Overview of Trademark Litigation and Patent Litigation
When it comes to legal services, many clients ask themselves “Do I need a lawyer near me?” Having your attorney nearby can be beneficial in many types of civil disputes. However, because they often involve the U.S. Patent and Trademark Office, legal services for intellectual property concerns also lend themselves to providers offering many viable options remotely. For example, a “trademark lookup” or “trademark search” is a frequently requested and highly useful legal service for individuals and businesses seeking to protect their use of a mark they are using or intend to use to identify their goods in commerce.
During a “trademark lookup,” an intellectual property attorney performs a search of the U.S. Patent and Trademark Office’s trademark database. The attorney seeks to find a trademark application or registration that might conflict with the mark their client is seeking to register or protect. The intellectual property lawyer then assesses any registrations or applications discovered by the trademark search and analyzes the results to determine whether they believe there is a likelihood of confusion between their client’s proposed mark and any uncovered by the search.
Searching for a trademark in this manner can prove extremely beneficial in the long run. Finding a senior trademark that conflicts with your own before adoption, or early on in a business’s life can prevent significant legal costs if litigation arises due to an existing conflict. A federal trademark registration from the U.S. Patent and Trademark Office also secures the right to use the registered mark across the United States, as well as sue any infringers to prevent their use of the mark through an injunction.
A trademark registration also allows the owner to recover an infringer’s profits for any infringement of the owner’s mark. Because trademark rights extend across the United States, you do not need a local attorney to help you file a trademark application with the U.S. Patent and Trademark Office. However, to file a lawsuit for trademark infringement or unfair competition in state or federal district court you may need to retain a lawyer near you. This depends on the facts of the matter, the parties involved, and where the infringement is taking place. Regardless of the nature of your trademark concerns, it is always a good idea to consult an intellectual property law firm. An intellectual property attorney can help ensure that your trademark, patent, copyright, and other intellectual property rights are properly protected, monetized, and maintained.
When it comes to patents and securing patent rights, legal services largely fall under two interconnected umbrellas: “patent prosecution,” and “patent litigation.” The term “patent litigation” refers to the legal process of enforcing or challenging patent rights, generally through filing a lawsuit. The term patent prosecution refers to the legal process of suitably disclosing an invention to the United States Patent and Trademark to secure the patent rights to the accompanying underlying innovations. Without going through patent prosecution, an inventor has little recourse to a potential infringer of their creation. By contrast, obtaining patent protections on an invention through the U.S. Patent and Trademark Office provides the patent owner with the exclusive right to prevent others from using, importing, or manufacturing the patent owner’s protected innovation. A patent owner effectively has the right, ability, and discretion to control the use, sale, and distribution of their patented invention in the United States for a limited time—approximately twenty years from the date of filing for a utility patent, or fifteen for a design patent.
Without first successfully undergoing patent prosecution and subsequently receiving protection for their invention, an inventor or developer cannot seek to prevent others from using their invention once it is disclosed or sold to the public. Thus, patent prosecution is a necessary step all inventors must undertake in order to secure the right to stop others from selling their creations. Fortunately, much like the trademark registration process, obtaining a patent through patent prosecution is performed through corresponding with the U.S. Patent and Trademark Office. An inventor or their representative files a patent application, then provides the U.S. Patent and Trademark Office with certain specific disclosures and documents during the subsequent examination period.
After the patent application is reviewed by an Patent Examiner at the Patent Office, the Patent Examiner will determine whether the disclosed invention qualifies for a patent. The Examiner will also ensure that the application and accompanying disclosure meets a number of specific statutory requirements set out by Congress to obtain patent protections. Because of these many specific statutory requirements and the numerous complicated regulations governing patent prosecution, consulting a patent practitioner prior to filing any patent application is an extremely wise decision. Your selection of a patent practitioner or patent attorney to aid you in navigating the U.S. Patent and Trademark Office’s many requirements is a matter of key consideration that every inventor must weigh before deciding to seek a patent.
