IP BasicsIP BasicsFrom a Litigator’s From a Litigator’s

PerspectivePerspective

Nick NicholasNick NicholasJackson Walker L.L.P.Jackson Walker L.L.P.1401 McKinney Street1401 McKinney Street

Suite 1900Suite 1900Houston, Texas 77010Houston, Texas 77010Work: 713-752-4443Work: 713-752-4443Cell: 281-636-2612Cell: 281-636-2612

Two Sides of the CoinTwo Sides of the Coin

ProsecutionProsecution

LitigationLitigation

Three Types of Three Types of Intellectual PropertyIntellectual Property

CopyrightsCopyrights

TrademarksTrademarks

PatentsPatents

Trade SecretsTrade Secrets**

CopyCopyrightright

A form of protection provided by Title 17 A form of protection provided by Title 17 to the authors of original works of to the authors of original works of authorship including literary, dramatic, authorship including literary, dramatic, musical, artistic and certain other musical, artistic and certain other intellectual works.intellectual works.

Generally speaking, the protection lasts Generally speaking, the protection lasts from the moment of creation to 70 years from the moment of creation to 70 years after the author’s death (latest).after the author’s death (latest).

Works for Hire or Anonymous works are Works for Hire or Anonymous works are protected 95 years from publication or protected 95 years from publication or 120 years from creation.120 years from creation.

§ 102 - § 102 - Copyrightable WorksCopyrightable Works

Literary worksLiterary works Musical worksMusical works Dramatic worksDramatic works Pantomimes Pantomimes

and and choreographic choreographic worksworks

Pictorial, graphic Pictorial, graphic and sculptural and sculptural worksworks

Motion pictures Motion pictures and audio/visual and audio/visual worksworks

Sound recordingsSound recordings Architectural workArchitectural work

§ 106 - § 106 - Exclusive RightsExclusive Rights

ReproductionReproduction AdaptationAdaptation DistributionDistribution Public Public

performanceperformance

Public displayPublic display Attribution and Attribution and

integrity (integrity (§ 106A)§ 106A) Importation (Importation (§ 602)§ 602)

§ 408 - § 408 - Registration Registration No, it is not a requirement. Yes, you want to do itNo, it is not a requirement. Yes, you want to do it

Required before Required before an infringementan infringement suit may be filed suit may be filed for for works of US originworks of US origin

If done before or within 5 years after publication, it If done before or within 5 years after publication, it establishes establishes prima facie evidenceprima facie evidence of of thethe validity validity of the of the copyright, and of the facts stated in the certificatecopyright, and of the facts stated in the certificate

If within 3 months after publication, or before infringement, If within 3 months after publication, or before infringement, statutory damages and attorney’s fees are availablestatutory damages and attorney’s fees are available. . Otherwise, only actual damages and profits are availableOtherwise, only actual damages and profits are available

Required for registration withRequired for registration with the US the US CustomsCustoms Service Service for protection against the importation of infringing copiesfor protection against the importation of infringing copies

Can be Can be done at any timedone at any time within the life of the copyright within the life of the copyright Relatively Relatively easyeasy (can do online) (can do online) and inexpensive and inexpensive (as low as (as low as

$35)$35) see see USCO Circular No. 4 USCO Circular No. 4

Is he Is he going to going to read read every every code code provisionprovision??

Plaintiff Defendant

Plaintiff’s CasePlaintiff’s Case

Introduces her copyright Introduces her copyright registration into evidenceregistration into evidence

Proves defendant copied too Proves defendant copied too much of the registered workmuch of the registered work

Proves her damagesProves her damages Proves defendant’s profitsProves defendant’s profits

Defenses - Attack ValidityDefenses - Attack Validity Copyright has Copyright has expiredexpired Was Was abandonedabandoned by first publication before by first publication before

