Rebuttal of Infringement Contention for SEPs
A rebuttal is a technical review of the claim chart used to allege infringement of a standard essential patent. Charts are sometimes built by skipping over claim elements, or by pinning them to evidence that doesn't quite show what's needed. We go through the chart row by row, find where the scope of the claim and the evidence used part ways, and set that out in writing.
Who it's for: implementers who have received a SEP infringement claim chart, and the law firms and licensing teams answering it in negotiation or litigation.
Overlooked elements
A limitation in the claim was never actually mapped, even though the chart reads as complete.
Insufficient evidence
The cited passage is close to the claim element, but doesn't show the element itself.
Incorrect assumptions
An optional feature is treated as mandatory, or the implementation is assumed to follow a part of the standard it doesn't.
Who brings us a chart
Most engagements start after a claim chart has already landed, and the deadline to respond is already running.
Implementers
Have received an infringement claim chart and need to know where it actually holds up.
Law firms & licensing teams
Have to answer the chart in a negotiation or a filed response.
How we go through the chart
Each row gets the same treatment: what the claim element requires, what evidence was cited for it, and whether that evidence actually shows it.
| Check | What it tells us |
|---|---|
| Claim element requirement | What the language of the element actually requires, read on its own terms |
| Evidence cited | What the chart points to as proof — spec text, teardown, or test data |
| Fit between the two | Whether the evidence shows the element, or only something adjacent to it |
How a rebuttal comes together
The same four moves, applied to every row of the chart before anything goes into the report.
Read the claim
Establish what each element actually requires, independent of the chart.
Check the evidence
Compare what's cited against what the element calls for.
Identify the gap
Mark overlooked elements, thin evidence, and assumptions that don't hold.
Write it up
Set out the gap and the reasoning behind it, row by row.
Infringement rebuttal vs. invalidity rebuttal
| Infringement rebuttal | Invalidity rebuttal | |
|---|---|---|
| Question asked | Does the evidence show the implementation meets every claim element | Does the prior art really disclose what the claims require |
| Target of the comparison | Claim vs. the evidence used to allege infringement | Claim vs. the cited prior art |
| When it's needed | A chart alleging infringement has been received | The patent's validity is being challenged or tested |
The method is close — an element-by-element comparison of a claim against documents — but the target differs. A party in a SEP dispute may need one or both, depending on the position it's taking.
What we need from you
- The claim chart itself and the patent it asserts — the essential inputs.
- The standard version cited in the chart.
- Technical documentation for the accused implementation.
- Any correspondence setting out the assertion.
- Teardown or test evidence, where the chart relies on it — a rebuttal has to address the specific evidence used, not the allegation in general.
What you receive
- An in-depth examination of the asserted claim chart, element by element
- Identification of technical gaps between the scope of the patent claims and the evidence used
- Detailed comments on why the evidence does not align with the claim elements
- A written report setting out the rebuttal and its supporting reasoning
Frequently asked questions
What is rebuttal of an infringement contention for SEPs?
It's a technical review of a claim chart asserting a standard essential patent. Each row is checked: what the claim element requires, what evidence has been cited for it, and whether that evidence actually shows it. Technical gaps between claim scope and the evidence used are set out in detailed comments. The output is a written response counsel and licensing teams can use to answer the assertion.
What weaknesses appear in SEP claim charts?
Three recur. Elements of the claim clauses get overlooked, so the chart looks complete while a limitation was never actually mapped. The evidence is insufficient — a passage describes something close to the claim element but not the element itself. Or the assumptions are wrong, treating an optional feature as mandatory, or assuming an implementation follows a part of the standard it doesn't. Going through the chart element by element brings these out.
How does this differ from rebutting an invalidity contention?
The two answer different attacks. An infringement rebuttal tests whether the evidence in a claim chart shows an implementation meets every claim element. An invalidity rebuttal tests whether the prior art cited against the patent really discloses what the claims require. The method is similar — a close element-by-element comparison of a claim against documents — but the target differs, and a party may need one or both depending on the position it's taking.
What do we need you to provide?
The claim chart itself and the patent it asserts are the essential inputs. It also helps to have the version of the standard cited in the chart, technical documentation for the accused implementation, and any correspondence setting out the assertion. Where the chart relies on teardown or test evidence, that material is needed too — a rebuttal has to address the specific evidence used rather than the allegation in general.
Get a claim chart reviewed
Send over the chart and the patent it asserts, and we'll scope the rebuttal.
