1. Corporate Attorney | Background of the Patent Invalidation Dispute
The dispute began when a competing semiconductor company initiated federal patent litigation alleging infringement of its process related technology.
The competitor sought discovery of the client’s production line data, claiming it was essential for evaluating infringement.
The client immediately retained a corporate attorney in New York City due to the significant exposure of trade secrets and the risk that disclosure could undermine competitive advantage in both domestic and international markets.
Background of the Process Related Patent Litigation
The client served as a senior engineering executive at a New York–based semiconductor fabrication facility supplying advanced materials to global partners.
The plaintiff alleged that the client’s manufacturing technology overlapped with its patented process and filed suit in federal court.
As part of discovery, the plaintiff requested access to internal specifications, tool operation logs, and process simulation data.
The attorney recognized that full disclosure would reveal proprietary workflows that were not only unrelated to the asserted patent but also constituted critical trade secrets protected under federal and New York law.
To counter this, the attorney prepared a dual track defense involving a motion to restrict discovery and a petition for patent invalidation before the USPTO, arguing that the competitor’s patent lacked novelty and non obviousness.
2. Corporate Attorney | Legal Issues and Patent Related Challenges
The core legal issues concerned the validity of the competitor’s patent and the protection of the client’s confidential manufacturing information from overbroad discovery demands.
Under U.S. patent law, an issued patent can be invalidated if prior art demonstrates lack of novelty or if the claimed invention would have been obvious to a skilled person in the field.
Key Issues in the Invalidation Strategy
Several crucial questions shaped the defense:
▶ Novelty and Non Obviousness Deficiencies – Whether existing publications or earlier commercial uses rendered the competitor’s patent invalid under 35 U.S.C. §§ 102 and 103.
▶ Technical Distinction from Prior Art – Whether the patent provided any meaningful technological advancement beyond known semiconductor processes.
▶ Protection of Trade Secrets During Discovery – Because the plaintiff sought extensive production data, the attorney emphasized strict protective orders to prevent unnecessary disclosure.
3. Corporate Attorney | Strategic Defense Measures in the Invalidation Dispute
After forming a specialized team that included IP counsel, technical engineers, and expert witnesses, the attorney implemented a comprehensive strategy to neutralize the competitor’s claims and protect the client’s confidential information.
Restricting Discovery and Protecting Trade Secrets
The attorney argued that the plaintiff’s discovery requests exceeded what was relevant and proportional under Federal Rule of Civil Procedure 26.
A motion was filed to limit expert access and prevent disclosure of sensitive production data unrelated to the alleged infringement.
The attorney emphasized that the manufacturing workflow constituted a protected trade secret under federal and New York common law standards.
Developing the Patent Invalidation Framework
The attorney prepared a detailed invalidation petition demonstrating that the competitor’s patent lacked:
· Novelty, because earlier technical papers and foreign patents disclosed identical process sequences;
· Non obviousness, because combining known techniques in the claimed manner required no inventive step.
Comprehensive documentation and expert declarations allowed the USPTO to conclude that the claimed invention did not satisfy statutory patentability requirements.
Technical Expert Collaboration and Evidence Development
Independent semiconductor process engineers were retained to validate the client’s position.
By evaluating data, conducting simulations, and mapping the competitor’s claims against prior art, the experts provided persuasive evidence undermining the patent’s originality.
These materials became decisive in the eventual determination of invalidity.
4. Corporate Attorney | Outcome of the Patent Invalidation Dispute
The USPTO issued a final decision declaring the competitor’s patent invalid.
The federal court dismissed the plaintiff’s infringement claims, as the invalidation eliminated the legal basis for the litigation.
As a result, the client retained full control of its proprietary semiconductor technology without disclosure risks or financial exposure.
Guidance for Companies Facing Patent Invalidation Disputes
Patent invalidation disputes require coordinated legal and technical strategies. Companies should consider:
Early assessment of discovery scope and trade secret risks;
Engagement of qualified technical experts;
Utilizing USPTO invalidation procedures where appropriate;
Actively challenging overbroad disclosure demands.
A corporate attorney in New York City with experience in high technology IP disputes can play an essential role in protecting both legal and competitive interests.
26 Nov, 2025