1978 without copyright notice 1978 without copyright notice Insufficiently originalInsufficiently original Unprotectectable because of its Unprotectectable because of its unlawful unlawful

contentcontent (an unlawful derivative work) (an unlawful derivative work) Uncopyrightable Uncopyrightable factual compilationfactual compilation Unprotectable Unprotectable functional workfunctional work (business (business

form)form) Registration was obtained by knowing Registration was obtained by knowing

fraudfraud

DefensesDefenses Independent creationIndependent creation Accused copying is outside Accused copying is outside

the 3 year statute of the 3 year statute of limitationslimitations

Only copied unprotectable Only copied unprotectable materialmaterial

De minimisDe minimis copying copying Fair Use DoctrineFair Use Doctrine

§ 107 – Limitations on Exclusive Rights: Fair Use§ 107 – Limitations on Exclusive Rights: Fair Use For purposes such as criticism, comment, For purposes such as criticism, comment,

news reporting, teaching, scholarship, or news reporting, teaching, scholarship, or research; research; the purpose and character of the use (the purpose and character of the use (i.ei.e., .,

commercial or nonprofit educational purpose)commercial or nonprofit educational purpose) the nature of the copyrighted work;the nature of the copyrighted work; the amount and substantiality of the portion the amount and substantiality of the portion

used in relation to the copyrighted work as a used in relation to the copyrighted work as a whole; andwhole; and

the effect of the use upon the potential market the effect of the use upon the potential market for, or value of, the copyrighted work.for, or value of, the copyrighted work.

DamagesDamages

Injunctive Relief (Injunctive Relief (§ 502)§ 502) Impounding and Disposition of Impounding and Disposition of

Infringing Articles (Infringing Articles (§ 503)§ 503) Seizure and Forfeiture (Seizure and Forfeiture (§ 509)§ 509) Importation Disposition (§ 603)Importation Disposition (§ 603)

§ 504§ 504 – – $$$$$$$$$$ - Money - Money The owner is entitled to recover the The owner is entitled to recover the actual damagesactual damages

suffered as a result of the infringement, suffered as a result of the infringement, and any profits of and any profits of the infringerthe infringer (not already included in actual damages). The (not already included in actual damages). The owner presentsowner presents proof of infringer’s proof of infringer’s gross revenuegross revenue and and then the then the burden shifts to the infringerburden shifts to the infringer to prove deductible to prove deductible expenses and any profit attributable to factors other than the expenses and any profit attributable to factors other than the copyrighted workcopyrighted work

The The ownerowner, at any time before final judgment, , at any time before final judgment, may electmay elect to to recover an award of recover an award of statutory damagesstatutory damages in a sum of in a sum of not not less than $750 or more than $30,000less than $750 or more than $30,000 as the Court as the Court considers justconsiders just

If owner proves that the If owner proves that the infringementinfringement was was committed committed willfullywillfully, the , the court may increase the awardcourt may increase the award of statutory of statutory damages damages to not more than $150,000to not more than $150,000

United States Copyright OfficeUnited States Copyright Officewww.copyright.govwww.copyright.gov

TrademarkTrademarkA form of protection provided by Title A form of protection provided by Title 15 (The Lanham Act) to the owner of 15 (The Lanham Act) to the owner of a federally registered Trademark.a federally registered Trademark.

Generally permits the owner the right Generally permits the owner the right to exclude others from using the to exclude others from using the same or similar marks on same or same or similar marks on same or similar goods or services in a defined similar goods or services in a defined geographic area or a particular field of geographic area or a particular field of use.use.

State (Texas Trademark Act, Title, 2, State (Texas Trademark Act, Title, 2, Chapter 16, Business & Commerce Chapter 16, Business & Commerce Code) and common law protection Code) and common law protection provided as well.provided as well.

Other MarksOther Marks

Trademark Service MarkTrademark Service Mark

What Can Be Trademarked?What Can Be Trademarked?