Nearly all inventors inevitably come to consider the question of “do I need a patent attorney near me?” Fortunately, much like the process of applying for a trademark, the United States patent system is overseen by a branch of the federal government. Because patent rights are nation-wide and the U.S. Patent and Trademark Office is not a part of any one state, any registered patent agent or patent lawyer can help an inventor receive a patent. This is true even if the inventor is in a different state, or another country entirely. Camuti Law Group APC has experience working with and obtaining patents for inventors and entities from across the United States, and even those located internationally. For the patent application process and subsequent shepherding of the invention through examination, a local patent lawyer is in no way required. The most important factor is the patent practitioner’s ability to navigate the prosecution process while drafting a patent that provides suitable, broad protections for the client’s invention.
However, obtaining such a patent is only the first step in securing intellectual property rights in an invention. While a successful patent prosecution process grants inventors or patent owners the right, ability, and standing to protect the invention associated with the patent, it is only part of the equation. Engaging in patent litigation is a critical process; one by which patent owners and inventors enforce the rights granted to them by the U.S. Patent and Trademark Office and potential infringers defend themselves against alleged claims of patent infringement.
Given its broad range of industries and the presence of Silicon Valley along with the many computer science, biotech, and entertainment companies that call the state home, California is one of the hotbeds of patent litigation in the United States. Ideally located in southern California, Camuti Law Group APC is well placed near the heart of the United States District Court for the Central District of California—one of the most active venues for patent cases in the country. The United States District Court for the Northern District of California is another extremely common forum for patent infringement matters in which our attorneys have experience handling trial matters.
The purpose of the remainder of this article is to provide a step-by-step overview of the patent litigation process in the Central District of California. Because of the intensely factual nature of patent litigation and its inherent complexities, this post is not meant to serve as professional or practical guidance for those navigating a patent dispute in the Central District of California. It is intended only to provide a clear overview of the timeline and potential pitfalls inherent to patent litigation matters in a common example forum, discussed from pre-litigation considerations to post-trial matters. Engaging in patent litigation is an extremely complex consideration; one best weighed under advice of experienced legal counsel. Regardless of whether you are debating the potential enforcement of your patent rights or if you have received a cease-and-desist letter alleging your infringement of an existing patent, the best course of action is to consult a patent attorney regarding your matter. While this article discusses litigation largely from the perspective of the plaintiff, the individual who initiates a lawsuit, many of the same considerations apply for defendants.
Initially and even before filing a lawsuit, a patent owner must carefully assess the strength of their case. This generally involves conducting a thorough claim construction analysis: a process by which the scope of a patent is determined in order to assess whether an accused product or process infringes upon that patent. Because of the highly analytical and factual nature of this determination, it is best performed by an experienced patent practitioner. Whether a plaintiff or defendant, it is also wise to examine potential invalidity defenses during this period, such as whether undisclosed prior art anticipates the asserted patent under 35 U.S.C. § 102 or renders it obvious under 35 U.S.C. § 103. It is also crucial to take into account market considerations, as patent litigation is a highly costly process and any potential for damages or injunctive relief must justify such expenses.
In many cases, it is wise for a patent holder to send a cease-and-desist letter before actually initiating a lawsuit. By sending a cease-and-desist letter demanding an alleged infringer stop using a patented invention it may be possible for a patent owner to achieve an early resolution to an infringement issue and avoid the time and cost of full litigation. While this approach may open the door for a settlement discussion or licensing agreement, it is not without risks. An accused infringer that believes it is under an imminent threat of litigation may preemptively file a declaratory judgment action. This may result in an owner’s asserted patent being declared invalid or uninfringed. It may even result in the matter being heard in an undesired venue if acts of infringement have occurred there and the potential defendant has a regular and established place of business in that location. Accordingly, a patent owner should carefully weigh the advantages and risks of sending a cease-and-desist letter before doing so. The advice of an experienced intellectual property and patent attorney is invaluable when making this determination.
After weighing the above considerations, a patent litigation case is officially commenced when the plaintiff files a complaint with the District Court. The complaint must meet the requirements of the Federal Rules of Civil Procedure and include the clear identification of:
the patents involved in the lawsuit;
the allegations of infringement;
the jurisdictional grounds for the lawsuit; and
the plaintiff’s demand for relief.
