In a Patent Dispute, Where You Fight Often Matters Most | IPWatchdog Unleashed

In any patent dispute, the strength of the patent still matters. But increasingly, it is not the only thing that matters—or even, in some cases, the thing that matters most. As I said at the beginning of our IPWatchdog Unleashed podcast conversation this week, “outcomes are shaped not only by the strength of the patent, but by where and how the fight is actually waged.” That observation framed my discussion with Anthony Del Monaco, senior counsel at Lenovo; David Goose, senior licensing attorney in the Business IP Group at Nokia Technologies; Josh Hartman, partner at Merchant & Gould; and John White, special advisor and expert witness at Harness IP.

This conversation took place several weeks ago as a part of our annual IPWatchdog Patent Masters™ program, and was titled “Choosing the Battlefield,” which to the greatest extent possible is precisely what sophisticated patent owners and accused infringers now must do.

The title including the word “battlefield” was intentional and for the purpose of moving past what in my opinion have become stale conversations about what lawyers refer to as “forum selection” and is frequently the focus of a discussion centering on the Supreme Court’s venue decision in TC Heartland. Today, if we are honest, forum selection for patent disputes goes well beyond anything the Federal Circuit or Supreme Court say relative to which district court venue it best. Patent owners and accused infringers have numerous choices, from district courts, the Patent Trial and Appeal Board, before the International Trade Commission, arbitration or mediation, or across multiple global venues that include the UPC, and domestic courts in Germany, the United Kingdom, China, and Brazil, to mention just a few popular destinations.

Where a patent dispute takes place cannot be a tactical afterthought or viewed as a choice of federal district courts in the United States alone.  This is true today more than ever because despite patents ostensibly being property—at least according to the Patent Act—which tribunal and which judges make the ultimate decisions affecting the patent often matter most of all because patents and patent enforcement have become driven by ideology and the type of fervor normally reserved highly emotionally charged discussions, like religion and politics.

Start with the Outcome, Then Choose the Battlefield

Hartman captured the practical necessity of selection being a core business decision early in the conversation. When advising clients about where to file, he said the analysis is “kind of a reverse engineering process.” His next sentence was the money line: “Start with the outcome that you want to achieve.” That is exactly right. Patent litigation strategy cannot begin with habit, comfort or institutional preference. It must begin with the business objective. Is the goal money? Is it freedom to operate? Is it exclusion? Is it delay? Is it global rate-setting? Is it leverage for a business resolution? Different objectives lead to different battlefields and different choices.

That reality is especially obvious at the International Trade Commission, where Hartman spends much of his time. The ITC is not available to every patent owner because statutory requirements must be satisfied, including domestic industry and importation. But where those requirements can be met, the ITC remains a powerful venue because of its speed, specialized adjudication and the possibility of exclusionary relief. For a patent owner seeking to get infringing products off the market, the ITC offers leverage that district court damages litigation often cannot replicate.

But the ITC is only one piece of a larger chessboard. District court litigation remains central, and venue continues to matter. Texas is not Delaware. Delaware is not the Northern District of California. The Western District of Texas is not the Eastern District of Texas. Judges, jury pools, docket speed, transfer risk, familiarity with patent law, Section 101 exposure and local procedures all influence strategy. As I lamented during the discussion, “where the game takes place matters almost more than anything else.” That may be unsatisfying from a system-design perspective, but it is the operational reality lawyers and clients need to manage.

Del Monaco emphasized that sophisticated litigants do, and must, evaluate forums based on how courts actually handle specific patent issues. He noted that when going to Texas, “you’re getting at least savvy judges that are aware of patent law,” while the ITC also offers judges with “a deep knowledge of the patent law.” The larger point is not that any particular forum is always right or wrong. The point is that patent litigation is not an abstract contest conducted on a neutral spreadsheet. It is a real-world proceeding shaped by people, procedure, precedent, timing and institutional experience.

When the PTAB Becomes Less Predictable

The PTAB discussion was particularly timely. For years after the America Invents Act (AIA), inter partes review became a standard feature of patent defense strategy. For accused infringers, an IPR petition often functioned as both a merits challenge and a leverage event. That calculation has changed. Discretionary denials, settled expectations and shifting institution practices have made IPR less predictable as a defensive tool. Josh was blunt about what that means in practice: “We’ve just basically drawn an X through that.” That does not mean the PTAB has disappeared. It does, however, mean accused infringers can no longer assume that IPR is a reliable and repeatable path to challenge asserted patents.

