Patent Litigation

AuthorDavid R. Gerk - John M. Fleming
P A R T 3
Patent Litigation
I have been so constantly under the necessity of watching the move-
ments of the most unprincipled set of pirates I have ever known,
that all my time has been occupied in defense, in putting evidence
into something like legal shape that I am the inventor of the Electro-
Magnetic Telegraph.
—Samuel F. B. Morse
(inventor of the telegraph and Morse code)
Samuel F. B. Morse, His Letters and Journals (1914), vol. 2, 283
(Extract from a letter to his brother describing the challenge of
defending his patents on the telegraph, April 19, 1848)
Patent litigation does not just happen. Prior to any courtroom, any depo-
sition, any review of documents, or even any complaint, the process for
determining whether to litigate a patent begins with issuance of the patent,
or maybe even before. A practitioner involved in the process of litigating
a patent should appreciate several things before determining that legal
action in a U.S. District Court is the best course of action.
Part 3
142 Section 2, Part 3
A patent infringement action in a U.S. District Court is a very costly
endeavor. Litigating a patent can cost in excess of $3 million and take at
least two years. Also, the appeal process can cost as much as another $2
million and take at least another year of time. Prior to counseling a client
on whether to proceed or not, a practitioner should assist a client in
understanding the time and resource commitments that a patent litiga-
tion, whether offensive or defensive, will require. Given the significant
average costof litigation, the estimated costs need to be addressed imme-
diately. If the best case scenario is a judgment of less than $1 million,
then litigation may not be in the best interest of a client, or at least a
client should be aware that the litigation itself likely will cost more than
any payment received in a judgment.
Proper prosecution of the patent during examination before the U.S.
Patent & Trademark Office (USPTO) is critical to later litigation. It
dictates whether a patent is worth litigating, how well it will hold up to
attacks during litigation, and even whether it can be litigated. Funda-
mental issues during prosecution of a patent, whether substantive or pro-
cedural, can be used to invalidate the patent before an owner can even
attempt to assert an action against another party.
In addressing the validity and strength of the issued patent, certain
details associated with the patent need to be considered. In the U.S.,
ownership of a patent is defined initially by the determination of
inventorship, i.e., the determination of that individual or those individu-
als who conceived of and reduced to practice the invention. A patentee
cannot hope that identification of inventorship during the original pros-
ecution of the patent before the USPTO was proper. An effort should be
made to reevaluate the determination of inventors to ensure that proper
inventorship is in place. Improper inventorship of an issued U.S. patent
can be corrected if the error was without deceptive intent. As such, a
practitioner should address the determination of inventorship immedi-
ately and certainly before embarking on a litigation.
Another determination to be made before bringing a litigation action
is ownership. Just because the face of a U.S. patent indicates that a par-
ticular entity is the assignee does not mean that the ownership claim by
that assignee is proper. Public records should be reviewed to ensure that
the chain of title of ownership is proper. In situations in which the as-
signee is a company, the chain of title must start with a transfer of rights
Patent Litigation
from the inventor(s). In the U.S., the inventor(s) of a patent are the
owners of the patent unless an assignment of rights in the patent has been
made by the inventor(s). In addition, it is incumbent on patentees to
confirm that no other assignment records exist by any individual or en-
tity in the chain of ownership that deviates from the public record. Con-
firmation that the inventors did not assign rights prior to any publicly
recorded assignment is essential. A practitioner may face sanctions in
filing an infringement action against another entity if it can be shown
that the alleged owner is not in fact a proper owner to bring the legal
action. In addition to the determination of inventorship, a practitioner
should look into retaining the inventors as a consultant or witness. Other-
wise, a patentee may be left in a difficult position in bringing a litigation
action against a defendant that then retains one or more of the inventors.
Still another important factor regarding the validity of a patent that
needs to be considered and/or rectified prior to bringing a legal action of
infringement against a defendant is the confirmation of payment of the
maintenance fees. Maintenance fees for a U.S. utility patent must be paid
at certain intervals following issuance of the patent. Failure to timely pay
maintenance fees results in automatic abandonment of the patent. Yet
again, a practitioner may face sanctions before a court in the event that
an infringement action on a patent is brought when the patent is, in fact,
no longer enforceable due to abandonment. Maintenance fees must be
paid every four years, eight years, and twelve years following issuance
of the patent.1 If the patent is abandoned for failure to pay the mainte-
nance fees, revival of the patent may be sought in order to still bring a
legal action against another party so long as the proper paperwork is filed
and the abandonment is shown to have been unavoidable or uninten-
Although not required, a study of the validity of the patent may be
made before bringing an action, particularly if the state of the art was
unknown to the applicant during prosecution or there is reason to think
the most pertinent art may not have been identified and considered by the
examiner.2 A practitioner may search various databases for prior art that
is not of record, i.e., was not presented before the USPTO during exami-
1. One year windows for payment of maintenance fees open at 3.5, 7.5
and 11.5 years respectively.
2. Confidence in the strength of a patent can be greatly increased if the
state of the relevant art is known by the applicant, inventors or practitioner or
if a patentability or clearance search is performed prior to filing a patent ap-
plication. As such, time and money spent during the prosecution process to

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