FAQ – Patent Infringement Lawsuits

WHAT IS PATENT INFRINGEMENT?  Whoever makes, uses, offers to sell, sells any patented invention within the US, or imports into the US any patented invention, without authorization (i.e. a license), any patented invention during the term of the patent infringes a patent.   Infringement can be proven by showing that a product or process can be characterized as falling (or “reading”) within one or more of the claims of the patent.

WHAT ARE SOME COMMON DEFENSES TO PATENT INFRINGEMENT?  Some of the more common defenses to patent infringement are: (1) Noninfringement: the subject product or process does not infringe the patent; (2) Invalidity: the patent is invalid, often by showing the patent was anticipated by prior art; and (3) Inequitable conduct: the inventor concealed or misrepresented material information in order to deceive the Patent and Trademark Office into allowing the patent to be issued.

WHY WAS I SUED IN THIS STATE?  A significant number of patent lawsuits are filed in places such as the Eastern District of Texas (Tyler or Marshall) or the Eastern District of Virginia (Richmond) based on local court procedures and jury pools that are perceived to be favorable to inventors and patent rights holders.  If products are sold nationwide, there is a good chance a court will find there is jurisdiction against a party in most areas of the country.  However, even if there is jurisdiction over a party, it is possible to transfer a case to a court in another district or state depending on the circumstances (such as the location of the parties, location of relevant witnesses and documents, and which courts have familiarity with the patent(s)).

WHAT DAMAGES ARE RECOVERABLE FOR PATENT INFRINGEMENT?  The remedies for patent infringement include an injunction and damages.  Damages are measured by the “lost profits” of the patent owner and/or the “reasonable royalty” for using the patent (the amount that would be paid if the patent owner had negotiated a license for the infringing goods).

The extent to which damages can be recovered depends on how long the infringement occurred, how long the patent was valid, and whether applicable notice and marking requirements were met.  Recoverable damages are also limited to 6 years before  the filing of a complaint or counterclaim.

In an “exceptional case,” a court can triple the amount of damages.  The more an infringement is intentional, the more likely a case may be found to be exceptional.

Interest and certain out-of-pocket costs incurred in a lawsuit are also recoverable.  Attorney fees are only awarded to the winning side in a patent dispute in “exceptional cases.”

For more information on patents, see this guide from the United States Patent and Trademark Office (USPTO).