Challenge

Referred to the Firm by French counsel, Harness IP attorneys represented a privately held mid-sized Provence based French company faced with a U.S. patent infringement claim in an Oklahoma City court. The cause of action involved a dispute over a patent pertaining to automation of a complex manufacturing plant machine.

Solution

Our team was on the ground in France immediately. We worked closely with our client’s executives and French counsel to address the claim both from a U.S. and French law perspective, and to develop an immediate course of action that would succeed in both countries. Wrongly accused of infringing its U.S. patent in Oklahoma, we counter-claimed that the patent was not infringed, and that there were actually false inventorship and trade secret misappropriation causes of action against the plaintiff since the plaintiff’s alleged inventor previously worked for our client’s company where the invention was initially conceived by others at our client.

Week long depositions and a plant inspection ensued in Provence before a French Judge and translator. Throughout this process, our attorneys ably accounted for and explained the differences between U.S. and French law to the French and U.S. judges regarding attorney/client privilege, opinions of counsel, varying discovery procedures and, most notably, the substantive noninfringement, invalidity, inequitable conduct, inventorship and trade secret issues. As a result of our diligent advocacy and discovery efforts, we then obtained a favorable Markman interpretation in an Oklahoma City court. The suit was quickly resolved thereafter in favor of our client.

Harness IP is highly adept at practicing law internationally. Our client valued our ability to seamlessly bridge the gap of communication and other geographic challenges inherent in this type of representation. Our client most appreciated that we devised practical solutions delivered in-person, quickly and cost effectively. Our practical solutions and novel analysis allowed our client to make critical strategic decisions both in the U.S. and at home.

Given our many international clients, we understand country-by-country and region-by-region cultural differences and nuances regarding the way business is conducted around the globe. This allows us to more effectively explain the process of U.S. verses foreign law, and how it applies to each client’s unique business.