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Patent Law FAQ

Does the United States Patent and Trademark Office help enforce patents against infringers?

            No. The United States Patent and Trademark Office (“USPTO”) issues patents, and in some cases, cancels them.  But it does not help patentees enforce patents.  For that, patentees need to sue in federal district court, or seek an exclusion order from the International Trade Commission. 

Where is the best place to file a patent case?

            Factors to consider when selecting a patent litigation venue include court congestion (time to resolution), outcomes, reversal rates (the failure of an outcome to “stick” raises costs and prolongs the time to payout), and the location of the plaintiff and defendant.  A patent case can only be brought where a defendant “resides,” meaning its state of incorporation, or where the defendant has committed acts of infringement and has a regular and established place of business.” 28 U. S. C. §1400(b). The meaning of “regular and established place of business” is being refined through court decisions, so it is worth evaluating all of a potential defendant’s business operations in a venue that would otherwise be convenient. 

Should negotiations occur before filing a lawsuit?

            Sometimes yes, but patentees should be aware of the potential for the recipient of licensing communications to bring a “declaratory judgment” lawsuit, seeking declarations of non-infringement and invalidity.  A patentee needs to response to such a lawsuit by countersuing for infringement.  In practice, this can allow an infringer to choose the time and place of litigation, which is an advantage that should be taken into account in deciding how to proceed.

How long do patent cases take?

            A long time.  Parties contemplating patent litigation must be prepared for an extended process.  A district court proceeding can be interrupted by a stay pending the USPTO’s decision on an inter partes review brought by the defendant to challenge the patent, and by the appeal of that decision, whether favorable or unfavorable.  Apart from such stays, the litigation can take years to reach judgment, plus additional time for an appeal, and for further proceedings on remand if the appellate court reverses or modifies the judgment of the district court.  The national average time just to obtain a claim construction is two years, and the national average time to summary judgment is about three years, and to trial, about four years.

What is “claim construction”?

            In every patent case, the judge will “construe,” i.e., interpret, some of the terms used in the patent’s claims.  This exercise helps to clarify the precise meaning of the terms, and is often dispositive as to infringement or invalidity arguments.  In interpreting the claims, courts look to the wording of the claim itself, the specification (everything in the patent before the claims), and any evidence from outside the patent that shows how a person of ordinary skill in the art would have understood the claim at the time of the invention.

How much does it cost to litigate a patent case?

            Patent cases with claims worth between $10 million and $25 million can cost several million dollars to litigate.  And, most patent cases now involve parallel proceedings before the Patent Trial and Appeal Board, which themselves can each cost another $200,000-$400,000 per patent. 

Do we have to pay out-of-pocket to pursue a patent case?

            It depends.  Many law firms are happy to work on any case if a client pays by the hour.  Contingency law firms must be more selective, only taking cases that have a strong likelihood of success.  Due to the length and complexity of patent cases, we prefer to partner with clients, with the client paying costs, including expert expenses, and depending on the case, sometimes a reduced hourly fee.

Is financing available for patent litigation?

            For clients who are unable, or prefer not, to spend out of pocket to pursue patent cases, litigation financers are willing to fund meritorious cases.  Such funders often like to work with law firms, like ours, who are willing to share in the risk of the case.  Where appropriate, we can work with clients to seek litigation financing.

How should I prepare for discussions with patent contingency lawyers?

            Assemble all of the information that a lawyer would need to evaluate the case.  If you worked with a patent lawyer to prosecute the patents, that lawyer may be able to assist you with evaluating potential claims of infringement.  Patent contingency lawyers want clients to come prepared with “claim charts” – documents comparing the accused product with each element of the claims the patentee believes could be asserted.  Patentees should also gather information on the size of the market and royalties that are paid.  Patentees must also consider the likelihood that their patents will be invalidated, either because of prior art that is too close to the patent, or through one of the judicial exceptions to 35 U.S.C. § 101, e.g., an “Alice” motion.  

If our company is in the Central District of California, does it matter if we file in the Western (Los Angeles), Southern (Santa Ana) or Eastern (Riverside) divisions?

            Most cases in the Central District of California are assigned to the Western (Los Angeles) division.  If 50% or more of the plaintiffs or defendants who reside in the district reside in Orange County, the case will be assigned to the Southern (Santa Ana) division.  If the case is not assigned to the Southern division, and 50% or more of the plaintiffs defendants who reside in the district reside in Riverside or San Bernardino county, the case will be assigned to the Eastern (Riverside) division.

What is the Patent Pilot Program in the Central District of California?

            In 2011, Congress established the Patent Pilot Program as an experiment in judicial specialization in the Federal District Courts.  Thirteen district courts are designated as Patent Pilot Program courts, and in those courts, judges volunteer for the program and must take patent cases from judges outside of the program who do not want them.  The Federal Judicial Center’s Five-Year Report on the Patent Pilot program found that Patent Pilot Program judges have more experience with patent litigation than judges outside of the program, and that cases before Patent Pilot Program judges proceed more quickly than before judges outside of the program.          

If you need a Los Angeles intellectual property litigation attorney or an Orange County intellectual property litigation attorney to enforce your rights, please contact Jonathan Rotter, who has extensive experience in the Central District of California.




Court Recognition

“And without question, the Court is of the opinion that the value of benefit that’s been conferred to the class is extremely sizable and that this Court is certainly aware that the skill and efficiency of plaintiff’s counsel is what attributed to this settlement, and they are learned securities counsel. The Court is mindful of that, and as a result they were able to sort of weed their way through the complex issues in this case, and also to bring this about — bring about a settlement rather in short order as these matters go. So the Court certainly attributes that to counsel’s skill and efficiency, as well as the ability to work with the adversaries in this matter.”

–Hon. Susan D. Wigention, U.S. District Judge, District of New Jersey

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— Hon. Donovan W. Frank, U.S. District Judge, District of Minnesota

“The court finds that the Settlement Fund… created by Class Counsel is an exceptional result… The settlement is significantly above the average securities class action settlement when measured as a percentage of losses recovered… The court finds that Class Counsel, particularly Co-Lead Counsel, exerted tremendous effort on behalf of the class in the prosecution of this action… The Court finds that Class Counsel skillfully prosecuted this action, particularly given that this case was unusually complex relative to most securities fraud class actions. ”

–Hon. Dickran M. Tevrizian (Ret.), U.S. District Court Judge, Central District of California

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