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| Home - Industry Article - Feb 05 Issue |
Patent Litigation: Are You Asking the Right Questions?
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9. What are the potential venues? Where could a federal suit be filed? Where should the federal suit be filed? Where could a declaratory relief suit be filed? What are the Local Rules in the different federal district courts? What are the different timelines in those different federal district courts? How would those Local Rules and timelines aid a Plaintiff or aid one or more Defendants?
10. What is the applicable (but different) federal law in available alternative federal venues? Though there is only a single Federal Circuit for appellate decisions, the different federal district courts (and their different judges) have a wide range of discretion in deciding how federal patent litigation is handled. For example, some district courts have early Markman hearings whereas others do not; other district court rely on early mandatory alternative dispute resolution procedures whereas others do not. Are there some advantages to filing in an alternative venue? What is the likelihood of transfer under 28 U.S.C. 1404(a)? What is the history of previous cases before the assigned federal judge?
11. What kind of evidence exists? What is the proof of literal infringement? What is the proof of infringement by the doctrine of equivalents? What demonstrative evidence can Plaintiff employ? What demonstrative evidence can Defendants employ? Should Plaintiff pursue expedited discovery? Should Defendants?
12. What is the applicable TRO and preliminary injunction law? Is there a potential for an evidentiary hearing or expedited trial under Federal Rule 65? Would an expedited trial be helpful? Would an expedited trial be harmful?
13. Who and where are the third party witnesses, if any? Are they going to make a difference? Will they testify voluntarily? Have they already been interviewed? Who are the preeminent expert witnesses?
14. Who are the key experts and what are their opinions? Where are they located? Will they voluntarily agree to be retained? Do they have publications which undercut the patent or its scope?
15. What additional claims, if any, can be pursued? Is there also false or unfair advertising? Is there unfair competition? Are there possible Lanham Act Section 43(a) claims? Are there other claims under other applicable federal or state law?
16. Should a demand letter be sent in advance of the filing of the suit? If so, what must be considered in the demand? What is the likelihood of declaratory or other relief where a defendant becomes a plaintiff and the plaintiff becomes a defendant? What should the response be to a demand letter that has been received from a potential patent plaintiff?
17. What are some possible resolution scenarios? How can litigation be avoided? What are the potential compromises? Can some business resolution occur? Is licensing probable? Is cross-licensing possible?
Jack Russo is a frequent speaker on computer law issues and has given presentations to the American Bar Association, the Practicing Law Institute and the Computer Law Association. Jack serves as an arbitrator and mediator for the U.S. District Court (N.D. California), the Santa Clara County Superior Court, and the American Arbitration Association, as well as a Judge Pro Temporare of the Santa Clara County Superior Court. Jack can be reached for article feedback at jrusso@computerlaw.com.
 
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