Any identification of goods or services that Any identification of goods or services that indicates the source and distinguishes indicates the source and distinguishes them from the goods or services of othersthem from the goods or services of others

To obtain the exclusive right to use a To obtain the exclusive right to use a mark, you must be the first to properly use mark, you must be the first to properly use it in your trade area, or file a federal it in your trade area, or file a federal trademark application that issues as a trademark application that issues as a registrationregistration

What Can Be Trademarked? What Can Be Trademarked?

WordWord SymbolSymbol ColorColor SmellSmell Name (Name (including Domainincluding Domain)) DesignDesign SoundSound CombinationsCombinations

Trade Dress

Trademark CategoriesTrademark Categories

Generic TermsGeneric Terms - are - are not protectable and not protectable and can be used by can be used by anyoneanyone

Descriptive TermsDescriptive Terms – –are only protectable if are only protectable if the public uses the the public uses the term to distinguish term to distinguish your goods and your goods and services from your services from your competitors (jury competitors (jury question)question)

Trademark CategoriesTrademark Categories

Suggestive TermsSuggestive Terms – – suggest a quality or suggest a quality or characteristic, and are characteristic, and are protectable if they are protectable if they are not primarily not primarily descriptivedescriptive

Arbitrary or Fanciful Arbitrary or Fanciful TermsTerms – have no – have no relationship to the relationship to the goods or services and goods or services and are very protectableare very protectable

Yes, You Want to RegisterYes, You Want to Register Your Trademark Your Trademark

Provides Provides constructive noticeconstructive notice to all to all othersothers

Provides Provides presumption of ownershippresumption of ownership and exclusive right to useand exclusive right to use nationwide nationwide on goods and services listedon goods and services listed

Basis for Basis for foreign registrationsforeign registrations Can be field with Can be field with US CustomsUS Customs Service Service

to prevent wrongful importationto prevent wrongful importation Valid for Valid for 10 years but renewable10 years but renewable as as

long as the mark is still in uselong as the mark is still in use

Plaintiff’s CasePlaintiff’s Case Plaintiff must prove:Plaintiff must prove:

Priority Priority The mark is protectableThe mark is protectable Defendant’s mark is likely to confuse the Defendant’s mark is likely to confuse the

relevant public into thinking Defendant’s relevant public into thinking Defendant’s goods or services are affiliated with the goods or services are affiliated with the Plaintiff’sPlaintiff’s

The Jury Question: Do you find from a The Jury Question: Do you find from a preponderance of the evidence that preponderance of the evidence that potential customers are likely to be potential customers are likely to be confused between Plaintiff’s mark ABC confused between Plaintiff’s mark ABC and Defendant’s mark AZCand Defendant’s mark AZC

DefensesDefenses

InvalidityInvalidity

LachesLaches

Fair UseFair Use occurs when a occurs when a descriptive mark is used descriptive mark is used in good faith for its in good faith for its primary (rather than primary (rather than secondary) meaning, and secondary) meaning, and no consumer confusion is no consumer confusion is likely to resultlikely to result

“all bran”

DefensesDefenses

Nominative UseNominative Use occurs when use of occurs when use of the mark is the mark is necessary for necessary for purpose of purpose of identificationidentification

““playboy playmate”playboy playmate” ““New Kids on the New Kids on the

Block”Block”

DefensesDefenses

ParodyParody – occurs – occurs when use of the when use of the mark is for artistic mark is for artistic or editorial or editorial parodiesparodies

Spa’am

DamagesDamages Injunctive reliefInjunctive relief, including possible seizure of goods and , including possible seizure of goods and

counterfeit marks, and means of making such marks (§ counterfeit marks, and means of making such marks (§ 1116)1116)

Defendant’s profits, Plaintiff’s actual damages, costs Defendant’s profits, Plaintiff’s actual damages, costs and attorney’s feesand attorney’s fees (§ 1117(a)) (§ 1117(a))

Treble damagesTreble damages (profits or damages whichever is greater) (profits or damages whichever is greater) for use of for use of counterfeitcounterfeit mark (§ 1117(b)) mark (§ 1117(b))

