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Basics of Patent Infringement Litigation
UC BerkeleyUC Berkeley
Patent Innovation and Strategy Patent Innovation and Strategy
Dr. Tal LavianDr. Tal Lavian
November 24, 2008 November 24, 2008
Introduction and Overview
• Forms of patent litigation
• Themes
• Areas of dispute
• Infringement litigation procedure
Forms of Patent Litigation
• Patent infringement
• Licensing disputes
• Inventorship / ownership
• Other
Infringement Litigation: Themes
$ $ $$ $ $
Theme 1:
Theme 1: $$$
• “High stakes” litigation: damages
“Microsoft ordered to pay $512 million to Alcatel-Lucent…” (June 2008)
“Medtronic ordered to pay $400 million to Dr. Michelson…” (October 2004)
Theme 1: $$$
• “High stakes” litigation: injunctions
“Court considers Blackberry injunction… Case settles for $612 million…” (March 2006)
“DISH Network DVR may be enjoined…” (August 2006, still pending)
Theme 1: $$$
• High cost of litigation
Amount at Issue Cost Through Trial
Less than $1 million $750,000
$1-25 million $3 million
More than $25 million $5.5 million
Source: AIPLA Economic Survey 2007
Theme 1: $$$
• High cost of litigation
Patent Litigation: Themes
ComplexityComplexity
Theme 2:
Theme 2: Complexity
• Complex technology
Theme 2: Complexity
• Complex technology1. A method of encoding a sound signal, comprising the steps of:
providing a codebook circuit for forming a codebook including a set of codevectors Ak each defining a plurality of different positions p and comprising N non-zero-amplitude pulses each assignable to predetermined valid positions p of the codevector;
providing a device for conducting in said codebook a depth-first search involving a tree structure defining a number M of ordered levels, each level m being associated with a predetermined number Nm of non-zero-amplitude pulses, N > 1, wherein the sum of said predetermined numbers associated with all said M levels is equal to the number N of the non-zero-amplitude pulses comprised in said codevectors, each level m of the tree structure being further associated with a path building operation, with a given pulse-order rule and with a given selection criterion; wherein: in a level 1 of the tree structure, the associated path-building operation comprises the following substeps: choosing a number N1 of said N non-zero-amplitude pulses in relation to the associated pulse-order rule; selecting at least one of the valid positions p of said N1 non-zero-amplitude pulses in relation to the associated selection criterion to define at least one level-1 candidate path; in a level m of the tree structure, the associated path-building operation defines recursively a level-m candidate path by extending a level-(m-1) candidate path through the following substeps: choosing Nm of said non-zero-amplitude pulses not previously chosen in the course of building said level-(m-1) path in relation to the associated pulse-order rule; selecting at least one of the valid positions p of said Nm non-zero-amplitude pulses in relation to the associated selection criterion to form at least one level-m candidate path; and wherein a level-M candidate path originated at a level-1 and extended during the path-building operations associated with subsequent levels of the tree structure determines the respective positions p of the N non-zero-amplitude pulses of a codevector and thereby defines a candidate codevector Ak.
Theme 2: Complexity
• Complex legal issues
• Complex business issues
Patent Litigation: Themes
• Theme 3:
UncertaintyUncertainty
Theme 3: Uncertainty
• Complexity Uncertainty
• Appeal reversal rate over 30%
Theme 3: Uncertainty
• Changing law
“Supreme Court reverses Federal Circuit again…”
“Proposed patent reform legislation…”
Patent Infringement Litigation
Issues in Dispute
Issues in Dispute
• Patent owner’s claims:
• Infringement
Direct or Indirect
Issues in Dispute
• Patent owner’s claims (cont.):
• Remedy
Damages
Injunction
Issues in Dispute
• Accused Infringer’s defenses:
• Non-infringement
Focus on patent claim elements
Issues in Dispute
• Accused Infringer’s defenses (cont.):
• Invalidity
Novelty (§ 102)
First to invent?
On-sale bar
Issues in Dispute
• Accused Infringer’s defenses (cont.):
• Invalidity (cont.)
Obviousness (§ 103)
Was the invention obvious at the time?
KSR case (2007)
Issues in Dispute
• Accused Infringer’s defenses (cont.):
• Invalidity
Defects in the patent document (§ 112)
Issues in Dispute
• Accused Infringer’s defenses (cont.):
• Equitable defenses
Inequitable conduct
Laches, estoppel
Issues in Dispute
• Claim construction (“Markman”)
Scope of claims is critical to infringement and validity
Patent Infringement Litigation
Procedure
Procedure
• Pre-filing activity
• Contact between the parties?
• Who sues?
Patent owner or accused party
• Whom to sue?
Procedure
• Pre-filing activity (cont.)
• Where to sue?
Federal court
“Rocket docket” vs. local
Int’l Trade Comm’n (ITC)
Procedure
• Pre-filing activity (cont.)
• Diligence and preparation
Procedure
• Pre-discovery period
Lawsuit filed but little $$ spent yet
Legal strategy
Business strategy
Procedure
• Discovery period
• Discovery tools and sources
Documents
Witness depositions
Written discovery
Procedure
• Discovery period (cont.)
• Discovery strategy
Cost/benefit
Disputes
Procedure
• Discovery period (cont.)
• Expert discovery
“Battle of the experts” part 1
Procedure
• Claim construction
Prepare early and often
Markman proceedings and order
Procedure
• Dispositive motions
When?
What issues?
Procedure
• Trial
Procedure
• Trial
Story / themes
Evidence
“Battle of the experts” part 2
Procedure
• Appeal
What issues?
Reversal statistics
Patent Infringement Litigation
Questions?