Defending a Patent Assertion: A Practitioner's Guide to Venue, Stays, Early Motions, and Settlement
By Casey Scott McKay ·
This guide runs the defense of a patent assertion from the demand letter to resolution, organized around the fact that most of these cases are decided by cost rather than by merit. It starts with first-week triage and the cheap complete defenses — a license the client already holds, exhaustion, a standing defect, an expired patent — because each ends a case for a fraction of what any motion costs. It then covers indemnity tender and insurance notice, the venue and transfer challenges that reset the case, the prior art search that drives both the district court invalidity case and the post-grant decision, and the early dispositive motions worth filing. It treats the exposure model as the document that should govern the budget, and it says plainly when a case should be settled regardless of the patent's quality. Later stages cover stays, joint defense, discovery cost control, claim construction as the main event, the fee-shifting record, design-around pricing, and the settlement terms that prevent the next assertion. A separate stage covers what changes when the plaintiff is an operating company rather than an assertion entity. Each stage gives the deliverable, the deadline, and the failure mode.
IP and Technology > Patent Litigation | Guide | Published 30 August 2025 - Updated 3 July 2026 | Casey Scott McKay - marksy.us
Summary. This guide runs the defense of a patent assertion from the demand letter to resolution, organized around the fact that most of these cases are decided by cost rather than by merit. It starts with first-week triage and the cheap complete defenses — a license the client already holds, exhaustion, a standing defect, an expired patent — because each ends a case for a fraction of what any motion costs. It then covers indemnity tender and insurance notice, the venue and transfer challenges that reset the case, the prior art search that drives both the district court invalidity case and the post-grant decision, and the early dispositive motions worth filing. It treats the exposure model as the document that should govern the budget, and it says plainly when a case should be settled regardless of the patent's quality. Later stages cover stays, joint defense, discovery cost control, claim construction as the main event, the fee-shifting record, design-around pricing, and the settlement terms that prevent the next assertion. A separate stage covers what changes when the plaintiff is an operating company rather than an assertion entity. Each stage gives the deliverable, the deadline, and the failure mode.
Keywords: patent defense, demand letter response, indemnity tender, insurance notice, venue motion, transfer motion, standing challenge, chain of title, exhaustion, license defense, eligibility motion, prior art search, post-grant petition, stay pending review, joint defense group, exposure model, fee shifting record, customer suit exception, settlement strategy, design-around
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