{"id":148802,"date":"2026-04-14T14:58:43","date_gmt":"2026-04-14T22:58:43","guid":{"rendered":"https:\/\/xira.com\/p\/2026\/04\/14\/turning-defense-into-offense\/"},"modified":"2026-04-14T14:58:43","modified_gmt":"2026-04-14T22:58:43","slug":"turning-defense-into-offense","status":"publish","type":"post","link":"https:\/\/xira.com\/p\/2026\/04\/14\/turning-defense-into-offense\/","title":{"rendered":"Turning Defense Into Offense"},"content":{"rendered":"

In perhaps the greatest sequence<\/a> of plays in USA hockey history, during overtime of the gold-medal game at the 2026 Olympics, 24-year-old Jack Hughes put on a game-winning display of turning defense into offense. First, he did just enough to tie up Canada\u2019s Connor McDavid, universally recognized as one of hockey\u2019s greatest players, from scoring on one of his patented blazing rushes to the net. He then helped get the puck out of the USA\u2019s zone, before poking it into the path of one his teammates to start an odd-man rush that ended in Hughes scoring the golden goal that led fans back home<\/a> into wild chants of \u201cUSA! USA!\u201d A glorious sporting moment for a country that needs heroes to rally around, as well as a glorious example of how fortunes can change with a well-executed transition from defense to offense. While not as exciting as a gold medal-winning goal, patent litigators can also find themselves helping a client turn a defensive licensing posture into offensive litigation that aims to clear away allegations of infringement. One recently filed set of declaratory judgment complaints provides a solid example of such an effort.\u00a0\u00a0<\/p>\n

It is not every day that you see what looks like a coordinated attack against a serial patent asserter. But last week, we saw a group of prominent insurance companies trying to seize the offensive and proactively fend off licensing efforts aimed at them by Intellectual Ventures.\u00a0The action started on April 7, with DJ complaints filed against various Intellectual Ventures entities in Massachusetts and Delaware, by Hanover and The Hartford, respectively. The next day, another Delaware DJ complaint, this time by Travelers, was also filed. Three complaints over two days, each filed by a different law firm, but sharing similarities in terms of the patents challenged as well as the fact that each of these erstwhile competitors shared a common interest in getting cleared of the patentee\u2019s demand for a license. For Hanover, that meant moving for DJ of noninfringement against three of IV\u2019s patents. The Hartford, meanwhile, went after eight patents, including for DJ of invalidity based on prior art and ineligibility on top of the noninfringement allegations. And Travelers pled for a declaration of noninfringement on no less than 14 patents.<\/p>\n

Besides the apparent coordination between the DJ plaintiffs, what makes each complaint interesting is the level of detail each contains about IV\u2019s licensing approach and financial demands. In The Hartford\u2019s DJ complaint, for example, there are no less than eight pages of factual background, starting with IV\u2019s first email from December 2023 and not ending until the March 2026 notice letter from IV\u2019s outside counsel that triggered The Hartford\u2019s filing. In between, there were nearly 10 emails or letters sent by IV to The Hartford, all directed at trying to get substantive licensing discussions going, while trying not to create DJ jurisdiction with too overt a threat of imminent enforcement. As with the other two insurers, IV\u2019s initial licensing demand was in the low to mid-seven figures, but even from what would arguably be a reasonable starting point relative to defense costs none of the insurers wanted to engage. Which is not a surprise, considering that each was well aware of IV\u2019s litigation history, but where they also had strong feelings that their use of open-source software was not a proper basis for having to accede to a IV license. In my experience, nothing blocks a license transaction more than when the target feels that they have a killer noninfringement defense, or are the wrong target for the patent owner to chase after. That is the dynamic that appears to have been in play here, which may also explain why these insurers took aggressive action.<\/p>\n

It will be interesting to see if the insurer group\u2019s collective action leads to these cases sticking, or whether IV will be able to get them dismissed as not ripe on standing grounds. Each of the DJ plaintiffs filed in jurisdictions that they consider as friendly, which we know can be an important factor when taking the decision whether to seek DJ relief. And each complaint takes at least some pains to establish the atmosphere of an imminent threat of litigation by IV, another critical factor in the eventual determination of whether DJ jurisdiction appropriately lies. For example, Hanover\u2019s complaint discusses how IV has asserted the same patents in litigation before, including against what Hanover considers peer companies. The complaint also calls out IV\u2019s outside counsel (a former colleague and one of my favorite people in this business) for his firm\u2019s long history of bringing cases on IV\u2019s behalf. Good fodder for the court to consider on an eventual motion to dismiss for lack of case or controversy, unless IV chooses to join issue and litigate the cases on the merits.\u00a0<\/p>\n

