Phase | What it covers | When | |---|---|---| | 1 | Preserve and triage | Week one | | 2 | The complete defenses | Weeks one to two | | 3 | Tender and notice | Week one | | 4 | Venue and standing | Weeks two to four | | 5 | Claim screens | Weeks two to four | | 6 | Prior art search | Month two | | 7 | The post-grant decision | Month six | | 8 | Exposure model | Month one, updated throughout | | 9 | Budget and staffing | Month two |

Boxes marked [Gate] should clear before substantial spending begins.

The matter. An equipment manufacturer incorporated in Delaware, operating in Ohio, sued in a fast Texas district by an entity with no products. The decisive facts were all available in the first ninety days.

Phase 1. Preserve and triage

[ ] Issue the litigation hold immediately, scoped to the accused product.
- Why. Development records, sales and pricing data, and communications about the plaintiff or the patent.
- Trap. A hold so broad nobody follows it, or so narrow it misses the pricing history.
[ ] Read the patent claims before reading the complaint.
- Why. The claims decide the case; the complaint describes it.
[ ] Identify precisely which claims are asserted.
[ ] Identify the accused product by model, version, configuration, and period.
- Trap. Accepting a generic product-line allegation, which conceals variation on the contested element.
[ ] Pull the file wrapper and the assignment records.
- Why. Both public, both cheap, both frequently dispositive.
[ ] Confirm the patent is in force.
- Authority. 35 U.S.C. § 154(a); 35 U.S.C. § 41(b); 37 C.F.R. § 1.321.
[ ] Do not ask engineering to assess infringement by email.
- Trap. A discoverable document written by someone who has never read a claim.

Phase 2. The complete defenses

[ ] [Gate] Inventory every license the client might hold.
- Why. Through a parent, a subsidiary, an acquisition, a supplier's pass-through rights, a portfolio agreement, or a standards commitment.
- Trap. Nobody in the legal department knowing what the company acquired five years ago.
[ ] Check exhaustion.
- Why. An authorized sale exhausts rights in that article, which is a complete answer for a reseller or refurbisher.
[ ] Check implied license.
- Why. Particularly where the patentee sells a component with no substantial non-infringing use.
[ ] Check whether the patent was declared essential to a standard.
- Why. A licensing commitment changes injunction risk and the royalty range.
[ ] Run the marking analysis.
- Authority. 35 U.S.C. § 287(a).
- Why. Not a complete defense, but it can remove most of the exposure in a week.
[ ] Apply the six-year limitation.
- Authority. 35 U.S.C. § 286.

Phase 3. Tender and notice

[ ] [Gate] Tender to component suppliers in writing within the first week.
- Why. The obligation is contractual, most agreements require prompt written tender, and delay can forfeit it.
[ ] Notify every insurer.
- Why. Advertising injury under a general liability policy, technology errors and omissions, and any specialty patent coverage.
- Trap. Late notice, which is a real coverage defense independent of the merits.
[ ] If the client is a customer, tender upward and consider the customer suit exception.
- Why. A manufacturer stepping forward can support a stay of the customer case.

Phase 4. Venue and standing

[ ] Test venue against the statute, not against habit.
- Authority. 28 U.S.C. § 1400(b).
- Why. State of incorporation, or a district where the defendant committed infringing acts and has a regular and established place of business — a physical place, regular and established, that is the defendant's own.
- Trap. Treating a remote employee's home office as the company's place of business, in either direction.
[ ] Move to dismiss or transfer where venue is improper.
- Authority. 28 U.S.C. § 1406; Fed. R. Civ. P. 12.
[ ] Move to transfer for convenience where venue is proper but inconvenient.
- Authority. 28 U.S.C. § 1404(a).
- Why. Support it with declarations about where the engineers and records are, not with argument.
[ ] Build the chain of title from each named inventor forward.
- Authority. 35 U.S.C. § 261.
[ ] Check whether an inventor ever executed an assignment.
- Trap. An employment agreement promising future assignment, which does not itself transfer title.
[ ] Check the acquisition history.
- Trap. An asset purchase schedule that omits the patent.
[ ] Confirm the plaintiff held the rights when the complaint was filed.
- Authority. 35 U.S.C. § 281.
[ ] Check whether accrued claims were assigned.
- Why. Without that clause the plaintiff recovers only from the transfer date, which is frequently worth years.
[ ] Check for co-owners.
- Why. All must ordinarily join, each may license independently, and a license from one is a defense against all.
[ ] If the plaintiff is an exclusive licensee, read the license for all substantial rights.
- Why. Scope of exclusivity, right to sue, right to sublicense, retained approvals, duration, and control of prosecution.

