8 minutes | Nov 19th 2018

022: What to Expect During Patent Litigation


Hello and welcome to the “Is my brand protected” podcast. My name is Alana Ballantyne and I am your host for today.  I will start with a quote from Thomas Edison - Edison once said this about his invention, the light bulb,

“I haven’t failed, I’ve just found 1000 ways that won’t work.”

Now he certainly couldn’t patent all 1000 of those ideas, but today’s we will discuss how he could have properly patented one of them.

When we think of a patent, we think of inventions and devices. Legally, a patent is a government license conferring a right or title for a set period, especially the sole right to exclude others from making, using, or selling an invention. For example, Thomas Edison patented his invention of the incandescent lamp in 1880. This meant that no one else could build or sell an electric light in the manner that Edison did. Edison held the sole rights to that particular invention.

What a powerful legal position!

But what happens when someone uses a patented invention without permission? About 95 percent of patent disputes in the US are resolved before trial, either through alternative dispute resolution or settlement. This episode is for those rare few who find themselves actively litigating the 5% of patent cases that actually go to trial.

Usually, litigation will begin by either sending or receiving a demand letter, also known as a “cease and desist” letter. You would send a demand letter if you have a good faith basis to believe that someone is infringing on your patent. In this situation, before sending a demand letter, it is important that you reasonably investigate the claim; you want to be sure that infringement is actually occurring. Your letter should identify the patent or patents involved and give a description of why the patent owner believes the business infringes.  

In terms of infringement, it is important to know the difference between a patent and a provisional patent. A provisional patent is a placeholder patent that lasts for a year. It's not examined by PTO. and not published. Within 12 months of the provisional filing, the full utility application should be submitted. Once a provisional application is submitted - the patent is considered pending. From this point on nobody can sell, import or use the invention in the US. If you notice someone is infringing on your pending patent, you cannot sue until the full utility patent is issued.

You can send an infringing party demand letter. It lets the infringer know that you are planning to file the lawsuit once your utility patent is granted.

If you receive a demand letter, it means that the other party believes that you are infringing on their patent. Sometimes, you will receive a letter with vague demands for payment and no additional information. This can make it difficult to assess whether the persons sending the letter has a legitimate claim. There is an entire cottage industry of individuals who make phony or frivolous patent claims against businesses and attempt to intimidate it into paying. For example, some people patent lots of possible inventions at once and then try and sue companies that invent something that is anything close to the patent they hold.

The next stage of patent litigation is the complaint. The complaint is a document filed in federal court by the plaintiff that initiates the lawsuit. The purpose of the document is to provide notice to the defense about the specifics of the plaintiff’s claims. The complaint must include a short and plain statement of the grounds of the claim. For a patent claim, it should include images and specifications. The complaint should also include a demand for relief and the type of relief sought. If you are the defendant, you must file an answer to the complaint within 21 days of receiving notice of the complaint.

After the defendant files an answer, the court sets the schedule for the case. No matter which side of the case you are on, you must meet with the opposing party and set up a time to hand over initial disclosures as well as determine the scope of discovery. Relevant information is generally discoverable, except when it falls under an exception. Information does not have to be admissible in order to be discoverable. It must be reasonably calculated to lead to relevant information. Some judges may require parties to exchange their claim construction contentions at the beginning of the case instead of waiting for discovery.

Claim construction is the process of deciding what the various terms of the patent mean. A patent claim is supposed to be read “in light of the specification,” meaning that you interpret the claims based on what’s in the patent application. The plaintiff and defendant will sit down and run through each claim; proposing their respective definitions to each other. Courts generally encourage parties to come to an agreement on what each term means. Courts do not like to get involved in settling such questions.

The parties will then brief each claim. The court will set what is known as a Markman Hearing. At these hearings, both sides will advocate before a judge for their definition of each term in the claim. The judge is allowed to adopt either party’s definition or neither party’s definition. Regardless, once the Markman opinion issues, it’s often clear whether the defendant infringes and whether the patent is valid. There may be a need for a protective order. A simple guide on protective orders can be found online. This is a common settlement point. If there’s no settlement, the parties will typically move for summary judgment.

If summary judgment is not granted and the parties have not settled, trial is the next step. A trial is the most expensive part of litigation. Patent cases also involve expert testimony on both sides. The trial often comes down to which expert the jury believes the most. After the trial, the jury will return a verdict.

Patent litigation has the potential to be a long and arduous process. The USPTO website has more information on patent litigation! Please let us know if you have any questions. We are here to help you answer your trademark, patent, and copyright questions.