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The Life of an American Patent Case

Tracking the life of a U.S. patent case from pre-suit investigation to trial and appeal.
by

Tony Beasley

on 29 January 2013

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Transcript of The Life of an American Patent Case

The Life of an American Patent Case File Infringement Lawsuit Post-Filing Actions: Pre-suit Investigations Infringement Identification of Targets Who practices the claimed invention? How much does the potential target benefit from practicing the invention? Direct sales
Process efficiencies Type of Infringement Direct Infringement Indirect Infringement Target practices each and every element of the claim or “directs and controls” other’s practicing of the invention. Target does not necessarily practice the invention, but induces or contributes to the infringement. Inducement 35 U.S.C. 271(b) Direct Infringement: point to more than hypothetical instances of infringement Knowledge of the induced infringement and specific intent to encourage infringement. "Willful blindness" is sufficient. Contributory Infringement 35 U.S.C. 271(c) Direct Infringement Knowledge that the combination for which its components were especially made were patented and infringing Doctrine of Equivalents Same function

Same result

Same way Privilege in Infringement Investigations Attorney Work Product

Attorney-Client Communications Identification of Jurisdiction Time to Trial Local Patent Rules In effect in various judicial district
(N.D. Cal., E.D. Tex., N.D. Ill.)


Designed to streamline the patent case: Early disclosure of infringement and invalidity theories...

Early document production ...

Early Markman hearings ... AIA Joinder Rules Several accused infringers may not be joined in one action based solely on infringing a patent ...


Must arise from the same transaction or occurrence relating to the alleged infringement (making, importing, manufacturing, etc.)... ITC Injunctions Patentees can seek an injunction from the International Trade Commission Speedy resolution (< 1 year)

Prevents import of infringing goods into the U.S.

But no monetary damages! Different rules than Federal Courts Access to Sources of Proof Best proof will vary based on the type of technology . . . Have witnesses (inventors, third parties) lined up from the beginning

Assists with invention story ...

Reduces cost of litigation ...

Allows for early production of documents Is the case worth the expense? Damages Assessment Reasonable royalty ... what would license resemble at the time of hypothetical negotiation?

Consider size of base and form of royalty: Potential positives Feature serves as basis for consumer demand
Licenses for similar technology command high rates (lump sum vs. running royalty)
Benefits are easily quantifiable through survey or regression
Invented feature enjoys broad extent of use Consult experts early on

Per Uniloc, one must quantify the invention's footprint in the marketplace Cost of Litigation Bifurcation Traditional trial: all issues tried together

Recently, some issues (willfulness, inequitable conduct, damages) severed for discovery, trial, or both

Judge Robinson: without bifurcation, "the burden imposed on a jury in a patent trial is extraordinary." Counterclaims Consider whether filing a lawsuit will trigger a countersuit (especially for practicing entities!)

Counterclaims can be a way to offset infringement liability between two entities with significant portfolios, i.e. Apple v. Samsung Motions to Dismiss Based on allegations in complaint

Tactical reasons:

Sensitize Judge to claim construction issues

Increase overall litigation costs

Force opponent to disclose litigation theories Scheduling Order Outlines case schedule

Places restrictions on discovery

Defendants want longer schedules, plaintiffs shorter Re-exam Defendant may initiate based on new prior art

Court might stay litigation pending PTO review Discovery Protective Orders Who can see confidential information?







How will sensitive info be treated? Infringement Contentions Based on initial infringement allegations

Exchanged early in the case, before discovery

"Crystallizes" the infringement case

Not required in every court Working With Experts No conflicts of interest

Information sent to expert may be discoverable! Document Production Costly! Store in an organized matter to reduce expenses

Identify relevant custodians early on Interrogatories and Depositions Markman Language vs. Technology Inventor's language Patent attorney's interpretation Judge's construction An Engineering Issue? The jury decides infringement

Rarely, jurors are engineers

Jury needs claim constructions from the judge to make its findings Never take a claim term for granted Martek Biosciences v. Nutrinova:

District court found that the term "animal" = only non-human animals

Federal Circuit reversed, holding "animal" can include humans. Patent spec: "The term 'animal' means any organism belonging to the kingdom Animalia." ? Summary Judgment No genuine issue as to any material fact Based on information produced in discovery and at depositions Non-infringement

Invalidity TRIAL Stories and Themes Putting on a trial is telling a story

Short, memorable themes will resonate with the jury ... Timed Trials Many patent trials will allocate a certain time for each side to put on its case

Budget wisely for liability, validity, damages (if not bifurcated) Appeals Who do you appeal to? Rate of Appeals Affirmations and Reversals Time to Trial
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