Houston Patent & Trademark Attorneys

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Frequently Asked Questions
Patent Litigation

Where are cases of patent infringement litigated? 

What are the central issues in a case of patent infringement?

What is the Doctrine of Equivalents? 

What remedies are available against patent infringement?

What are the most basic procedural phases in a patent infringement lawsuit once it is filed?

What is involved with the claim construction or Markman phase of a case of patent infringement?

What happens in a case of patent infringement after the Markman phase?

What defenses are available to allegations of patent infringement? 

What types of damages are available for patent infringement?

Are punitive damages available in patent cases?

What is a declaratory judgment action?

Do we have a valid case of patent infringement? Should we file a lawsuit?

Are patent infringement cases handled on contingency?

What rights come with filing a disclosure with the Patent Office?

What should we do if we are being accused of infringement?

Where are cases of patent infringement litigated?

Patent litigation usually proceeds in federal court, although sometimes in arbitration. 
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What are the central issues in a case of patent infringement?

As complex as the technology may be, the basic arguments are that a Defendant's product has all the elements recited in the Plaintiff's patent claims, which claims define the invention.  If, for example:

Patent Claim 1 has elements A, B, C
Defendant literally infringes if the accused product has elements A, B, C

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What is the Doctrine of Equivalents?

If each of the elements of a patent claim are present in an accused product, there is literal infringement.  However, where not all of the elements are present, but a close substitute is used for one or more of the elements, a Plaintiff may sue under the "Doctrine of Equivalents" and essentially argue: "close enough."  The Doctrine of Equivalents argument was originally set forth in the landmark Graver Tank case.  These arguments have been limited in recent years because of a line of case law (Festo) that has narrowed application of the Doctrine, but it is still routinely used in patent litigation and is a useful tool in enforcing the rights of a patent holder.
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What remedies are available against patent infringement?

Typically, a Plaintiff wants the infringement to stop, the imports to stop, or monetary damages (e.g., lost licensing royalties, lost sales, lost profits).  So, in most cases, the remedies are injunctive, for monetary damages, or for seizure of infringing goods.  If damages are the primary remedy sought, plaintiffs will usually seek a “reasonable royalty” or lost profits by reason of the infringement.
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What are the most basic procedural phases in a patent infringement lawsuit once it is filed?

In the federal courts, patent litigation is usually broken into two or three major phases.  The most basic phases are a (1) patent claim construction, (2) discovery; (3) a trial, which may or may not be bifurcated into damages and liability phases; and (4) possible appeal(s).  The reversal rates on patent cases are fairly high and all patent infringement appeals go to the Court of Appeals for the Federal Circuit.
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What is involved with the claim construction or Markman phase of a case of patent infringement?

In the early stages of a patent infringement lawsuit, courts endeavor to interpret patent claims in a claim construction phase.  During this claim construction or Markman phase of the litigation, the Court looks at the language of the claims of the patent to define their scope. The Court attempts to determine the meanings that should be given to particular words in each claim.  The Court will look first to the patent description or "specification" in deciphering the claims.  Also, the Court will look to the file history and the paperwork leading up to issuance of the patent.  The arguments made by the patent attorneys and parties in acquiring the patent can be used to interpret the meanings and scope of the claims.  The Court may or may not employ the assistance of an expert in deciphering the claims.  The claim construction phase of the infringement case usually culminates in a Markman hearing (named after the landmark case requiring construction by the Court), which hearing may proceed like a trial with witnesses being called, or which may be conducted in less formal fashion by the Court to supplement paper submissions and motions. The timing of such a hearing varies considerably with each jurisdiction and the discretion of the Court, but may be very early in the case (before extensive discovery) or sometimes even close to trial. The Court will issue its order construing the claims, which will govern the rest of the case and have a significant impact on how the parties argue the remainder of the case.  Sometimes, parties may seek an immediate appeal to the Court of Appeals for the Federal Circuit, if the claim construction by the Court is believed in error.
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What happens in a case of patent infringement after the claim construction phase? 

Usually following the claim construction phases of a trial, the parties will move into an extensive discovery phase of the litigation aimed at proving or disproving that the accused product reads on the claims as construed by the Court.  A defendant will also generally be looking for evidence that may invalidate the patent or otherwise defeat enforcement.  This phase is usually characterized by extensive evidence gathering or "discovery" including document subpoenas, document reviews, depositions of witnesses, and development of expert testimony. 
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What defenses are available to allegations of patent infringement?

At the liability phases, Defendants typically argue either non-infringement or patent invalidity.  For example, Defendants may argue that a patent never should have issued by way of inequitable conduct, delays in enforcing patent rights, misuse of patent rights, time bars, or "prior art"-i.e., the invention was not new at the time of patenting.  If the plaintiffs make arguments based on the Doctrine of Equivalents, Defendants may argue, "file wrapper estoppel" and look to the patent file history to claim that plaintiffs surrendered arguments to a range of equivalents.
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What types of damages are available for patent infringement?

Damages in a patent case may be in the form of a "reasonable royalty" (what the patent holder might have obtained from a license) or lost sales and profits that that would have been made by a patent holder without the Defendant's infringement.  Damages arguments in a patent infringement case are typically expert intensive and both parties will usually bring in economists or forensic accountants to review and testify about the damage models.  A case of patent infringement may be split into a whole separate phase or trial for damages, if so bifurcated by the Court. Sometimes a court will separate damages phases of a case from liability where the interests of justice, costs, or the proprietary nature of the financial materials warrant this remedy.
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Are punitive damages available in patent cases? 

Sometimes.  If willful conduct is found against a Defendant, damages may be enhanced. Willfulness can become an issue where a defendant knows about a valid patent and continues to engage in infringing activity.  Defendants may counter allegations of willful infringement by seeking and obtaining a legitimate infringement opinion from competent patent counsel.
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What is a Declaratory Judgment Action?

Under federal law, a party who is being threatened with patent infringement litigation or allegations of infringement may be entitled to file what is known as a Declaratory Judgment Action.  Such an action is aimed at having a court determine whether a particular activity is infringing, or whether a threatening party's patent is valid. A declaratory judgment may permit a successful party to recover attorney fees, although courts are given considerable discretion in making such determinations.
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Do we have a valid case of patent infringement? Should we file a lawsuit? 

If there is any question of patent infringement, it is important to seek a patent opinion from a qualified Patent Attorney familiar, not only with obtaining patents, but specifically with patent infringement litigation. Patent Infringement litigation is highly specialized and can be extremely expensive, particularly when conducted by larger law firms.  Therefore, in most cases it is prudent to thoroughly investigate possible infringements and to fully assess the cost versus benefit of engaging an opponent through the courts.
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Are patent infringement cases handled on contingency?

Rarely.  The costs of patent infringement litigation are usually so high, that most firms do not find contingency representation economically viable.  However, if your business has a case of patent infringement and your patent is being infringed, Buche & Associates, P.C. may be able to assist you to level the playing field by way of partial contingency arrangements, depending on the nature of your case.  These matters are evaluated on a case-by-case basis.
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What should we do if we are being accused of patent infringement?

If you or your business has been accused of patent infringement or received a cease and desist letter, it is important to secure an infringement opinion to decipher whether there is an actual issue of infringement and how to proceed in your defense.  You should contact the lawyers of Buche & Associates, P.C. to discuss the specifics of your case.  With offices in Houston, Texas and San Diego, California the patent attorneys of Buche & Associates, P.C. are well equipped to handle your case.
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