1. Can I infringe a patent if I am not aware of it?

Yes. Lack of knowledge of a patent or a lack of intent to infringe the patent is not a defense to an allegation of patent infringement. Patent infringement occurs when someone, without authority, makes, uses, offers to sell, or sells within the United States, or imports into the United States, any patented invention during the term of the patent. In other words, patent infringement is a “strict liability” offense.

2. How do I tell whether someone infringes my patent, trademark, or copyright?

Determining patent infringement requires comparing the claims of the patent (the numbered paragraphs at the end of a patent) to an accused product or process. An accused product or process literally infringes a patent claim if each limitation in the claim is identically present in the accused product or process.

An accused product or process that does not literally satisfy each limitation of the claim may still infringe the claim under the doctrine of equivalents. Under this doctrine, even if some claim limitations are not literally present in an accused product or process, those limitations can still be satisfied, and infringement may be found, if corresponding features are insubstantially different from the relevant language in the claim.

A product or process that lacks even a single limitation or its equivalent does not infringe the claim.

Trademark infringement occurs when the defendant’s use of a mark to identify goods or services causes a likelihood of confusion among ordinary customers as to the source, sponsorship, affiliation, or approval of the goods or services. In order to determine whether a likelihood of confusion exists, courts consider factors such as: (1) strength of the mark; (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual confusion;
(5) marketing channels used; (6) type of goods and degree of care likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark; and (8) likelihood of expansion of the product lines.

Copyright infringement occurs when there is:
(1) ownership of a valid copyright, which can be proven, for example, by showing that the copyright is registered; and
(2) copying of constituent elements of the work that are original. Copying can be proven by direct evidence of copying or by demonstrating access to the copyrighted work and substantial similarity between the accused work and copyrighted work.

3. Do I need to save my documents and emails?

If you are involved in a lawsuit that has been filed, or if you anticipate litigation, you should take steps to preserve all records that may be relevant to the lawsuit. Failure to preserve such records, known as “spoliation,” can result in serious court-ordered penalties, including monetary sanctions.

The information to be preserved includes such things as paper documents; email; electronic documents; audio/visual records; and physical objects, such as prototypes. Courts generally do not make exceptions for records that may be stored elsewhere or may be difficult to retrieve; for example, company records need to be preserved even when they are located in an employee’s office or home, or any other location. These records include those stored on any electronic devices, such as PCs, laptops, computer disks, network drives, USB flash drives, smartphones, and cloud storage. Also, data destruction and backup tape recycling policies should be discontinued, and email “auto-delete” functions should be disabled.

Employers should also send to relevant employees a “litigation hold” notice that informs them of their duty to preserve relevant records.

4. Will my adversary get to see my confidential documents?

During the course of litigation, each party will likely be required to produce its confidential information to the attorneys on the opposing side. As a result, the parties often ask the court to enter a “protective order” to govern the handling of each party’s confidential information.

These protective orders often allow a party to designate highly sensitive material requested by the other party as “highly confidential” or “attorneys’ eyes only,” which restricts access of
the information to outside litigation counsel and approved experts. Thus, the public and opposing party will not have any access. Protective orders also typically restrict confidential information from being used for any purpose other than the lawsuit.

You can review some model protective orders on the U.S. District Court for the Northern District of California’s website at www.cand.uscourts.gov/stipprotectorder.

5. We have insurance that may cover litigation; what do we do?

You should promptly and carefully review all insurance coverage that you may have to determine whether a portion of the legal fees may be reimbursable to you by your insurance carrier. You should also promptly obtain legal advice from an insurance attorney with respect to insurance coverage, because many insurance policies include time limits for submitting claims.

6. Can I challenge the validity of a patent?

An issued patent is presumed to be valid. But an accused infringer can overcome this presumption by presenting clear and convincing evidence of invalidity. This can be done by, for example, showing that the claimed invention is not new—that is, that someone had previously made the identical invention. This is known as “anticipation” and occurs when each element of a patent claim is present in a single piece of “prior art,” for example, an earlier patent or publication.

A patent claim can also be proven invalid by showing that the claimed invention would have been “obvious”—that is, if a person of ordinary skill in the relevant field would have readily been able to achieve the invention using existing knowledge, whether drawn from one or even multiple prior art references.

7. Why do most cases settle?

The high cost of intellectual property litigation often creates an incentive for the parties to explore settlement at an early stage. Also, the expense of litigation sometimes means that litigation doesn’t make economic sense given the amount that may be at stake. Litigation may also distract management and employees from focusing on their business. Customers may also be drawn into the dispute, which can strain customer relationships. Litigation may also cast a cloud of uncertainty over a party’s business. For these and other reasons, more than 95% of intellectual property lawsuits are resolved before trial, often through settlement.

8. What is claim construction?

The claims are the most important part of a patent. They are the numbered paragraphs at the end of a patent that define the scope of the protected invention. Claim construction is the process of “construing”—determining the meaning and scope of—patent claims for purposes of litigation. This process is often referred to as the Markman process, named after an important U.S. Supreme Court case, Markman v. Westview Instruments,
517 U.S. 379 (1996). In the Markman process, the parties file briefs in support of their proposed claim constructions (often supported by expert testimony), after which the court may hold a Markman hearing. The court then renders a Markman ruling construing the claims of the patent. The court’s claim construction typically will be part of the jury instructions if the case reaches trial.

In determining the meaning and scope of the patent claims, courts look primarily to the claim language, patent specification, and prosecution history (the written record of communications between the patent applicant and the Patent Office). Claim terms are interpreted as they would be understood by a hypothetical person of “ordinary skill in the art” who has read these documents. Generally, claim terms are construed according to their ordinary and customary meanings in this context. A leading case describing the proper claim construction process is Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).

9. What is a summary judgment motion?

A summary judgment motion is a written request that a court decide an issue (or the whole case) without the need for a trial. In patent cases, for example, such a motion often addresses questions of infringement and validity, and is typically filed after discovery and claim construction are complete.

For summary judgment to be obtained, the court must find
“no genuine dispute as to any material fact” and that the moving party is entitled to “judgment as a matter of law.” What this basically means is that, if the relevant facts on an issue are undisputed, summary judgment can be obtained if the party can show the court that they would win under the law applied to those facts.

10. Where can I get more information about intellectual property litigation?

Patent, trademark, and copyright litigation are complex matters. The assistance of lawyers experienced in such matters is essential to protecting and enforcing your intellectual property rights, or in successfully defending against allegations of patent, trademark, or copyright infringement. To contact a patent, trademark, or copyright lawyer, or to learn more about Knobbe Martens, visit www.knobbe.com