Optimizing the Chances for a Successful Intervening Rights Defense

In "Intervening Rights and the Possibility for Last-Minute Heroics," Michael J. Sacksteder suggests the following activities for optimizing the chances for a successful intervening rights defense:

• Track the progress of reexaminations involving patents already asserted (or likely to be asserted) to determine the impact of amendments to the original claims.
• Consider the inventory of “specific things” in inventory at the time a reexamination certificate is likely to issue in order to maximize the benefit of a finding of absolute intervening rights.
• Obtain and rely on an opinion of counsel based on prior art asserted in reexamination.
• Scrupulously avoid willful infringement (and its indicia)
• Consider and document the timing of preparations, contracts, etc., in order to coincide with reliance on opinion of counsel.