[franga2000]

Am I understanding correctly that you (your company) found prior art and chose to settle instead of presenting it in court and killing the patent? Any idea why? Isn't there some law that automatically awards you legal fees in the case of a frivolous lawsuit?

[AlbertCory]

You don't present it "to court" because that might be decided by a jury of unsophisticated people. You file an Inter Partes Review, which goes to the Patent Trial and Appeal Board, and is cheaper (note I didn't say "cheap").

The U.S. doesn't have a "loser pays" model like other countries. You can file for attorney's fees, but the barriers are higher.

[freejazz]

It's called an invalidity counterclaim.

[AlbertCory]

??? what are you disputing here? IPRs, or defending against an infringement suit, or what?

[burnished]

Doesn't look like a dispute? I think they were trying to supply you with a phrase that slipped your mind.

[AlbertCory]

the question is the antecedent basis of "it"

[freejazz]

You don't need to get an IPR, you just make an invalidity counterclaim. IPRs may or may not be desirable for a number of reasons.

[freejazz]

Finding prior art to invalidate a patent doesn't make the plaintiff's lawsuit frivolous, so they probably wouldn't be awarded atty's fees. If the court didn't invalidate the patent, then you are now stuck in a serious litigation where the plaintiff has no reason to settle.

[NicoJuicy]

I can ask the lawyer, if you want and if you can wait a day ( or more) to see the reply.

It happened during a very busy time for me and i wasn't involved, since it was a story that was shared during the weekly "covid update" that shares all the company news.

It could be that they also filed a counter lawsuit to invalidate it.

I think the main point was to defend successfully and not to attack/piss some big trolls off.