San Diego Patent Attorneys, Patent Litigation

Patent Attorneys

For a discussion of acquiring patents, see Patent Applications

Patent Infringement

Patent infringement, or accusations of patent infringement can have drastic implications for a business, public or private. Any and all allegations or infringements must be taken seriously. Unchecked infringements can damage market shares. Unchecked allegations of infringement can threaten innovation and fair competition. Whether your business is dealing with infringements, or has been alleged to infringe patents, you will need aggressive representation to protect your interests. In all cases, a business needs attorneys who are familiar with patent law, who are experienced, and understand federal litigation. attorneys are experienced in the realms of patent law and patent litigation. Moreover, we maintain the latest software and docketing programs available to efficiently manage and streamline the size and scope of patent infringement litigation. We will take the time to listen and understand the issues, and then find a solution that meets the need of your business.

Patent Litigation requires Patent Expertise

If there is any question of patent infringement, it is important to seek a patent opinion from a qualified Patent Attorney familiar with patent infringement litigation. Patent Infringement litigation is highly specialized and can be expensive. Therefore, in most cases it is prudent to thoroughly investigate possible infringements and to fully assess the cost versus benefit of engaging an opponent through the courts. If you or your business have been accused of patent infringement, it is extremely important to secure an infringement opinion to decipher whether there is an actual issue of infringement and how to proceed in defense. If you want aggressive representation, then the attorneys of are ready to represent you. You should contact the lawyers of to discuss the specifics of your case. Based in San Diego, California and also in Houston, Texas, the patent attorneys of are well equipped to handle your case.

Patent Lawsuit Venue

Patent litigation typically proceeds in federal court or arbitration. Some matters of infringement may arise with administrative bodies such as the International Trade Commission. Venue in a case of patent infringement is often one of the first battles between the parties once a lawsuit is initiated because the choice of venue can have a significant impact on the outcome of a case and the convenience of the parties. Because many patented products are distributed throughout the country and the world, venue may be proper in a variety of federal jurisdictions.

Patent Infringement Basics

As complex as the technology may be, the arguments are typically that the Defendant's technology has all the elements recited in the Plaintiff's patent claims, which define the invention. If so, there is a case of literal patent infringement. If there is not a case of "literal infringement," a Plaintiff may also claim patent infringement under the "Doctrine of Equivalents." These arguments have been significantly limited in recent years because of a line of case law (Festo) that has narrowed application of the Doctrine, but it is still routinely used in patent litigation.

Remedies for Patent Infringement

Typically, a Plaintiff wants infringement to stop, imports to stop, or monetary damages. Damages are frequently measured as a matter of either lost licensing royalties, sales, or profits. Patent infringement cases usually involve the employment of forensic economists who assess damages.

Patent Infringement Procedure

In the federal courts, patent litigation is usually broken into two or three major phases, depending on the courts.

  • Claim Construction Phase

    During the claim construction or Markman phases of the litigation, the Court looks at the language of the claims of the patent to define scope. The Court attempts to determine meanings that should be given to particular words in each claim. The Court will look first to the patent description or "specification" in deciphering the claims. Also, the Court will look to the file history and the paperwork leading up to issuance of the patent. The arguments made by the patent attorneys and parties in acquiring the patent can be used to interpret the meanings and scope of the claims. The Court may or may not employ the assistance of an expert in deciphering the claims. The claim construction phase of the infringement case usually culminates in a Markman hearing, which may proceed like a trial with witnesses being called, or which may be conducted in less formal fashion by the Court to supplement paper submissions and motions. The timing of such a hearing varies considerably with each jurisdiction and the discretion of the Court, but may be very early in the case (before extensive discovery) or sometimes even close to trial. The Court will issue an order construing the claims, which will govern the rest of the case and have a significant impact on how the parties argue the remainder of the case. In some circumstances, a Markman construction can practically end a case of patent infringement where the construction makes a summary judgment possible. Consequently, parties may seek an immediate appeal to the Court of Appeals for the Federal Circuit, if the claim construction by the Court is believed in error. The reversal rates from the district court are high, so it is not uncommon for a case of patent infringement to go to the Federal Circuit at least once during the life of the case.

  • Infringement Liability Phase

    Following the claim construction phases of a trial, the parties will move into an infringement phase and will try to prove that the accused infringing product reads on the claims as construed by the Court. This is the liability aspect of the litigation and may or may not include damage assessments. This phase is usually accompanied by significant amounts of evidence gathering or "discovery" including documents being subpoenaed, experts rendering reports, witnesses being called in depositions, etc. At the liability phases, Defendants typically argue either non-infringement or patent invalidity. Frequently, Defendants may argue that a patent never should have issued by way of inequitable conduct, delays in enforcing patent rights, misuse of patent rights, time bars, or the invention was not new at the time of patenting. If the plaintiffs make arguments based on the Doctrine of Equivalents, Defendants may argue "file wrapper estoppel" and look to the patent file history to claim that plaintiffs surrendered arguments to a range of equivalents.

  • Damages Phase

    Damages in a patent case may be in the form of a "reasonable royalty" or lost sales and profits that that would have been made by a patent holder without the Defendant's infringement. Damages arguments in a patent infringement case are typically expert intensive and both parties will usually bring in economists or forensic accountants to review and testify about the damage models. A case of patent infringement may be split into a whole separate phase or trial for damages, if so bifurcated by the Court. Sometimes a court will separate damages phases of a case from liability where the interests of justice, costs, or the proprietary nature of the financial materials warrant this remedy.

Punitive Damages in Patent Cases

If willful conduct is found against a Defendant, damages may be enhanced. Willfulness can become an issue where a defendant knows about a valid patent and continues to engage in infringing activity. Defendants may counter allegations of willful infringement by seeking and obtaining a legitimate infringement and/or invalidity opinion from competent patent counsel. Because of our experience with patent infringement litigation and because we are experienced, federally registered patent attorneys, is well versed in providing infringement and invalidity opinions.

Declaratory Judgment Actions

Under federal law, a party who is being threatened with patent infringement litigation, or allegations of infringement may be entitled to file what is known as a Declaratory Judgment Action. Such an action is aimed at having a court determine whether a particular activity is infringing, or whether a threatening party's patent is valid. A declaratory judgment may permit a successful party to recover attorney fees, although courts are given considerable discretion in making such determinations.


La Jolla, California

875 Prospect, Suite 305
La Jolla, California 92037

Tel: 858-459-9111

Los Angeles, CA

2029 Century Park East
Suite 400N
Los Angeles, CA 90067

Tel: 310-593-4193

Houston, Texas

1201 Shepherd Drive
Houston, Texas 77007

Tel: 713-589-2214