Phase 5. Claim screens

[ ] [Gate] Identify who performs each step of every asserted method claim.
- Why. Divided infringement is available at the pleading stage and is frequently the strongest argument in software and platform cases.
- Authority. 35 U.S.C. § 271(a).
[ ] Screen the claims for eligibility.
- Authority. 35 U.S.C. § 101.
- Why. Result-oriented claims implemented on generic components are the profile that fails; claims reciting a specific technical mechanism are not.
- Trap. Filing the motion where the answer is uncertain, which spends credibility the construction brief will need.
[ ] Screen for indefiniteness and means-plus-function problems.
- Authority. 35 U.S.C. § 112.
- Why. For a computer-implemented function the corresponding structure is the algorithm, and a specification lacking one is vulnerable.
[ ] Identify the single term whose construction wins the case.
- Trap. Eleven proposed constructions, which signals the term has not been identified.
[ ] Rank every element of each independent claim by confidence.
- Why. The case turns on the least confident one.
[ ] Screen the indirect theories for a knowledge date.
- Authority. 35 U.S.C. § 271(b); 35 U.S.C. § 271(c).
[ ] Run the territorial screen.
- Authority. 35 U.S.C. § 271(f); 35 U.S.C. § 271(g).

Phase 6. Prior art search

[ ] Read the file wrapper before commissioning anything.
- Why. It identifies the limitation the examiner allowed over, which is where the search should aim.
[ ] Aim the search at that limitation, not at the field.
- Trap. A general search, which returns volume rather than the reference that matters.
[ ] Prioritize sources examiners search poorly.
- Why. Non-patent literature, conference proceedings, standards contributions, foreign patent documents, product manuals, and theses.
[ ] Search the client's own history.
- Why. Products sold before the priority date and internal development records are prior art no search firm can find.
[ ] Verify public availability dates for every candidate reference.
- Authority. 35 U.S.C. § 102.
[ ] Ask for a materiality assessment against the examiner's art, not a reference list.

Phase 7. The post-grant decision

[ ] Calendar the one-year bar and set the real decision date at month six.
- Authority. 35 U.S.C. § 315(b).
[ ] Check whether any privy or real party in interest was served earlier.
[ ] Confirm the best invalidity argument is documentary.
- Why. Only patents and printed publications under sections 102 and 103 are available at the Board.
- Authority. 35 U.S.C. § 311.
[ ] Inventory the estoppel cost.
- Authority. 35 U.S.C. § 315(e).
[ ] Weigh the district court trial date.
- Why. A fast date makes discretionary denial likely and argues for filing early or not at all.
[ ] Check whether the nine-month post-grant window is open.
- Authority. 35 U.S.C. § 321.
[ ] Consider ex parte reexamination where the bar has passed.
- Authority. 35 U.S.C. § 302.
[ ] Plan the stay motions: one on filing, one after institution.