Goose put the PTAB’s arc in broader context. “The PTAB has been an institution in search of balance for years,” he explained. That is a fair assessment. In its early years, the PTAB was viewed by many patent owners as a patent death squad because of high institution rates and high invalidation rates. Over time, institution practice moved back and forth depending agency policy and administration priorities. The current environment is far more favorable to patent owners than the early AIA years, but perhaps less predictable overall. Few believe this current iteration of the PTAB will last forever—certainly not without statutory reform from Congress, which seems increasingly unlikely. Thus, we are doomed to hopelessly swing back and forth like a meandering pendulum. That is not a way to run a patent system, or any system.

The practical consequence is that parties are reassessing alternatives. Ex parte reexamination has received renewed attention, but it does not create the same leverage as an instituted IPR for a variety of reasons, which leads accused infringers to treat it as an imperfect substitute. District court invalidity defenses remain available, but juries may not be as comfortable with obviousness as PTAB judges. Declaratory judgment actions, transfer motions and offensive countermeasures also become more important the PTAB becoming less reliable.

There Is No Universal Playbook

White brought a broader, seasoned perspective to the discussion. Having worked across prosecution, litigation, deals, expert work and patent policy, he emphasized that forum strategy cannot be reduced to a universal checklist. “There is no one size fits all. There is no formula,” he said. That matters because modern patent disputes require strategic judgment, not mechanical decision-making. A patent owner seeking exclusionary relief, an accused infringer trying to avoid a hostile jury pool, a company evaluating a global SEP dispute, and a business trying to preserve long-term portfolio value all face different risk profiles. White’s point was that lawyers advising clients today must live inside a disjointed system, assess the available forums in real time, and chart the path that delivers the most impact for the least cost.

That lack of certainty is deeply frustrating, especially because patents are long-lived assets. A patent filed today may not be litigated for a decade. The law, the venues, the agency rules, the judges, the business model and the technology market may all shift before enforcement ever occurs. As I explained during the panel, when dealing with “a business asset that can last 20 years or longer,” CEOs understandably want more than a prediction that depends on the legal equivalent of tarot cards.

But Josh pushed back in an important way. Some uncertainty is not a bug; it is baked into both law and markets. Companies file patents for one reason, then assert them years later for another. Technologies evolve. Business plans fail. Markets consolidate. Competitors emerge. Litigation often involves patents that are 10 to 15 years old because something did not go as planned from a business standpoint. In that sense, even perfect legal certainty would not eliminate commercial uncertainty.

The Patent Battlefield Has Gone Global

The global piece of the conversation may be the most important forward-looking issue. Patent disputes, particularly standard-essential patent disputes, are increasingly fought across borders. Del Monaco described the current SEP environment as “a dogfight between China, Germany, and the UK” over which jurisdiction will become the preferred location for global disputes and SEP negotiations. The Unified Patent Court has added another major variable. China, the UK, Germany and the UPC are not merely resolving national disputes; they are competing for influence over global patent valuation and licensing outcomes.

That matters because most of the world’s economic activity is outside the United States, and many high-growth technology markets are global from inception. A patent strategy that treats the U.S. as the only meaningful battlefield is incomplete. At the same time, global litigation dramatically increases cost, complexity and risk, which rarely delivering any meaningful damages awards. So, as Judge Rader so often says, if you are a patent owner you want to litigate outside the U.S. but settle inside the U.S. based on U.S. domestic damages theories.

Build Leverage Before the Fight Arrives

The broader lesson is that patent strategy today requires integration. Litigation, licensing, prosecution, portfolio development, venue selection and business objectives cannot be managed in silos. The patent owner who wants exclusion needs a different strategy than the patent owner who wants a royalty. The accused infringer facing a single weak patent has a different strategy than the implementer facing a global SEP portfolio. The company planning today’s filings must recognize that the enforcement environment a decade from now may look very different.

Still, one point remains bedrock. John said it best: “if you don’t file now, you won’t have a seat at the table in 10 years.” That is the enduring truth beneath all the procedural volatility. The patent system may shift. The PTAB may swing. Venue rules may evolve. The UPC may rise. China and the UK may continue pushing into global rate-setting. But companies that fail to build meaningful patent positions today will have no leverage when tomorrow’s disputes arrive, wherever that might be.

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