Patent Litigation Primer: the Five Things You Need to Know

A patent is a limited government grant awarded to an inventor in exchange for the disclosure of her invention to the public. To secure your intellectual property, it is important to understand how patents work…

The Patent Right

A patent is a limited government grant awarded to an inventor in exchange for the disclosure of her invention to the public.  The U.S. patent and copyright statutes are grounded in Article I, Section 8, Clause 8 of the United States Constitution, which grants Congress the enumerated power “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” 

To obtain patent protection for an invention, the inventor must satisfy a number of disclosure requirements.  The inventor cannot be awarded a patent and at the same time withhold a sufficient written description of the invention, how to make and use it and relevant prior technology of which she is aware.  The core policy of the patent system is to widely disseminate useful technical information in exchange for the exclusive rights afforded the inventor.

The patent laws limit a patent in time and scope.  With certain exceptions, a patent’s term lasts 20 years from the first filed patent application.  The subject matter of a patent is limited to what is described in the “claims” of the patent, single sentence paragraphs containing limitations that set forth the meets and bounds of the intellectual property covered by the patent.  By law a patent is personal property, it can be purchased and sold, leased or licensed, or pledged, prior to expiration.

Patent Procurement

A patent is obtained by first making an invention.  Patent law defines an invention as a solution to a problem.  An inventor consults with patent counsel, and if it is decided that a patent for the invention should be pursued, a patent application is drafted and, if approved by the United States Patent and Trademark Office (“USPTO”), a patent will be granted to the inventors.  This process can take several years to complete.  However, if the inventor’s attorney is successful, the Office will allow the patent application to issue as a patent.

Patent Infringement

The owner of a patent may learn that a third party, perhaps a competitor, is making, using, selling, or importing a product or process that is embraced by the patent’s claims.  This is known as patent infringement.  In this instance, the patent owner has a number of options.  For example, it can negotiate a settlement, or bring a patent infringement suit in federal court to stop the infringement and obtain an award of damages.  Most patent cases settle prior to trial.

Patent Cases

Depending on its size, a patent case can be relatively simple, or huge and complex.  A great deal is at stake.  An issued patent carries with it a presumption of validity.  However, the alleged infringer is entitled to prove, by clear and convincing evidence, that the patent is invalid or unenforceable.  Infringement involves two prongs: (1) construction of the terms of the patent claims in dispute and (2) whether the claims, as construed, embrace the accused product or process.  Prong 1 is a question of law for the court to decide. Prong 2 is a question for the trier of fact, e.g., the jury, to decide.

The plaintiff will try to obtain a favorable ruling on the scope of its patent, and the defendant will seek a ruling in its favor on this issue.  Other issues of importance also arise. The parties will spar over the issues of patent eligibility, novelty, obviousness, sufficiency of the patent’s written description and whether it enables one ordinary skill in the field to make and use the invention.  Damages’ categories include a reasonable royalty for the use of its patent, lost profits, price erosion, lost market share and mixtures of the same.  Statutory damages include an enhanced award for willful infringement and litigation misconduct.

Appeals

All patent cases are subject to appeal in the U.S. Court of Appeals for the Federal Circuit in Washington, D.C.  The Federal Circuit was formed in 1983 to bring uniformity to the disparate rulings of the regional circuit courts and to discourage forum shopping.  However, over the years, the Federal Circuit’s internal panels have come to disagree on key patent law issues, thus eradicating the uniformity the Court was designed to achieve. 

Conclusion

Patent litigation, at its higher levels, is complex, costly, and sometimes unpredictable.  Like many other legal proceedings, it comes down to the resources of the parties.  It can cost millions of dollars to litigate and try a large and complex patent case.