Phase 8. The exposure model

[ ] [Gate] Build it in month one, on one page.
[ ] Compute the ceiling.
- Why. Accused units in the plausible period, times an aggressive rate on a defensible base. Not the plaintiff's number.
[ ] Estimate defense cost to each milestone.
- Why. Venue ruling, claim construction, summary judgment, trial.
[ ] Weight the probabilities.
[ ] State the recommendation plainly.
- Why. Many cases are worth settling regardless of the patent's quality, because proving it bad costs more than the plaintiff will take. Saying so is the service the client is paying for.
[ ] Note the campaign exception.
- Why. Where the client faces repeated assertions or the accused feature is core to the product line, a cheap first settlement prices every subsequent one and cancellation is worth several times its cost.
[ ] Assess injunction exposure separately.
- Authority. 35 U.S.C. § 283.
- Why. A competitor plaintiff changes the analysis completely.
[ ] Price the design-around.
- Why. It caps the royalty, caps the settlement value going forward, and answers the injunction threat.
[ ] Update the model at every ruling.

Phase 9. Budget and staffing

[ ] Set the budget against the exposure model, not against the procedural calendar.
[ ] Negotiate custodians and search terms before any collection.
- Why. In a case turning on one claim element the responsive universe is far narrower than the requests suggest.
[ ] Negotiate the protective order's source code provisions before any review.
[ ] Sequence the experts after the technical record.
[ ] Assign one person to the fee-shifting record from day one.
- Authority. 35 U.S.C. § 285; Fed. R. Civ. P. 11.
- Why. An exceptional case finding is built contemporaneously or not at all.
[ ] Consider a joint defense group where multiple defendants face the same patent.
- Authority. 35 U.S.C. § 299.
- Trap. The estoppel asymmetry — only the petitioner is estopped — which makes funding negotiations difficult.

Phase 10. The plaintiff-side mirror

Every phase above has a counterpart for a patentee deciding whether to assert. Running them before filing prevents the assertion that collapses on a defect the plaintiff could have found itself.

[ ] Confirm your own chain of title before filing.
- Authority. 35 U.S.C. § 261.
- Trap. An inventor who left before executing an assignment, discovered by the defendant in month three.
[ ] Confirm you hold all substantial rights, or join the patentee.
[ ] Confirm accrued claims were assigned if the patent was acquired.
[ ] Run your own marking analysis first.
- Why. A patentee that discovers an unmarked licensee product after filing has priced the case wrong from the start.
- Authority. 35 U.S.C. § 287(a).
[ ] Confirm venue in the chosen district before filing.
- Authority. 28 U.S.C. § 1400(b).
- Trap. Filing where the defendant sells but has no place of business, which produces a transfer and a lost year.
[ ] Screen your own claims for eligibility and divided performance.
- Why. Both defenses are available on the pleadings, and both are visible from the claim language.
[ ] Search the prior art against your own patent.
- Why. The defendant will, and knowing what it will find is worth more than any argument made afterward.
[ ] Satisfy the pre-filing inquiry with a real claim chart.
- Authority. Fed. R. Civ. P. 11.
- Why. Reading the claims, obtaining the accused product where possible, and comparing them element by element. A complaint that could not survive this inquiry is evidence in a later fee motion.
- Authority. 35 U.S.C. § 285.
[ ] Model your own exposure to a post-grant petition.
- Why. A patent with a thin prosecution record and better art available is a patent that may not survive assertion.

Phase 11. The ninety-day deliverables

At the end of the assessment period there should be exactly six documents in the file. If any is missing, the assessment is not finished.

[ ] The claim and product summary. Two pages: the asserted claims, the accused products by version and period, and the three questions that will decide the case.
[ ] The complete-defenses memorandum. License, exhaustion, implied license, standards commitment, expiration, marking, and the limitation — each with a conclusion and the documents attached. Most entries will say "not available," and that is a finding, not a failure.
[ ] The chain-of-title chart. Every transfer from each named inventor forward, with dates, recordings, and any gap identified.
[ ] The venue memorandum. Where the client is incorporated, what physical presence it has in the filing district, and whether the company holds that presence out as its own. With the supporting declarations drafted.
[ ] The prior art assessment. A ranked reference list with a materiality judgment against what the examiner considered, and a recommendation on the post-grant question.
[ ] The exposure model. One page: ceiling, defense cost by milestone, probability weights, settlement range, and a recommendation.

