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?