Expertise is Necessary When Litigating a Patent. Contact an Experienced Patent Litigation Attorney
A patent litigation attorney at Glancy Prongay & Murray LLP shares the risk of litigation with his or her clients. Patent cases take technical intellectual property knowledge, litigation skill, and the resources and perseverance to fight against capable and well-funded adversaries. If your patent is being infringed upon by a large company, it is likely that the company will be willing to spend a significant portion of the license fees they would have to pay you on litigation. Therefore, it rarely makes sense to file a case on the hope that a reasonable offer will be forthcoming relatively quickly. Instead, a patent litigation attorney must be prepared to go the distance, through an exhaustive discovery process, trial, appeal, and parallel proceedings in the U.S. Patent and Trademark Office challenging the validity of the asserted patents
Accordingly, it is extremely important to make sure that a patentee’s case is strong before commencing litigation. Before filing, patentees must consider:
- The validity of the patent. This includes an evaluation of the patent against the prior art, and whether or not the examiner considered it in prosecution. When a patent is challenged in litigation, the fact that an examiner believed that the patent was allowable despite prior art is not conclusive. Patentees must also consider whether the patent is too broad, since many patents have been invalidated in litigation as covering “abstract ideas” under the Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank Int’l.
- The strength of the case for infringement–whether it is clear that every element of the asserted claims of the patent are present in the accused product or process.
- The potential damages at issue, including a realistic assessment of the importance of the patent to the product in view of any other contributors to the product’s value in the marketplace.
- Patent ownership: making sure that the entity that would be bringing the lawsuit has a clear and complete chain of title to the patent.
- Patent inventorship: making sure that every inventor who contributed to the conception of any claim of the patent was in fact named as an inventor of the patent. Omitting a true inventor from a patent could allow that inventor to later license the patent to the infringer, with no payment to the patent owner.
Patent Litigation FAQ’s
How Do I Enforce My Patent?
First you should obtain a patent, legal protection that gives you the right to stop others from using your invention. The U.S. Patent and Trademark Office reviews applications and grants patents, but it does not defend holders of those patents from infringement.
A person whose patent has been infringed can file a lawsuit in a federal district court, asking the court to stop the infringement and order that the patent holder be compensated for any harm caused by the infringement. In some cases, a patent holder can also ask the International Trade Commission to review an infringement claim.
A person or business accused of patent infringement can also file their own lawsuit, asking a court to declare that there is no infringement.
What Courts Hear Patent Infringement Cases?
A patent infringement lawsuit can be filed in federal district court.
In cases in which a business accused of infringement is suing for a declaratory judgment, the company can file the lawsuit in places where the patent holder is located.
Forum selection can have a significant impact on how quickly your case moves, which is why it is important to consult an established intellectual property law firm before deciding where to sue.
What Do Judges and Juries Do in Patent Cases?
Generally, judges decide legal questions and juries decide factual questions. Either party in a patent case has the right to request a jury trial. If requested, a jury will decide whether the patent was valid, whether it was infringed and what monetary damages should be awarded to the patent holder.
What is the International Trade Commission’s Role?
The ITC considers cases that are related to the importation of products into the United States. ITC administrative judges are tasked with deciding whether these products infringe on valid patents. Because the ITC is an administrative body, as part of the Commerce Department, its processes and procedures are different that those in federal courts. That often means that these cases proceed more quickly.
One major difference is that the ITC does not have the authority to award money damages in the event of infringement. Instead, it can order that infringing products be excluded from the country and order that the manufacturer cease and desist from making or selling the product.
Can I Appeal a Decision in a Patent Case?
Yes. The U.S. Court of Appeals for the Federal Circuit hears appeals of decisions made by federal district courts in patent cases. The appeals court, which sits in Washington D.C., also hears appeals from ITC rulings following additional administrative procedures.
All patent cases can eventually be appealed to the U.S. Supreme Court, but it is up to the court to decide whether to actually review the case. An intellectual property law firm can help patent holders and those accused of infringement consider their rights and options.
What Will My Patent Litigation Lawyer Have to Prove to Win a Case?
A patent holder must prove that it is more likely than not that the person or business being sued infringed the patent, helped another person or entity infringe the patent or induced another person or entity to infringe the patent.
Infringement is the direct manufacturing, selling, using or importing of the invention protected by the patent. Even if the alleged infringement is not an exact replica it may be considered a violation of the patent if it is equivalent or interchangeable.
What is a Post-Grant Proceeding?
There are a number of ways in which a patent can be challenged at the Patent and Trademark Office. A person or business accused of infringement, for example, can ask the office to reconsider whether the patent should have been granted in the first place. These requests are overseen by a patent office appeal board.
What are the Defenses in a Patent Case?
There are, generally, three types of defenses: That the person or entity accused of infringement did not actually infringe the patent, that the patent was not valid and that the Patent and Trademark Office was misled in granting the patent.
When are the Statutory Defenses to Patent Infringement Claims?
The statutory defenses challenge the validity of the patent being asserted. That challenge can be raised on a number of grounds, including that the invention was already known or being used before the patent was granted, that it was too obvious to deserve legal protection or that it was available for sale or public use for more than a year before the patent application was filed.
What are the Equitable Defenses?
The equitable defenses generally relate to alleged deceitful or similar behavior by the patent holder. A patent holder that did not provide material information to the patent office while seeking or prosecuting the patent is barred from claiming patent infringement, for example. Similarly, a person or entity accused of infringement can mount a defense by showing that the patent holder misled the defendant into believing that the holder no longer intended to enforce the patent.
What Money Damages are Available in Patent Infringement Cases?
Money damages are intended to compensate a patent holder for the harm caused by the infringement. That often means awarding the patent holder reasonable royalties for use of the patented invention. In some cases, your patent litigation attorney can pursue compensation for lost profits as a result of the infringement. Additionally, enhanced damages are available in cases of willful patent infringement.
The Importance of Hiring a Top Patent Litigation Attorney
Litigating a patent case is a significant undertaking. While using patent lawyers can help reduce the out-of-pocket costs to a patentee, the litigation will involve considerable effort. It always makes sense to thoroughly assess a case, and a patent litigation attorney Glancy Prongay & Murray can help determine whether a case is worth pursuing. Please contact Jonathan Rotter for more information about litigating your pharmaceutical patents, medical patents, medical device patents, surgical device patents, surgical instrument patents, therapeutic patents, chemical patents, optical patents, biotechnology patents, life science patents, consumer product patents, industrial process patents, mechanical patents, agriculture patents, consumer technology patents, and household patents.