The plaintiff must also establish that the defendant resides in or has committed acts of infringement within the particular Court’s district.
After the complaint and associated documents are filed the District Court issues a summons for the defendants named in the filings. While defendants are often served as individuals, if the case involves a corporate defendant service is most often effected through the corporation’s registered agent. The filed complaint and summons generally must be served upon the named parties within 90 days of issuance by the Court. Failure to serve the documents on the named defendants to the lawsuit within this time frame may result in the dismissal of the case for failure to prosecute. Without proper orchestration of the service of the lawsuit on all defendants, a meritorious claim may still fail. To ensure that the proper procedures are followed and avoid potential delays or dismissal, engaging an attorney to aid throughout the course of any litigation matter is highly suggested.
Once a defendant is properly served, they have 21 days to respond to the filed action. A defendant’s response typically takes one of two forms: an “Answer,” or a “Motion to Dismiss.” An “Answer” is a document that responds to the allegations of the complaint and may include affirmative defenses such as non-infringement and unenforceability, or even counterclaims brought against the original plaintiff seeking invalidation of the asserted patent. Alternatively, a “Motion to Dismiss” usually argues that the plaintiff’s complaint either does not sufficiently state a claim for relief or that the court lacks jurisdiction in some form, whether personal or subject matter. In patent lawsuits, cases such as Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014) are also frequently cited in motions to dismiss, as a common method of invalidating a patent is to argue that the patent’s claims are directed to an abstract idea and thus invalid under 35 U.S.C. § 101, the statute that controls patent-eligible subject matter. A defendant may also attempt to transfer the case to a different venue at this time, if one is more appropriate or convenient for the defendants.
After the service of these initial pleadings, the parties to the lawsuit must hold several conferences to determine the scope of litigation. These conferences involve the discussion of discovery plans, potential settlements, and case scheduling. The parties must also exchange initial disclosures, which include relevant documents, a calculation of damages, and a list of key witnesses the party expects to utilize at trial.
Additionally, some Districts may have further special rules that apply to patent litigation cases. For example, while the Northern District of California has dedicated local rules whose implementation is triggered by a patent case, the Central District of California does not. However, many individual judges in the Central District often adopt case management procedures for patent matters resembling those of California’s Northern District. As in all litigation, ensuring that the assigned Judge’s specific orders for the matter are read, understood, and held to is essential. During this period, the Court will also issue a case management order that outlines important deadlines for the case, such as those for claim construction, the discovery process, and trial.
The claim construction hearing is one of the most critical phases of patent litigation. This pivotal hearing is also often referred to as a “Markman hearing,” as it was developed as part of the seminal Supreme Court patent case Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996). During a Markman hearing the Court interprets any disputed terms in a patent’s claims and determines the scope of a patent’s protections. Claim construction is based upon extrinsic evidence, such as expert testimony or treatises, and intrinsic evidence, such as the patent’s specification, prosecution history, and even the claims themselves. In the Central District of California, the claim construction process generally follows these steps:
1. the parties exchange proposed claim constructions and supporting evidence for their interpretations;
2. each side submits a “Markman brief,” arguing for their respective claim interpretations;
3. the “Markman hearing” is held at which both sides present their arguments—the Judge may question experts or rely solely on written submissions; then,
4. the Judge then issues a “Markman ruling.”
A “Markman ruling” can significantly shape the outcome of a patent case because it determines the scope of the claims in the asserted patent. Accordingly, a favorable ruling on claim construction can significantly strengthen an infringement case and provide significant incentive for settlement, or act as a clear basis for summary judgment if key terms in the patent’s claims are interpreted narrowly. Retaining intellectual property litigation counsel who understand patent construction and prosecution is crucial in obtaining a positive outcome from the claim construction process. Camuti Law Group APC’s extensive experience in patent prosecution is an invaluable legal asset during this early period of patent litigation.