Statutory damages Statutory damages for use of for use of counterfeitcounterfeit marks marks Not less than $500 or more than $100,000 per counterfeit mark Not less than $500 or more than $100,000 per counterfeit mark

per type of goods or services, orper type of goods or services, or If use of If use of counterfeitcounterfeit mark was willful, not more than mark was willful, not more than

$1 million$1 million per counterfeit mark per type of goods or services, per counterfeit mark per type of goods or services, as the court considers just (§ 1117(c))as the court considers just (§ 1117(c))

Statutory damages of not less than $1,000 and not more Statutory damages of not less than $1,000 and not more than $100,000 than $100,000 per domain nameper domain name (§ 1117(d)) (§ 1117(d))

United States Patent & Trademark OfficeUnited States Patent & Trademark Officewww.uspto.gov/main/trademarkswww.uspto.gov/main/trademarks

PatentsPatentsTitle 35 provides a Title 35 provides a Patent Owner the Patent Owner the exclusive right to make, exclusive right to make, use, sell or import the use, sell or import the covered invention.covered invention.

Generally speaking, the Generally speaking, the protection lasts 20 years protection lasts 20 years from the date of filing.from the date of filing.

A patent only protects A patent only protects what is what is actuallyactually described by the Claims.described by the Claims.

What Is Patentable?What Is Patentable?

To be patented, an invention only To be patented, an invention only needs to be useful, novel and non-needs to be useful, novel and non-obvious obvious ProcessProcess MachineMachine SoftwareSoftware Method of manufactureMethod of manufacture Method of doing businessMethod of doing business Composition of matterComposition of matter Improvement on existing thingImprovement on existing thing

Patent Name and Patent Name and NumberNumber

TitleTitle InventorsInventors Assignments (pre-issue)Assignments (pre-issue) Application No.Application No. Subject Matter Subject Matter

CategoriesCategories Filed date and HistoryFiled date and History Field of SearchField of Search Prior Art ReferencesPrior Art References PTO ExaminersPTO Examiners Abstract – Abstract – Usually includes a Usually includes a

brief explanation of how the brief explanation of how the invention works and why it is invention works and why it is usefuluseful

SpecificationSpecification - - describes the describes the invention or technology in words invention or technology in words sufficient to satisfy the specificity sufficient to satisfy the specificity requirement (description must requirement (description must allow persons skilled in the field to allow persons skilled in the field to practice the invention)practice the invention)

Field of the InventionField of the Invention Background of the Prior ArtBackground of the Prior Art

– discusses the state and – discusses the state and limitations of current limitations of current technology, and shows the technology, and shows the advantages provided by the advantages provided by the new inventionnew invention

Objects of the InventionObjects of the Invention Brief Description of the Brief Description of the

DrawingsDrawings Description of Preferred Description of Preferred

EmbodimentEmbodiment – describes in – describes in detail the processes and detail the processes and components visible in the components visible in the drawings, and the inventor’s drawings, and the inventor’s favored implementation of the favored implementation of the inventioninvention

But The Claims Are What MatterBut The Claims Are What Matter

The Claims define The Claims define what the patent what the patent “covers” and what “covers” and what conduct or activity conduct or activity will infringewill infringe

““What is claimed What is claimed is…”is…”

Claim NumbersClaim Numbers Claim ConstructionClaim Construction

The No. 1 Rule in Patent LitigationThe No. 1 Rule in Patent Litigation

Know Your Local Rules!Know Your Local Rules!

