In my last post, I introduced you to the different roles in a patent infringement action. Today, I’ll continue those introductions. Pay close attention to this meet-and-greet: If you’re faced with a patent infringement action, you’ll want to recognize these players and understand their motivations. All of them will play a critical role in how the litigation unfolds.
Only now do we come to the inventor — largely because the inventor plays a relatively small (although potentially important) role in patent litigation.
Generally speaking, the inventor’s role is already complete by the time patent litigation has commenced. Once the patent issues, it is the patent document (and the public discourse between the inventor and the patent office) that control what is protected by the patent. The inventor’s desires, intent, and motives while inventing are largely irrelevant.
During the litigation, while anything in development is fair game, some topics that are often explored are whether any co-inventors were left off the patent application at issue, what other sources were consulted during invention and whether those were provided to the patent office, whether the inventor truly invented the technology at issue, and if there are any disagreements or rifts between the inventor and the current owner that can be exploited.
The inventor may also be asked about what certain claim language means — although it should be noted that the inventor’s opinion is worth no more than any other person of skill in the art who may opine on the topic; all evidence not expressly found in the patent’s public record is extrinsic and of less importance.
- Your employees
Your employees will be key for several reasons. First, you will need to know who the key employees are with respect to the litigation so that you can understand the technology and develop defenses. These key employees will include employees who work with the technology at issue and know how it operates. It also includes those who participated in selling the technology or marketing the technology to customers.
Second, especially when dealing with companies, you’re going to need representatives who can be the face of the company in the litigation. These employees need to be smart, calm, collected, and project the image you want for your company in the dispute. This may include key company executives who can speak on behalf of the company and explain how the company works, its processes, and its policies. It may include management or even low-level employees who can tell the company’s story, handle the pressure of testifying, and not damage the company’s interests while doing so.
Finally, every patent litigation involves expert witnesses. Experts provide opinion testimony, based on the facts and evidence of the case, as to some of the most important issues in the patent litigation.
Patent cases involve technology. And unless the technology at issue is incredibly simple and easily understood, an expert witness is going to be necessary to help the judge and jury understand the technology and your arguments. But even with simple technology, an expert will still be needed to opine on what sort of damages are appropriate (or not appropriate).
Experts often provide testimony on what was invented, what was known in the industry at the time of invention, whether prior inventions or publications had already disclosed what is patented, and whether the patent adequately teaches or describes how to practice the patented technology. They can also talk about how infringement has impacted the marketplace, how to calculate the profits lost, what someone would have paid to license the patented technology when it was invented, and what damages the plaintiff will feel in the future until the patent expires.
Experts generally cannot, however, provide opinion testimony on purely legal topics or ultimate issues in the case, such as what claim terms mean or whether there was infringement.
Jason Schwent is a partner in Thompson Coburn’s Intellectual Property group. He is the editorial director of the Patent Billy Goat. You can find Jason on Google+, Twitter, and reach him at (314) 552-6291 or firstname.lastname@example.org.