Ultimately, these newly filed cases are worthy of our attention, both in terms of demonstrating that well-heeled patent licensing targets can band together for a proactive attack on a prospective licensor, as well as with respect to what they disclose about how persistent those licensors must be to get responses to their inquiries. It will of course also be interesting to see whether these cases stick as filed, or even whether we see a similar gang-up approach against serial patent asserters take root in other industry sectors that are frequent targets for licensing and enforcement. In the meantime, we have a patent litigation transition from defense to offense to watch unfold. It may not be as exciting as Hughes\u2019 golden-goal, but for those in the patent licensing trenches, the outcome will likely be more impactful.<\/p>\n

Please feel free to send comments or questions to me at gaston@k2k.law or via Twitter: @gkroub<\/a>. Any topic suggestions or thoughts are most welcome.<\/p>\n

\n

Gaston Kroub lives in Brooklyn and is a founding partner of\u00a0<\/em><\/strong>Kroub, Silbersher & Kolmykov PLLC<\/em><\/strong><\/a>, an intellectual property litigation boutique, and\u00a0<\/em><\/strong>Markman Advisors LLC<\/em><\/strong><\/a>, a leading consultancy on patent issues for the investment community. Gaston\u2019s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at\u00a0<\/em><\/strong>gkroub@kskiplaw.com\u00a0<\/em><\/strong><\/a>or follow him on Twitter:\u00a0<\/em><\/strong>@gkroub<\/em><\/strong><\/a>.<\/em><\/strong><\/p>\n

The post Turning Defense Into Offense<\/a> appeared first on Above the Law<\/a>.<\/p>\n

In perhaps the greatest sequence<\/a> of plays in USA hockey history, during overtime of the gold-medal game at the 2026 Olympics, 24-year-old Jack Hughes put on a game-winning display of turning defense into offense. First, he did just enough to tie up Canada\u2019s Connor McDavid, universally recognized as one of hockey\u2019s greatest players, from scoring on one of his patented blazing rushes to the net. He then helped get the puck out of the USA\u2019s zone, before poking it into the path of one his teammates to start an odd-man rush that ended in Hughes scoring the golden goal that led fans back home<\/a> into wild chants of \u201cUSA! USA!\u201d A glorious sporting moment for a country that needs heroes to rally around, as well as a glorious example of how fortunes can change with a well-executed transition from defense to offense. While not as exciting as a gold medal-winning goal, patent litigators can also find themselves helping a client turn a defensive licensing posture into offensive litigation that aims to clear away allegations of infringement. One recently filed set of declaratory judgment complaints provides a solid example of such an effort.\u00a0\u00a0<\/p>\n

It is not every day that you see what looks like a coordinated attack against a serial patent asserter. But last week, we saw a group of prominent insurance companies trying to seize the offensive and proactively fend off licensing efforts aimed at them by Intellectual Ventures.\u00a0The action started on April 7, with DJ complaints filed against various Intellectual Ventures entities in Massachusetts and Delaware, by Hanover and The Hartford, respectively. The next day, another Delaware DJ complaint, this time by Travelers, was also filed. Three complaints over two days, each filed by a different law firm, but sharing similarities in terms of the patents challenged as well as the fact that each of these erstwhile competitors shared a common interest in getting cleared of the patentee\u2019s demand for a license. For Hanover, that meant moving for DJ of noninfringement against three of IV\u2019s patents. The Hartford, meanwhile, went after eight patents, including for DJ of invalidity based on prior art and ineligibility on top of the noninfringement allegations. And Travelers pled for a declaration of noninfringement on no less than 14 patents.<\/p>\n