Life Cycle of a Typical Life Cycle of a Typical Patent Infringement LawsuitPatent Infringement Lawsuit

P’s ComplaintP’s Complaint Initial Case Management Initial Case Management

Conference and Initial Conference and Initial DisclosuresDisclosures

P’s P’s Disclosure of Asserted Disclosure of Asserted Claims and Infringement Claims and Infringement ContentionsContentions with document with document productionproduction

D’s Invalidity ContentionsD’s Invalidity Contentions with with document productiondocument production

Parties exchange Proposed Parties exchange Proposed Terms and Claim Elements for Terms and Claim Elements for ConstructionConstruction

Parties exchange Preliminary Parties exchange Preliminary Claim Constructions and Claim Constructions and Extrinsic EvidenceExtrinsic Evidence

P limits the number of asserted P limits the number of asserted claims (if Court orders)claims (if Court orders)

Parties file Joint Claim Parties file Joint Claim ConstructionConstruction

P files Opening P files Opening Claim Claim Construction BriefConstruction Brief

D files Responsive Claim D files Responsive Claim Construction Brief Construction Brief

Parties file Claim Construction Parties file Claim Construction ChartChart

Claim Construction (Markman) Claim Construction (Markman) hearinghearing

Claim Construction RulingClaim Construction Ruling It took 3 years to get to this It took 3 years to get to this

point in my last case!point in my last case!

But It Still Goes OnBut It Still Goes On

D files D files Final Invalidity Final Invalidity ContentionsContentions

D makes Disclosure D makes Disclosure relating to relating to WillfulnessWillfulness

All Fact Discovery All Fact Discovery completedcompleted

Parties disclose Expert Parties disclose Expert Witnesses and serve Witnesses and serve Expert ReportsExpert Reports

InvalidityInvalidity Non-InfringementNon-Infringement

All Expert Discovery All Expert Discovery completedcompleted

Dispositive MotionsDispositive Motions Pretrial ConferencePretrial Conference Pretrial DisclosuresPretrial Disclosures Pretrial MotionsPretrial Motions Jury SelectionJury Selection TrialTrial

Plaintiff’s CasePlaintiff’s Case

Plaintiff introduces his Plaintiff introduces his PatentPatent into evidence into evidence Plaintiff must Plaintiff must proveprove that the that the accused accused

instrumentality practices every element instrumentality practices every element of the claimof the claim, through Literal Infringement , through Literal Infringement or the Doctrine of Equivalentsor the Doctrine of Equivalents If the Patent Claim contains Elements A, B and If the Patent Claim contains Elements A, B and

C, but the accused instrumentality only C, but the accused instrumentality only practices A and B, then there is no infringementpractices A and B, then there is no infringement

Plaintiff prove his Plaintiff prove his damagesdamages Plaintiff introduces his evidence of Plaintiff introduces his evidence of

willfulnesswillfulness

Defenses – Attack ValidityDefenses – Attack Validity

§ 102 - Novelty and Loss of Right to Patent§ 102 - Novelty and Loss of Right to Patent If the claimed invention is identical toIf the claimed invention is identical to the subject matter disclosed or the subject matter disclosed or

embodied in the embodied in the prior art referenceprior art reference, , then the claim is anticipated then the claim is anticipated and invalidand invalid for lack of novelty for lack of novelty

Prior knowledge, use, patents, applications and/or Prior knowledge, use, patents, applications and/or publications publications

§ 103 – Non-obvious Subject Matter§ 103 – Non-obvious Subject Matter If the difference betweenIf the difference between the subject matter sought to be protected the subject matter sought to be protected

(i.e. (i.e. the new invention) and the prior artthe new invention) and the prior art are such that that the are such that that the subject matter as a whole subject matter as a whole would have been obvious to a person would have been obvious to a person having ordinary skill in the art, then the claim is invalid for having ordinary skill in the art, then the claim is invalid for obviousnessobviousness

Even Better – Prove Non-Infringement

DamagesDamages Injunctive relief (§ 283) Damages adequate to compensate for the

infringement, but in no event less than a reasonable royalty for the use, together with interest and costs. If damages are not found by the jury, then court shall assess them, but either way the court may treble the damages if the infringement is found to be willful (§ 284)

Attorney fees (§ 285) Plaintiff cannot recover for infringement

committed more than 6 years prior to the filing of the complaint (§ 286)

United States Patent & Trademark OfficeUnited States Patent & Trademark Officewww.uspto.gov/main/patentswww.uspto.gov/main/patents