An in-house or other consulting technical expert is used for this understanding and in the trial of the case. An in-house expert will be cheaper and more readily available but may have more credibility problems than an independent consulting expert. This memo sets forth the minimum needs for an adequate patent infringement analysis. Copy of or access to prior art described in the File Wrapper 3. A critical examination of validity is essential to determine not only if a suit against an infringer should be considered but also to anticipate the expected attack on the validity and at least a rough estimate of the resulting intensity and cost of discovery.
Defendants usually believe that the best defense is a well considered offense.
The well prepared plaintiff considers each of these potential issues to anticipate the impact upon the result and cost of trial, as well as the cost each of them may add to discovery and preparation for trial. IT is also advisable that the patent prosecution and correspondence files of the prosecuting attorney and the project and correspondence file of the inventor be examined to see if there was a failure to cite any relevant material. Finally, a validity search of prior art should be conducted to see if the Examiner failed to consider the most relevant prior art. Confidence rises if there was successful prosecution to foreign applications, and the attendant prior art searches through the foreign art did not reveal damaging prior art. The defendant's validity searching will include search by computer through remote databases containing U.S. patents, foreign patents and technical literature.