Patent litigation is among the most time-consuming and expensive types of litigation.
According to a 2001 survey conducted by the American Intellectual Property Lawyer's Association (AIPLA), a patent litigant can expect to spend at least $500,000 and up to $6 million to try a patent case.
On average , a patent suit in which $1 - $25 million is at risk costs $797,000 through discovery and just under $1.5 million through trial, with some litigants reporting costs in excess of $2.5 million.
For those cases in which more than $25 million is at risk, the average litigant can expect to spend $1.5 million through discovery and roughly $3 million if there is a trial.
The costs of patent litigation, however, often go far beyond attorneys' fees and associated expenses. In bet-the-company situations frequently encountered in patent suits, long, drawn out litigation can have devastating effects on a party's business. The prolonged uncertainty of a patent suit can have a dramatic impact on stock prices, and a company cannot adequately plan for its future with a potentially crippling judgment looming on the horizon.
80% of all research done in patent law firms has nothing to do with legal research…. Library Director of Testa Law Firm to Meeting of Law Librarians of New England
Determining Royalty Rates Royalty rates are a tricky thing to find, as they are usually not made public. Nonetheless, there if you want to spend time weeding through a lot of results, there are methods available. * SEC filings Sometimes public companies, especially smaller ones, will make terms of licensing agreements available. Searching through SEC filings, especially 10-Ks and S-1s, for "royalty and patent" or "royalty and license" will sometimes prove fruitful. The vast majority of numerical data in these licensing agreements are redacted out, so you will have to wade through a lot of false hits for the few pieces of real information. Places to search SEC filings include:
News articles… Once again, every so often, terms of a licensing agreement will turn up in a press release or an article. In most instances, terms of the deal will not be revealed, but a persistent soul can usually turn up a few bits of information. Any of the article databases could be used for this. (RDS, PROMT, DowJones, etc). Reported Decisions online… In some legal decisions involving patent cases, a judge or jury must determine a "reasonable royalty" rate. While this royalty may differ from what parties may agree to outside of litigation, it can provide some information. Plus, in some cases a judicial decision may describe the evidence and rationale used to arrive at the royalty rate.
EXPTRESUME : Resumes of expert witnesses from the Lawyers Desk Reference Plus, including such information as education and training; licensing, certifications, and professional associations; previous experience as a consultant or witness; other cases in which the expert has testified, the issues involved, and the results obtained; detail concerning the expert's areas of expertise; and information on fees and rates .
Profiles of expert witnesses from across the United States that include links to summaries of settlements and jury verdicts; other expert witness directories; and law review and bar journal articles, CLE materials, and abstracts of articles from the Selected MEDLINE Abstracts database that they have authored or that mention them.
Search assignment records to see what opponent will see
PTO may not have current records
check to see the patent was properly transferred
Right to collect damages
Must be expressed in an assignment
Revise assignment or join previous owner as plaintiff
Ways to search assignment records Patents ASSIGN CD data is derived from assignment deeds recorded after August 1980, including assignments of patent grants and patent application publications (filed after November 29, 2000) recorded before and after publication or issue.
CLAIMS R&R US-PAT-ASSIGN PATENTS - US ASSIGN FULL TEXT
A validity search is an extended search to ascertain whether a patent will withstand attack in litigation
A validity search may be described roughly as an extensive or a comprehensive patentability search
It differs from the patentability search in that, unlike the latter, its purpose is not to determine whether or not a patent can be obtained for a given invention but instead to determine whether or not a patent that has been obtained for an invention is valid
The validity search may, in important cases, involve the systematic review not only of all prior United States patents but also of all foreign patents.
In addition to encompassing both the United States and foreign patents, exhaustive validity searches will include a search of non-patent literature.
Inapplicability of the Privilege: the Communication Does Not Seek Legal Advice
Opinions of a patent attorney that were deduced from a patent search are not to be distinguished from legal advice sought in any other confidential relationship between an attorney and his client and, therefore, ought to be privileged.
On the other hand, a patent search report by itself is essentially nothing more than information obtained from third parties or outside sources. Accordingly, it is not the subject of the attorney-client privilege, even though that information came to the attorney, while acting for the client on a confidential matter.
With inventions directed to technical subjects - such as chemistry or electronics - these searches will include literature surveys through scientific and technical journals and, with mechanical inventions, may include searches through catalogs, brochures, or compendiums.
Prior art databases…free to premium In January 2003, esp@cenet® held data on 38.3 million patents from 71 countries, of which 22.5 million have a title, 17.6 million have an ECLA class and 5.5 an abstract in English.
comprehensive database of 11 million unique value-added patent bibliographic documents published in the world.
1.5 million patent documents added into the database each year from 40 patent-issuing authorities
Team of 350 specialist editors assess, classify and index these documents to provide concise English language titles and abstracts, which are readily searched and easily understood
INPADOC (INternational PAtent DOcumentation Center)
contains the bibliographic and family data of patent documents of 71 patent-issuing organizations including the European Patent Office (EPO) and the World Intellectual Property Organization (WIPO). In addition, the legal status data of 40 patent-issuing organizations are included. It is estimated that INPADOC covers some 95% of all patents published worldwide since 1973.
world’s largest international patent file, seamlessly merging the EPO's (European Patent Office) worldwide collection with the USPTO (U.S. Patent and Trademark Office), WIPO (World Intellectual Property Organization), EPO and Japanese patent information.