Six documents, most of them short, all of them produced from public records and the client's own files. This is the whole of what a competent early assessment requires, and it costs a small fraction of what the case will cost if it is skipped.

Phase 12. What the assessment tells you to do

Assessments produce one of four recommendations, and naming which one applies is more useful than a survey of options.

[ ] Settle now. Where the exposure ceiling is below the cost of reaching claim construction, and the client faces no campaign risk. The recommendation should include the number and the terms — release, license, family coverage — rather than a direction to negotiate.
[ ] Move and reassess. Where a venue or transfer motion, a standing defect, or an eligibility motion has a real chance of resetting or ending the case. Spend on the one motion, hold everything else, and reassess on the ruling.
[ ] Petition and stay. Where the art is materially better than the examiner's, the documentary case is not the whole case, and the district court schedule permits institution. This is the highest-value path when it fits, and it fits less often than defendants hope.
[ ] Litigate to construction. Where a single term decides infringement and the intrinsic record supports the client's reading. Budget to the construction ruling and treat it as the decision point.

Whichever applies, write it down with the number attached. An assessment that ends in a description of the issues has not done its job; the client is paying for a recommendation.

Phase 13. Assessment before the complaint

Half of all assertions arrive as letters and never become cases. The assessment work is the same and the timing is better, because nothing has been spent on procedure yet.

[ ] Calendar the letter.
- Why. It may have started the damages clock under 35 U.S.C. § 287(a) and it establishes knowledge for indirect liability and willfulness under 35 U.S.C. § 271(b) and 35 U.S.C. § 284.
[ ] Create an internal record that the letter was assessed.
- Authority. 35 U.S.C. § 298.
- Why. The absence of an opinion of counsel proves nothing on willfulness. The absence of any assessment at all is a different fact and a jury hears about it.
[ ] Decide whether a declaratory judgment action is available.
- Authority. 28 U.S.C. § 2201.
- Why. A specific letter identifying the patent and the accused product generally creates the controversy. Filing buys the forum and the initiative; it costs the option of waiting for a case that might never come.
[ ] Respond in a way that preserves options.
- Why. Denying infringement in general terms, requesting claim charts, and asking for the chain of title costs little and produces information. Arguing the merits in detail educates the plaintiff.
[ ] Tender immediately if the client is a customer rather than a manufacturer.
- Why. Demand campaigns aimed at end users work because customers do not know they hold indemnity rights.
[ ] Check the state bad-faith assertion statutes where applicable.
- Why. Several states regulate demand letters that fail to identify the patent or the accused product, or that demand a response in an unreasonably short time.

Phase 14. Common assessment errors

[ ] The assessment describes rather than recommends. A memorandum listing considerations without a number and a direction has not finished.
[ ] The exposure ceiling is the plaintiff's number. The plaintiff's demand is a negotiating position and it is usually built on a base the law does not permit.
[ ] The complete defenses were assumed rather than checked. "We would have known if we had a license" is not a search of the contract files.
[ ] Venue was assessed from the docket rather than from the statute. Where a plaintiff files is not evidence that venue is proper there.
[ ] Standing was checked on the patent's face. The front page shows the assignee at issuance and nothing about what happened afterward.
[ ] The prior art search preceded the file wrapper. Aiming requires knowing what the examiner allowed over.
[ ] The post-grant question was deferred. Deferring past month six converts a real option into a petition drafted under bar pressure.
[ ] The eligibility motion was filed because it was available. Availability and merit are different questions, and a denied motion spends credibility.
[ ] Discovery began before the model existed. Budget follows value, not procedure.
[ ] The fee-shifting record was left for later. It is built contemporaneously or not at all.
[ ] Injunction risk was not separately assessed. A competitor plaintiff changes every conclusion above.
[ ] The assessment was never updated. A model that reflects month one at month fourteen is worse than none, because the team believes it.

Phase 15. Assessing a portfolio assertion

Single-patent assertions are the simple case. Where a plaintiff asserts five or fifteen patents, the assessment changes shape.