Because of the highly technical nature of patent litigation, the discovery process is generally extensive and often highly contentious. Discovery is concurrently ongoing during the above discussed period, generally in two forms: “fact discovery,” and “expert discovery.” Fact discovery includes documents requested from and produced by the opposing party, depositions of witnesses, and interrogatories seeking information or admissions. Expert discovery typically involves technical specialists like engineers assessing an invention’s features or damages experts making calculations of lost profits, most often consisting of both prepared reports and testimony.
Additionally, as the discovery process proceeds before trial, both parties may attempt to file summary judgment motions. Such a motion argues that the facts developed during discovery have unveiled that there is no genuine dispute regarding the material issues existing in the infringement matter, asking the District Court to make a ruling on the case prior to holding a trial. A successful defensive motion for summary judgment frequently focuses on arguments regarding the non-infringement of an asserted patent, that patent’s invalidity, or deficiencies by the plaintiff in proving their claims for damages. A successful offensive summary judgment motion typically must show there is no dispute that a defendant included every limitation in one of the asserted patent’s claims. Here, too, skilled patent counsel with an in-depth understanding of both patent prosecution and federal litigation proves a significant boon to any party. A successfully granted motion for summary judgment can dispose of a case entirely well before trial is necessary.
While patent trials are typically jury trials, it is not unheard of that a bench trial is required when a patent matter presents issues of equity. One common such issue is a question of the patent’s unenforceability due to the applicant’s inequitable conduct during patent prosecution, such as by withholding material prior art from the U.S. Patent and Trademark Office Examiner. Prior to the trial, the District Court will hold a final pretrial conference, which sets forth the plan by which trial will proceed. The final pretrial conference is also usually a party’s opportunity to file motions in limine, which are used to exclude evidence from trial that may prove highly prejudicial to that party’s case.
As the trial proceeds each side presents evidence to the Judge or jury, such as calling witnesses to provide expert testimony, cross-examination of that testimony, and other arguments on infringement, validity, the asserted patent claims practiced by the alleged infringer, and any monetary damages associated with the alleged infringement. If the jury ultimately rules in favor of the plaintiff the District Court may award the requested monetary damages. The court may also issue a nationwide permanent injunction against the infringing party. However, the Supreme Court has established that any such injunction is not an automatically granted form of relief in a patent case. eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006). Post-trial, the losing party may often attempt to file a motion for judgment as a matter of law or to attempt seeking a new trial. If these measures prove ineffective, the case may also be appealed to the U.S. Court of Appeals for the Federal Circuit.
However, many if not most patent cases settle before trial. This is especially true after the District Court issues a Markman ruling that clarifies the scope of the patent claims at issue in the lawsuit. Because of the ruling’s impact and importance upon the asserted patent’s scope at issue in the proceedings, a patent case may often be ultimately won or lost at this early stage even if the matter eventually proceeds to trial. An unfavorable Markman ruling heavily impacts the end result of the litigation and prospects for settlement. California’s Central District and many other federal judicial districts also encourage, provide, or even require Alternative Dispute Resolution conferences, which may include mediation or other settlement options. A successfully negotiated settlement to a patent infringement matter will often include a licensing agreement, a cross-licensing arrangement, royalties, or a lump sum payment for past infringement.
As described in this post, patent litigation is a long, complex, and potentially expensive process that demands strategic planning, procedural knowledge, and strong legal advocacy in addition to the technical knowledge to deconstruct or define an asserted patent’s claim set. Whether a litigant is seeking to enforce patent rights or defend against an asserted infringement claim, any party involved in a patent lawsuit must navigate jurisdictional issues, discovery battles, and claim construction hearings that may have determinative impact on the outcome of a case before it even truly begins. Retaining an intellectual property attorney that understands the procedural framework applied by district courts such as California’s Central District allows a party to ensure the best chances of success when pursuing enforcement of or defending their rights.
Given the described pitfalls and inherent complexities of intellectual property and especially patent litigation, obtaining proper representation for your matter is key. If you are seeking to secure or defend your patent, trademark, copyright, or other intellectual property rights, or have received a cease-and-desist letter or lawsuit alleging your infringement, promptly contacting legal counsel such as the experts at Camuti Law Group APC is one of the wisest decisions a potential litigant can make.
