2.4 Getting Started
2 min read•june 25, 2024
is a complex legal process where patent owners sue alleged infringers. It involves filing complaints, responding to allegations, and gathering evidence through . Understanding the steps and defenses is crucial for navigating these high-stakes lawsuits.
Defendants can challenge claims through various defenses and counterclaims. procedures at the offer additional avenues to contest patent validity. These proceedings intersect with court litigation, potentially affecting case outcomes and strategies.
Patent Infringement Litigation
Steps in patent infringement lawsuits
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- Plaintiff files complaint in alleging infringement of one or more
- Must have through ownership of the patent
- Complaint served on defendant through
- Defendant has 21 days to respond if in U.S. (60 days if outside U.S.)
- Can answer complaint by admitting or denying allegations and asserting
- Can file motion to dismiss challenging legal sufficiency, jurisdiction, or venue of complaint
- Can counterclaim for of or
- Discovery phase allows parties to gather evidence through document requests, depositions, and interrogatories
Defenses against patent infringement
- Non-infringement defenses argue accused product or method does not meet all claim limitations
- may not apply
- Invalidity defenses challenge validity of asserted patent claims
- Lack of under 35 U.S.C. § 102
- under 35 U.S.C. § 103
- Lack of or under 35 U.S.C. § 112
- searches support invalidity arguments
- Equitable defenses
- : unreasonable delay in bringing suit
- : plaintiff's conduct precludes enforcement (implied license)
- : plaintiff's misconduct ( during prosecution)
- Counterclaims beyond non-infringement and invalidity
- violations like sham litigation or
- Breach of contract claims involving license agreements
Post-grant review in litigation
- Post-grant review (PGR) challenges patent validity at USPTO within 9 months of issuance
- Can be based on any grounds like novelty, obviousness, enablement
- (IPR) challenges patent after 9 months of issuance
- Limited to novelty and obviousness based on patents and printed publications
- Courts may stay litigation pending PGR or IPR outcome
- Considers litigation stage, issue simplification, undue prejudice
- Estoppel prevents petitioner from asserting invalidity grounds that were raised or could have been raised in PGR/IPR
- Potential for inconsistent results between court and USPTO proceedings
Intellectual Property Litigation and Civil Procedure
- Patent infringement is a type of litigation
- rules govern the conduct of patent infringement lawsuits
- Litigation involves asserting or defending against claims of infringement
- Patent claims define the scope of protection and are central to infringement analysis
- history may be relevant in interpreting claims during litigation
Key Terms to Review (30)
Affirmative Defenses: Affirmative defenses are legal arguments presented by a defendant in a civil or criminal case that, if proven, can absolve the defendant of liability or reduce the potential consequences, even if the underlying facts of the case are true. These defenses are called 'affirmative' because the defendant bears the burden of proving their existence.
Antitrust: Antitrust refers to the laws and regulations that promote or maintain market competition by regulating anti-competitive business practices. These laws aim to protect consumers from the harmful effects of monopolies, cartels, and other forms of market dominance that can lead to higher prices, reduced innovation, and limited consumer choice.
Civil Procedure: Civil procedure refers to the set of rules and processes that govern how civil lawsuits (as opposed to criminal proceedings) are conducted in court. It encompasses the steps taken by parties and the court from the initiation of a lawsuit through its resolution, including the filing of pleadings, discovery, motions, trial, and appeal.
Declaratory Judgment: A declaratory judgment is a civil court procedure where a party seeks a judgment declaring their rights, status, or other legal relationships without an award of damages. It allows parties to resolve disputes and obtain clarity on their legal obligations before taking further action.
Discovery: Discovery is the process of identifying, gathering, and exchanging information and evidence relevant to a legal matter. It is a crucial aspect of the legal system, ensuring that all parties have access to the necessary information to make informed decisions and build their cases.
Doctrine of Equivalents: The doctrine of equivalents is a legal principle in patent law that allows a patent holder to prove infringement even when the accused product or process does not literally infringe the express terms of the patent claims. It is used to prevent a party from avoiding infringement by making only insubstantial changes to a patented invention.
Enablement: Enablement, in the context of intellectual property and the patenting process, refers to the requirement that a patent application must provide sufficient information to enable a person skilled in the art to make and use the claimed invention without undue experimentation. This concept ensures that the public can fully understand and utilize the invention once the patent expires.
Estoppel: Estoppel is a legal principle that prevents a party from asserting or denying a fact due to that party's previous actions, conduct, or representations. It is a doctrine that aims to prevent individuals from acting in a way that is inconsistent with their previous behavior or statements, in order to maintain fairness and prevent injustice.
Federal Court: A federal court is a court that has jurisdiction over cases arising under the United States Constitution, federal law, or cases where the United States is a party. These courts are established by the federal government and operate within the judicial branch of the federal government.
Inequitable Conduct: Inequitable conduct is a legal doctrine in patent law that can render a patent unenforceable if the patent applicant or their representative engages in misconduct during the patent prosecution process. This misconduct typically involves the intentional withholding or misrepresentation of material information from the United States Patent and Trademark Office (USPTO).
