Buche & Associates, P.C.

Patent Litigation

• What recourse does a patent holder have against patent infringement?

  A patent holder has the legal right to exclude any persons or businesses from making, using, selling or importing technology that infringes the patent. A patent owner can seek an injunction to have an infringer stop infringing activity. The patent owner may also seek monetary damages for infringement of those patent rights, which typically take the form of lost profits or a reasonable royalty.

• Where do patent owners litigate cases of patent infringement?

  Most patent infringement litigation occurs in United States federal courts, however, litigation also can occur in arbitration proceedings as well as at the International Trade Commission, through what are known as Section 337 investigations. Our firm is based in San Diego and we handle cases in San Diego federal courts, but we also handle patent litigation across the country.

• What are the major issues that are dealt with in a case of patent infringement?

  The plaintiff in a patent infringement suit must always start off with the allegation that the products or services of the defendant fall within the scope of the patent holders claims. To prove a case of patent infringement the plaintiff must show that the defendant's technology has all the elements found in the plaintiff's claims. For example if claim one has elements: (1), (2) and (3), then the plaintiff must prove that the defendant's product has each of those elements. If this is the case, a case of literal infringement exists. The language used to define the elements of the claims is scrutinized carefully and interpretation of the claim language can be hotly contested. Courts will have Markman proceedings to assess ambiguities in the meaning of claim language. The outcome of a Markman hearing can often dictate who will win and who will lose a patent infringement dispute. Of course, if liability in shown, the other major issues in a patent case will be damages available to the plaintiff, if any, as well is the scope of any injunction that may issue.

• How does the Doctrine of Equivalents come into play?

  It is not always possible to show that a case of literal infringement exists. In some cases a defendant may not be practicing every literal element of a patent claim, but may instead be substituting something similar for one or more of the elements of a claim. Asserting infringement under the Doctrine of Equivalents is essentially saying that what the defendant is doing is not exactly infringing, but that it is so close to what was intended by the plaintiff's patent that it counts as an infringement. This doctrine has been severely limited by the courts; however, it is still an important tool for patent plaintiffs.

• If we file a case of patent infringement, what procedural steps can we expect?

  Patent infringement cases usually occur in several phases, but the most basic are as follows:

  • Initial pleadings/venue determinations
  • Markman proceeding (claim construction)
  • Discovery
  • Pretrial
  • Trial
  • Post-trial judgment enforcement and/or injunction
  • Appeal(s) to the Federal Circuit

• What should we expect at the Markman phase of a patent infringement case?

  This is the stage of a case where courts attempt to decipher the meanings of language in the patent claims. During this phase, the court will look to the patent file history, the written description in the patent, surrounding patent claims, and arguments made by the patent applicant when initially acquiring the patent. In some cases, the court may look to dictionaries and even expert testimony to resolve ambiguities in the meaning of patent language that ultimately has a bearing on whether infringement is present. The Markman phase of the case can differ considerably procedurally from court to court across the United States. In some cases courts will prefer to take paper submissions from the parties and decide claim construction on written filings. In other cases the court will conduct a Markman hearing, which can be like a trial with witnesses and evidence, or in other cases the court will conduct a hearing that proceeds in more of a question and answer session with the judge. The timing of a Markman hearing can also vary from court to court. Most courts will schedule Markman proceedings significantly in advance of trial, although this is not always the case. The Markman proceeding is certainly among the most important of events of a patent infringement case because the outcome will often control the final outcome of the case. A favorable Markman construction will often result in early settlements and/or summary judgment motions that can end a case or substantially limit the issues for trial.

• What can we expect from the discovery phase of a patent infringement case?

  Discovery in a patent case is where the parties gather evidence that supports their respective cases. At this stage, the parties have the right to request from each other documents that support the positions taken in the case for liability and damages. The parties may also inspect evidence, test evidence, and take the sworn statements from the opposing party using depositions and interrogatories. Defendants will typically be looking for "prior art" that may be used to invalidate a patent on a variety of statutory theories. Discovery in patent cases can be very extensive and expensive. With current intellectual property litigation, discovery often proceeds electronically and using software specifically geared to comb through large amounts of information. Electronic discovery is also important since so much information is exchanged by e-mail and over the Internet. At the start of infringement cases, the litigants are required to operate under a "legal hold" to avoid destruction of potentially relevant evidence. It is imperative that businesses engaged with infringement litigation work with counsel familiar with the specifics of electronic discovery in IP cases. Penalties for noncompliance with electronic discovery can be severe, so it has to be handled correctly.