European Patents constitute 85% of all cited patents, so some feel comfortable searching European Patent Databases
Patents are classified according to various classification schemes covering all possible technical domains. When conducting a search, it is essential to systematically use this tool that offers an objective criteria to access relevant documents. Keywords are much more subjective as there are many words to describe a same concept.
The prior art contained in the file wrapper of a patent, whether cited by the Patent and Trademark Office or referred to by the patentee, should be carefully considered.
A patent is presumed to be valid by virtue of its issuance by the Office.
Inasmuch as the examiners of the Office are credited by the courts with expertness, the allowance of a patent over stated prior art constitutes the judgment of an expert that the patent contained patentable subject matter over that of the prior art.
The presumption of validity places the burden of persuasion on the party challenging validity. The burden never shifts.
The accused infringer must establish invalidity by clear and convincing evidence.
When the infringer offers new prior art not considered by the PTO that is more relevant than the PTO-cited references, the burden of persuasion is more easily carried.
If the references found in the validity search that are not contained in the file wrapper are no more pertinent than those contained in the file wrapper - being merely cumulative - then little advantage may be gained by relying upon these references.
A validity study is not limited to consideration of the prior art or the defenses of prior public use and sale.
There are a myriad of defenses in addition to those that have been considered.
Thus a thorough study of the file wrapper of the patent application may reveal the existence of informalities of such a serious nature as to invalidate the patent.
Similarly, other patents of the inventor and, indeed, other publications and journal articles of the inventor may lead to defenses useful in attacking the validity of the patent.
For example, the inventor may, through an oversight, have claimed the same invention in more than one patent. This slipup will permit the establishing of a defense of double patenting. Other publications of the inventor may ascribe the invention of the patent to someone else or may conflict with the disclosure contained in the patent. These matters will aid in upsetting the patent's validity.
Companies have mostly relied upon internal resources to keep up on technology and identify potential patent infringers. Employees know the business, the key players, the technology, and often spot competitors that are infringing on process patents. Discussions with corporate patent attorneys indicate this has been, and to some extent remains, the process of choice for identifying process patent infringers.
For a plaintiff considering bringing a patent action, the choice of forum can have a significant impact on the cost of litigation. The duration of a patent lawsuit can vary dramatically depending upon where the suit is filed.
Federal Court Management Statistics
Teddy Database at Cornell
5 million federal district-court civil cases terminated over the last 22 fiscal years. The data were gathered by the Administrative Office of the United States Courts, assembled by the Federal Judicial Center, and disseminated by the Inter-university Consortium for Political and Social Research.
The best known “rocket docket” is the district court for the Eastern District of Virginia (Richmond). But there are others, including one in Madison, Wisconsin – the Western District of Wisconsin. Others are the district courts for the Western District of Arkansas, the Eastern District of Oklahoma, the Western District of Oklahoma, and the District of Maine.
District court judge T. S. Ellis from the Eastern District of Virginia states that “the essential factors of an expeditious docket include (1) the early setting of a fixed and immutable trial date; (2) setting the discovery period at the outset and limiting it to no more than four to five months; (3) creating a hospitable legal culture; and (4) prompt engagement and resolution by the judges of the often difficult and daunting technical issues that arise in patent cases.”
The CORP-ALL database contains state Corporate, Limited Partnership, Partnership and Reserved Name records from 49 states, the District of Columbia, Puerto Rico and the Virgin Islands. Use the CORP-ALL database to:
Obtain information on businesses including the correct name, address, and date of incorporation or organization
Identify names and addresses of officers, directors and partners
Locate a corporation's registered agent for service of process
Verify that a client or adverse party is in good standing prior to closing
Review existing business names for possible conflicts of interest
Patent Litigation: 4:2.2 Discovery Objectives for a Patentee
The nature of the accused infringer's acts, whether making, selling, using, or offering to sell the accused infringing product or method, or inducing, or contributing to, the infringement of the patent by another;
The details of the accused infringing product or method (for example, the design, the manufacture, the specifications, what it does, how well it works);
The history and development of the accused product or method;
The accused infringer's external characterizations of the accused infringing product or method (for example, advertising and marketing materials, publications, press releases, manuals, governmental submissions, product inserts, and instructions;
Third party characterizations of the accused infringing product or method (for example, documents by manufacturers and distributors, relevant trade literature, scientific publications, and third party reports, comparisons, evaluations and complaints);
The accused infringer's internal memoranda and reports regarding the accused infringing product or method;
Government filings relating to the accused infringing product or method (for example, SEC, FDA);
Patents or patent applications that the accused infringer has relating to the accused infringing product or method;
Characterizations of prior art;
Characterization of the level of skill in the art;
The accused infringer's knowledge of, use of and/or evaluation of, the patentee's products or methods, including any evidence of copying;
Any comparison between the accused infringer's product or method and those of the patentee;
The accused infringer's knowledge of, use of, and/or evaluation of, the patentee's patent (or any other similar patent or patent applications, such as published foreign versions), including any evidence of copying;
Access by the accused infringer to any of the patentee's technological information;
Any opinions rendered to the accused infringer regarding the patents-in-suit and related patents, the validity and/or enforceability of the patents-in-suit and related patents, and infringement issues;
All financial information relevant to the accused infringer's sales (for example, amount and dates of sales, profits, costs);
All financial and other information relevant to the accused infringer's collateral sales;
Any licenses in the relevant industry and/or negotiations therefor;
Prior communications with the patentee regarding the patent;
The accused infringer's proposed claim construction;
The accused infringer's noninfringement position;
All facts relevant to the accused infringer's invalidity and/or unenforceability positions; and
Any other facts relevant to defenses raised by the accused.