Patent Litigation

Patent Litigation

Sometimes innovation begets imitation. An issued patent gives its owner the right to exclude others from making, using, selling, offering for sale or importing the patented invention. Typically, a party wishing to practice a patented invention enters into a license or purchase agreement with the patent owner in order to secure the right to do so.

Occasionally, however, a party wishing to practice the invention does so without the patent owner's consent, thus infringing the patent. Conversely, a patent owner may overestimate the extent of the limited monopoly granted under an issued patent and allege infringement against a non-infringer. Though we work to resolve issues for our clients without going to court in either instance, in the event patent infringement litigation becomes necessary we represent our clients to the fullest extent.

At every stage of the litigation process, it is important to maintain the proper perspective of the case in relation to the overall objectives and needs of the client. Otherwise, litigation can become exceedingly costly, and in some instances may do more harm than good. McHale | Slavin puts its clients' interests at the forefront in every litigation, with an aim toward achieving maximum results for both the short and long term, at a reasonable expense.

In the United States, there are several forms of relief available to the patent owner who has successfully proven patent infringement. Such relief can include an injunction, protection from future infringement; compensation for past infringement; certain of the costs of litigation; and, in exceptional cases, attorney's fees and treble damages.

The basic remedy for past infringement is the award of damages (35 U.S.C. § 284). While the law provides no maximum damages, it does provide a minimum. Damages shall "in no event [be] less than a reasonable royalty for the use made of the invention by the infringer." Compensatory damages are designed to replace what the inventor has lost. In the case of an inventor who does not have the capacity to manufacture his or her own invention, compensatory damages set at a reasonable royalty might be appropriate. Although indirect damages are generally not recoverable, the "entire market value" rule allows a patent owner to collect damages based on the value of an entire infringing device, even if that device contains multiple features and only one of the features infringes. Prejudgment and post judgment interest on an infringement award can be requested for damages. The court may also increase damages up to three times for the willful, wanton infringement of the patent.

An alternative source of limited relief is available through the International Trade Commission (ITC) when the source of the infringing products is outside of the United States. The ITC can exclude from importation products that infringe a valid U.S. patent and cause injury to a domestic business. However, no compensation for past infringement or attorney's fees is available in an ITC proceeding.

McHale | Slavin has extensive experience in prosecuting and defending patent litigation, while remaining mindful of a client's overall business objectives. Contact us for additional information or to schedule a consultation.