Overview of Patent Litigation. Episode 103

From Patent Prosecution to Litigation

So far, this podcast has focused mainly on patent prosecution. Patent prosecution is the process of getting a patent through the United States Patent and Trademark Office. I’ve sprinkled in a few episodes about trademarks and copyrights, but mostly it’s been about how to get a patent.

I haven’t really discussed patent litigation—which is about suing someone for infringing your patent, or when you get sued for infringing someone else’s patent. Litigation happens in the courts, not at the patent office.

Since I’ve pretty much covered every main topic in patent prosecution, I figured I’d venture out into patent litigation. In this episode, I’m going to give a broad overview of the steps, and in future episodes, I’ll go into more detail on each step in the process.

Step One: Identifying Potential Infringement

Let’s take this from the perspective of a patent owner. You’ve received a patent, and then you see a product out there that appears to be an exact or near-exact copy of your patented invention.

The first thing you want to do is get that product—you may need to buy it—to examine it more closely and determine whether it infringes your patent.

I already have an entire episode on patent infringement—Episode 76—so I recommend reviewing that to learn how to determine infringement. That includes direct infringement, induced infringement, contributory infringement, and the doctrine of equivalents.

Let’s say you’ve examined the product and believe it infringes your patent. What’s next?

Step Two: Cease and Desist Letter

You’ll likely start with a demand letter, often called a cease and desist letter. You can include whatever you want in it, but generally, you include your patent number, explain why you believe their product infringes, and ask them to stop making, using, or selling it.

Some people keep it vague—just enough to scare the other party into stopping, without giving away too much information.

Step Three: Filing a Complaint

If the recipient ignores the letter or refuses to negotiate, the next step is to file a complaint with the court. The complaint is the first formal legal document that starts a lawsuit. You also serve the complaint on the defendant—the party you believe is infringing your patent.

In the complaint, you must provide enough information for the defendant to respond. What counts as “enough” is often disputed, but let’s assume you include a detailed explanation of your patent, the infringing product, and why it infringes.

Step Four: The Defendant’s Response

The defendant must file an answer. If they don’t, they risk a default judgment, which means you win automatically.

Sometimes, the defendant might file a motion for judgment on the pleadings. This means they argue that even if everything in your complaint is true, there’s still no valid claim. For example, someone suing for infringement based on a patent application that hasn’t issued yet—that’s not a valid case.

These motions are hard to win, because usually, if everything the plaintiff alleges is true, the case proceeds.

Step Five: Scheduling

Once the defendant files an answer, the court issues a scheduling order. This outlines the litigation timeline—trial date, deadlines for exchanging documents, deadlines for expert witness reports, and more.

Step Six: Discovery

The discovery phase is where most of the work (and cost) comes in.

Each party can request documents and submit questions (called interrogatories). This is also when depositions take place—where attorneys question witnesses under oath, usually in conference rooms.

Discovery can reveal important information, like sales figures of the accused product or internal communications. Expert witnesses are often involved here as well.

This is typically the most expensive part of the litigation process.

Step Seven: Claim Construction (Markman Hearing)

The next phase is claim construction, also known as a Markman hearing. This is where the judge determines the meaning of terms used in the patent claims.

I discussed this in detail in Episode 83.

For example, suppose your patent claims a “tunnel” through a piece of wood. The defendant made a groove instead—open on top. You say the groove is a kind of tunnel; the defendant says it’s not.

Whether a “groove” qualifies as a “tunnel” may decide the entire case. Once the judge rules on the meaning of the term, one party might realize they can’t win and settle.

Step Eight: Summary Judgment

If no settlement is reached, the next stage is often summary judgment. This is when the judge rules that, based on the facts submitted, no reasonable jury could find for one side.

Sometimes, only part of the case is resolved at this stage, narrowing the scope of the trial.

However, summary judgment is rare in patent cases because of dueling expert witnesses. If both sides have credible experts, judges usually leave it to the jury.

Step Nine: Trial

If the case goes to trial, both sides present their case to a jury, using documents, witnesses, and expert testimony. The trial is held in federal district court.

You’ve seen trials on TV, so I won’t go into detail here—but keep in mind that patent trials are complex and expensive.

Step Ten: Appeal to the Federal Circuit

If you lose at trial, you can appeal. Normally, federal cases are appealed to the regional circuit courts (e.g., Ninth Circuit in California).

But patent cases are different. They are appealed to the U.S. Court of Appeals for the Federal Circuit in Washington, D.C., which specializes in patent law.

Your appeal is usually heard by a three-judge panel. The court can affirm, reverse, or vacate the lower court’s decision. If they vacate, the case goes back to the trial court for reconsideration, following the appellate court’s guidance.

Final Step: Appeal to the Supreme Court

If you lose at the Federal Circuit, you can try to appeal to the U.S. Supreme Court—but they take only a few patent cases per year. So, in most cases, the Federal Circuit is the final word.

Patent Litigation Is Expensive and Time-Consuming

Patent litigation can take years and cost millions of dollars. That’s why settling is usually in both parties’ interest. Sometimes, the attorney’s fees alone could cost more than the amount in dispute.

In rare cases, you may be able to recover attorney’s fees if you win—and I’ll probably do an episode about that. I’ll also likely break down each stage of litigation in more detail in future episodes.

But for now, this should give you a bird’s-eye view of the stages of patent litigation.

I’m Adam Diament, and until next time, keep on inventing.