Besides the apparent coordination between the DJ plaintiffs, what makes each complaint interesting is the level of detail each contains about IV\u2019s licensing approach and financial demands. In The Hartford\u2019s DJ complaint, for example, there are no less than eight pages of factual background, starting with IV\u2019s first email from December 2023 and not ending until the March 2026 notice letter from IV\u2019s outside counsel that triggered The Hartford\u2019s filing. In between, there were nearly 10 emails or letters sent by IV to The Hartford, all directed at trying to get substantive licensing discussions going, while trying not to create DJ jurisdiction with too overt a threat of imminent enforcement. As with the other two insurers, IV\u2019s initial licensing demand was in the low to mid-seven figures, but even from what would arguably be a reasonable starting point relative to defense costs none of the insurers wanted to engage. Which is not a surprise, considering that each was well aware of IV\u2019s litigation history, but where they also had strong feelings that their use of open-source software was not a proper basis for having to accede to a IV license. In my experience, nothing blocks a license transaction more than when the target feels that they have a killer noninfringement defense, or are the wrong target for the patent owner to chase after. That is the dynamic that appears to have been in play here, which may also explain why these insurers took aggressive action.<\/p>\n

It will be interesting to see if the insurer group\u2019s collective action leads to these cases sticking, or whether IV will be able to get them dismissed as not ripe on standing grounds. Each of the DJ plaintiffs filed in jurisdictions that they consider as friendly, which we know can be an important factor when taking the decision whether to seek DJ relief. And each complaint takes at least some pains to establish the atmosphere of an imminent threat of litigation by IV, another critical factor in the eventual determination of whether DJ jurisdiction appropriately lies. For example, Hanover\u2019s complaint discusses how IV has asserted the same patents in litigation before, including against what Hanover considers peer companies. The complaint also calls out IV\u2019s outside counsel (a former colleague and one of my favorite people in this business) for his firm\u2019s long history of bringing cases on IV\u2019s behalf. Good fodder for the court to consider on an eventual motion to dismiss for lack of case or controversy, unless IV chooses to join issue and litigate the cases on the merits.\u00a0<\/p>\n

Ultimately, these newly filed cases are worthy of our attention, both in terms of demonstrating that well-heeled patent licensing targets can band together for a proactive attack on a prospective licensor, as well as with respect to what they disclose about how persistent those licensors must be to get responses to their inquiries. It will of course also be interesting to see whether these cases stick as filed, or even whether we see a similar gang-up approach against serial patent asserters take root in other industry sectors that are frequent targets for licensing and enforcement. In the meantime, we have a patent litigation transition from defense to offense to watch unfold. It may not be as exciting as Hughes\u2019 golden-goal, but for those in the patent licensing trenches, the outcome will likely be more impactful.<\/p>\n

Please feel free to send comments or questions to me at gaston@k2k.law or via Twitter: @gkroub<\/a>. Any topic suggestions or thoughts are most welcome.<\/p>\n

\n

Gaston Kroub lives in Brooklyn and is a founding partner of\u00a0<\/em><\/strong>Kroub, Silbersher & Kolmykov PLLC<\/em><\/strong><\/a>, an intellectual property litigation boutique, and\u00a0<\/em><\/strong>Markman Advisors LLC<\/em><\/strong><\/a>, a leading consultancy on patent issues for the investment community. Gaston\u2019s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at\u00a0<\/em><\/strong>gkroub@kskiplaw.com\u00a0<\/em><\/strong><\/a>or follow him on Twitter:\u00a0<\/em><\/strong>@gkroub<\/em><\/strong><\/a>.<\/em><\/strong><\/p>\n

The post Turning Defense Into Offense<\/a> appeared first on Above the Law<\/a>.<\/p>\n","protected":false},"excerpt":{"rendered":"

In perhaps the greatest sequence of plays in USA hockey history, during overtime of the gold-medal game at the 2026 Olympics, 24-year-old Jack Hughes put on a game-winning display of turning defense into offense. First, he did just enough to tie up Canada\u2019s Connor McDavid, universally recognized as one of hockey\u2019s greatest players, from scoring […]<\/p>\n","protected":false},"author":3,"featured_media":0,"comment_status":"","ping_status":"","sticky":false,"template":"","format":"standard","meta":{"_et_pb_use_builder":"","_et_pb_old_content":"","_et_gb_content_width":"","_jetpack_memberships_contains_paid_content":false,"footnotes":""},"categories":[16],"tags":[],"class_list":["post-148802","post","type-post","status-publish","format-standard","hentry","category-above_the_law"],"jetpack_featured_media_url":"","jetpack_sharing_enabled":true,"_links":{"self":[{"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/posts\/148802","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/users\/3"}],"replies":[{"embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/comments?post=148802"}],"version-history":[{"count":0,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/posts\/148802\/revisions"}],"wp:attachment":[{"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/media?parent=148802"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/categories?post=148802"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/xira.com\/p\/wp-json\/wp\/v2\/tags?post=148802"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}