[ ] Rank the patents rather than assessing them equally.
- Why. In nearly every portfolio assertion, one or two patents carry the case and the rest are volume. Identify which by asking which reads most plausibly on the accused product's core functionality.
[ ] Map the family relationships.
- Why. Patents sharing a specification share a prosecution history, and a disclaimer made in one application can limit the claims of its siblings. One file wrapper review may serve several patents.
[ ] Check for terminal disclaimers across the family.
- Authority. 37 C.F.R. § 1.321.
- Why. A terminal disclaimer ties expiration to the parent and requires common ownership, and both facts matter.
[ ] Check for pending continuations.
- Why. A live continuation means the plaintiff can obtain new claims drafted against the accused product. A settlement that does not cover the family has bought a year.
[ ] Assess whether the court will require narrowing.
- Why. Many courts require a plaintiff to reduce asserted claims at set intervals. Where that is likely, early expense on the weakest patents is wasted.
[ ] Look for a single defense that reaches multiple patents.
- Why. Standing defects, exhaustion, and expiration usually reach the whole family at once. A construction of a shared term can too.
[ ] Build the exposure model per patent and in aggregate.
- Why. A defendant negotiating a portfolio settlement needs to know which patents carry the value, because that is what the release has to cover.

Phase 16. When to stop assessing

Assessment is cheap relative to litigation and expensive relative to nothing, and it has a natural end.

[ ] Stop when the recommendation would not change. If the answer is settle at a number, further searching does not improve it.
[ ] Stop when the remaining questions require discovery. An internal, undocumented, unobservable limitation cannot be assessed from public records, and pretending otherwise produces a false confidence that costs more than the uncertainty would have.
[ ] Do not stop before the six deliverables exist. The temptation is to skip the ones that seem unlikely to help — the license inventory in a company that thinks it has no licenses, the chain of title on a patent that looks clean. Those are exactly the checks that occasionally end cases.
[ ] Revisit at each repricing event. Claim construction, an institution decision, a marking ruling, and an expert exclusion each change the model materially. An assessment is a living document, and the version that matters is the current one.

Phase 17. Who does the work

Early assessment fails more often for staffing reasons than for analytical ones. The work is not hard; it is scattered across people who do not normally talk to each other.

[ ] Assign one lawyer to own the assessment end to end.
- Why. The six deliverables draw on public records, contract files, corporate records, engineering, and finance. Split among five people, they arrive at different times in different formats and nobody holds the conclusion.
[ ] Get one engineer who will answer questions without guessing.
- Why. The single most valuable resource in a patent defense is a person who built the accused feature and will say "I don't know" when they do not.
- Trap. An engineer who wants to be helpful and speculates. Those answers appear in a deposition eighteen months later.
[ ] Get someone from contracts who knows the acquisition history.
- Why. The license inventory and the indemnity tender both depend on knowing what the company bought and from whom.
[ ] Get someone from finance who can produce unit and pricing history.
- Why. The exposure ceiling and the marking period both depend on it, and both are needed in month one.
[ ] Get corporate records for the venue declarations.
- Why. Facilities leases, employee locations, and how the company describes its own presence. These are the facts the motion turns on and they come from human resources and facilities, not from counsel.
[ ] Brief the business owner, not only the legal department.
- Why. The design-around question, the campaign-risk question, and the settlement decision are business decisions with legal inputs. A recommendation delivered only to counsel is a recommendation that will be re-litigated internally at the worst moment.

Phase 18. A one-page assessment template

The output of everything above fits on a page. Fill in the blanks and the recommendation writes itself.