• What are typical defenses raised to allegations of patent infringement?

  A common first line of defense is that the accused products simply do not infringe. If the accused products do not feature each and every one of the elements of the plaintiff's patent claims, then there is not a legitimate case of infringement. It is not uncommon for plaintiffs to overreach with respect to what their patent supposedly covers. If a plaintiff is using the Doctrine of Equivalents to make a claim of infringement, a defendant may also argue that the plaintiff gave up the right to equivalent technologies by reason of something called "file wrapper estoppel" by virtue of arguments made while acquiring the patent.

  Other defenses speak to invalidity of the patents asserted. A patent can be invalid if the defendant can prove that the technology existed before critical dates before when a patent owner applied for a patent. These "use bars" must be fully explored because they can end the case. For example, if the patent applicant sold or offered to sell an invention more than a year before filing for a patent, the patent may be invalid under 35 U.S.C. §102. Other defenses can be raised that a patent technology would have been "obvious" to persons skilled in the art and that a patent never should have issued. Other defenses include misuse of a patent, delays in enforcing rights, and inequitable conduct of the applicant at the Patent Office.

• What monetary damages may be recovered by a patent plaintiff?

  Patent damages are typically in the form of a plaintiff’s lost sales or a “reasonable royalty”. The plaintiff who wishes to show lost sales must show that without the infringement the plaintiff would have made all the sales and profits that were taken by the defendant. There are a variety of damages theories available to plaintiffs, including "price erosion," which speaks to the diminished profit margins resulting from illicit competitors who are using the patented technology without permission. In fashioning "reasonable royalty" damages, a court will try to ascertain what a defendant should have paid for a fair license to the patented technology. In cases of "willful" infringement, damages may be increased as a punitive measure.

• Can a plaintiff recover punitive damages in a patent infringement case?

  If a plaintiff can show willful conduct by the defendant, damages can be enhanced. If a plaintiff can show that the defendant was aware of the plaintiff's patent and proceeded anyway, then there may be a case for willfulness. Many times a plaintiff will send a copy of his or her patent to a prospective defendant just to ensure that they are on notice that the technology is covered by a patent. A defendant who secures an infringement opinion from competent counsel when threatened with patent infringement can help defend against allegations of willfulness. If you would like to discuss securing an infringement opinion, contact us for a free initial consultation.

• Should we be concerned about a Declaratory Judgment Action?

  A declaratory judgment action is always a concern for potential litigants to a patent dispute. Current federal law allows a party who feels threatened by allegations of patent infringement to preemptively file a lawsuit known as a declaratory judgment action to have a court make a finding of noninfringement, or in some cases patent invalidity. The declaratory judgment action is often used as a tool to obtain favorable jurisdiction for a patent dispute. Therefore, potential litigants should be careful about sending threatening cease-and-desist letters to prospective defendants. If you wish to discuss the pros and cons of asserting infringement with cease-and-desist letters, do not hesitate to contact our firm.

• How do we know if we have a valid case of patent infringement and whether we should file a lawsuit?

  It is imperative if you suspect a case of patent infringement to secure a competent opinion of counsel specializing in patent law and patent litigation. A pre-suit investigation by experienced counsel can help you weigh the costs and potential benefits of engaging an opponent through the court system. It is important to assess the strength of the patents, the strength of your adversary, and the value of the technology at issue prior to bring a lawsuit. A poorly researched patent infringement lawsuit can often result in considerable expense and sometimes counter-exposure to, so patent lawsuits should not be entered lightly.

• Do you handle patent infringement cases on contingency?

  Not often, but sometimes. Patent litigation costs can be very high, so contingency representation of patent matters must be considered carefully, and the patent claims must be strong when compared to the accused products. If have a case you would like to have considered for contingency or hybrid-contingency representation, you should contact our office.