Infringement: Infringement refers to the unauthorized use or violation of a legally protected intellectual property right, such as a patent, copyright, or trademark. It occurs when an individual or entity engages in activities that infringe upon the exclusive rights granted to the owner of the intellectual property, without their permission.
Intellectual Property: Intellectual property (IP) refers to creations of the mind, such as inventions, literary and artistic works, designs, and symbols, names, and images used in commerce. It is a legal concept that provides exclusive rights to the creator or owner of the IP, allowing them to benefit from their work or investment in a creation.
Inter Partes Review: Inter partes review is a trial proceeding conducted at the United States Patent and Trademark Office (USPTO) to review the patentability of one or more claims in an issued patent. It allows a third party to challenge the validity of a patent by presenting prior art evidence that the patent should not have been granted.
Invalidity: Invalidity refers to the state of being legally or factually invalid, null, or without legal force or effect. In the context of intellectual property, invalidity is a key concept that challenges the legitimacy and enforceability of a granted patent, trademark, or copyright.
Laches: Laches is a legal doctrine that bars a party from pursuing a claim if they have delayed in asserting it, resulting in prejudice to the opposing party. This principle is especially relevant in patent enforcement, where a patent holder's unreasonable delay in taking action can undermine their rights and weaken their position in litigation. Understanding laches is crucial when navigating the complexities of patent rights and potential disputes.
Litigation: Litigation refers to the process of resolving disputes through the formal legal system, typically involving the filing of a lawsuit and the presentation of evidence and arguments in a court of law. It is a key aspect of enforcing and protecting intellectual property rights, such as patents.
Non-Infringement: Non-infringement refers to the absence of unlawful or unauthorized use of another's intellectual property rights. It is a crucial concept in the context of intellectual property law, as it outlines the boundaries of legal use and the protection of creative works, inventions, and other forms of intellectual property.
Novelty: Novelty is a fundamental requirement for obtaining a patent. It refers to the uniqueness and originality of an invention, ensuring that it has not been previously disclosed or made publicly available in any form before the patent application is filed.
Obviousness: Obviousness is a legal concept in patent law that evaluates whether an invention would have been obvious to a person having ordinary skill in the relevant art at the time the invention was made. This determination is crucial in assessing the patentability of an invention and preventing the granting of patents for trivial or predictable advancements.
Patent Claims: Patent claims are the legal statements within a patent document that define the scope and boundaries of the invention. They specify exactly what the inventor is claiming as their new and useful invention, which is the core of the patent protection.
Patent Infringement: Patent infringement occurs when someone makes, uses, sells, offers to sell, or imports a patented invention without the permission of the patent owner. It is the unauthorized use or exploitation of a patented invention, which violates the exclusive rights granted to the patent holder.
Patent Misuse: Patent misuse is a legal doctrine that prevents a patent holder from extending the monopoly granted by a patent beyond its lawful scope. It occurs when a patent holder uses their patent rights in an anti-competitive manner, often through restrictive licensing practices, in order to stifle competition and maintain an unfair market advantage.
Patent Prosecution: Patent prosecution refers to the process of obtaining a patent from the patent office. It involves the series of communications and negotiations between the patent applicant and the patent examiner to ensure the application meets the legal requirements for patentability and to secure the issuance of a valid patent.
Post-Grant Review: Post-grant review is a process established by the America Invents Act (AIA) that allows third parties to challenge the validity of an issued patent at the United States Patent and Trademark Office (USPTO). This review procedure provides an administrative avenue for contesting a patent's patentability after it has been granted, as opposed to challenging it through litigation in federal court.
Prior Art: Prior art refers to the existing body of knowledge and technology that is publicly available prior to the filing of a patent application. It is a crucial concept in the patent system, as it determines the novelty and non-obviousness of an invention, which are key requirements for obtaining a valid patent.
Standing: Standing refers to the legal right or capacity to bring a lawsuit or participate in legal proceedings. It is a fundamental requirement that must be established for a court to have the authority to hear and decide a case.
Summons: A summons is a legal document that commands a person to appear in court or before another legal authority at a specified time and place. It is a formal notice that initiates legal proceedings against an individual or entity.
Unclean Hands: Unclean hands is a legal doctrine that bars a plaintiff from receiving equitable relief if the plaintiff has acted unethically or in bad faith with respect to the subject of the complaint. The principle is that a court of equity will not assist a party whose conduct has been inequitable, unfair, or deceitful in the matter for which they seek relief.
USPTO: The United States Patent and Trademark Office (USPTO) is the federal agency responsible for granting patents and registering trademarks in the United States. It plays a crucial role in the protection and promotion of intellectual property rights, which are essential for innovation, economic growth, and consumer protection.
Written Description: The written description requirement in patent law mandates that a patent application must contain a written description of the invention that is clear, concise, and enables a person skilled in the art to make and use the invention. This requirement ensures that the inventor has possession of the claimed invention at the time of filing and provides sufficient information for others to understand and replicate the invention.