[ ] Patent and asserted claims. Number, expiry, asserted independent claims, and whether any are method-only.
[ ] Accused products. By model, version, configuration, and the period each was sold.
[ ] The contested element. The one limitation the case turns on, and why.
[ ] Complete defenses. License, exhaustion, implied license, standards commitment, expiration — each yes or no, with the document reference.
[ ] Standing. Clean, defective, or unresolved, with the gap named if there is one.
[ ] Venue. Proper or improper, and the transfer prospects if proper.
[ ] Claim screens. Eligibility, indefiniteness, divided performance — each a real prospect or not.
[ ] Prior art. Best reference, whether the examiner saw it, and whether it is a publication.
[ ] Post-grant. File or not, with the bar date and the estoppel cost.
[ ] Damages period. Start date and basis.
[ ] Exposure ceiling. A number.
[ ] Defense cost by milestone. Four numbers.
[ ] Injunction risk. Real or not, and why.
[ ] Design-around cost. A number and a timeline.
[ ] Recommendation. Settle at a number, move and reassess, petition and stay, or litigate to construction.
[ ] Next repricing event. What it is and when.

Sixteen lines. A client can read it in three minutes, a successor lawyer can pick up the matter from it, and a mediator can be handed the bottom half of it without further preparation. It is worth more than any other document produced in the first year.

Outcome. The chain of title was clean and no license existed, so the cheap defenses were checked and closed in ten days. The asserted method claim recited a step performed by the customer's technician. The client had no place of business in the filing district. A service manual predating the priority date by two years described the accused sequence. Venue transferred, the review was instituted, the stay was granted, and the case settled below the cost of reaching claim construction.

Key Authorities at a Glance

| Authority | Proposition | Phase | |---|---|---| | 28 U.S.C. § 1400(b) | Patent venue | 4 | | 28 U.S.C. § 1404(a) | Transfer for convenience | 4 | | 28 U.S.C. § 1406 | Improper venue | 4 | | 28 U.S.C. § 2201 | Declaratory judgment | 1 | | 35 U.S.C. § 101 | Eligibility screen | 5 | | 35 U.S.C. § 102 | Novelty; public availability | 6 | | 35 U.S.C. § 112 | Definiteness; means-plus-function | 5 | | 35 U.S.C. § 154(a) | Term | 1 | | 35 U.S.C. § 261 | Chain of title | 4 | | 35 U.S.C. § 271 | Infringing acts; divided performance; territoriality | 5 | | 35 U.S.C. § 281 | Standing | 4 | | 35 U.S.C. § 282 | Defenses | 2 | | 35 U.S.C. § 283 | Injunctive relief | 8 | | 35 U.S.C. § 285 | Fees in exceptional cases | 9 | | 35 U.S.C. § 286 | Six-year limitation | 2 | | 35 U.S.C. § 287(a) | Marking and notice | 2 | | 35 U.S.C. § 299 | Joinder of defendants | 9 | | 35 U.S.C. § 302 | Ex parte reexamination | 7 | | 35 U.S.C. § 311 | Inter partes review; scope | 7 | | 35 U.S.C. § 315(b) | One-year bar | 7 | | 35 U.S.C. § 315(e) | Estoppel | 7 | | 35 U.S.C. § 321 | Post-grant review | 7 | | 35 U.S.C. § 41(b) | Maintenance fees | 1 | | Fed. R. Civ. P. 11 | Pre-filing inquiry | 9 | | Fed. R. Civ. P. 12 | Motions to dismiss | 4 |

The five things people get wrong

One: they skip the license inventory. Rights held through a parent, an acquisition, or a supplier's pass-through end the case for the cost of an afternoon in the contract files, and the search is done last or not at all.

Two: they tender late. Indemnity and insurance are both forfeited by delay rather than lost on the merits, and both windows close in weeks.

Three: they never ask who performs each step. Divided infringement is available at the pleading stage, it decides a large share of software and platform cases, and it is invisible to anyone who has not walked the claim actor by actor. 35 U.S.C. § 271(a).

Four: they build the defense before the exposure model. A case worth less than the motion that would win it should be settled, and that arithmetic takes an hour.

Five: they aim the prior art search at the field. The file wrapper names the limitation the examiner allowed over. A search aimed there returns the reference; a search aimed at the field returns a binder. See Defending a Patent Assertion.