Intellectual Property Litigation
The whole purpose of securing IP protection is to avoid or win in
litigation against competitors. Strong patents, trademarks and
copyrights provide substantial incentive for competitors to avoid
appropriating innovations, brands and content. Many litigations start with an initial communication between the parties
called a "cease and desist" letter.
Infringement of a patent consists of the unauthorized making, using,
offering for sale or selling any patented invention within the United States
or United States Territories, or importing into the United States of any
patented invention during the term of the patent. If a patent is infringed,
the patentee may sue for relief in the appropriate Federal court. The
patentee may ask the court for an injunction to prevent the continuation of
the infringement and may also ask the court for an award of damages because
of the infringement.
In such an infringement suit, the defendant may raise the question of the
validity of the patent, which is then decided by the court. The defendant
may also aver that what is being done does not constitute infringement.
Infringement is determined primarily by the language of the claims of the
patent and, if what the defendant is making does not fall within the
language of any of the claims of the patent, there is no literal
Suits for infringement of patents follow the rules of procedure of the
Federal courts. From the decision of the district court, there is an appeal
to the Court of Appeals for the Federal Circuit. The Supreme Court may
thereafter take a case by writ of certiorari. If the United States
Government infringes a patent, the patentee has a remedy for damages in the
United States Court of Federal Claims.
The Government may use any patented invention without permission of the
patentee, but the patentee is entitled to obtain compensation for the use by
or for the Government. The Office has no jurisdiction over questions
relating to infringement of patents. In examining applications for patent,
no determination is made as to whether the invention sought to be patented
infringes any prior patent. An improvement invention may be patentable, but
it might infringe a prior unexpired patent for the invention improved upon,
if there is one.
Infringement or active inducement of infringement is willful when it is done
deliberately and intentionally, and with knowledge of the patent. Copying of
an invention, if such copying continues after the existence of the patent is
made known, is evidence of willfulness. However, infringement or active
inducement of infringement is not willful if it is done with a good faith
belief that the patent is either invalid or not infringed. The burden is on
the patent owner to show willfulness by clear and convincing evidence. Power
Lift, Inc. v. Lang Tools, Inc., 227 U.S.P.Q. 435, 438 (Fed. Cir. 1985).
Trademark litigation is generally less technical than patent litigation.
In addition to Lanham Act claims, federal court trademark litigation usually
includes state claims for unfair competition, false advertising and the
Although a defendant may challenge the ownership and/or validity of a
federal trademark registration at the Trademark Trial and Appeal Board
(TTAB), federal courts rarely stay proceedings to wait out a TTAB decision
unless that administrative body is close to rendering an order.
Copyright litigation is exclusively handled in federal court. If a
copyright deposit was timely made, then the copyright registration owner can
sue for statutory damages, attorney fees and court costs. These types
of cases rarely make it to jury as the liability for the defendant may be
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