Patents: Litigation & Enforcement

Litigation and Administrative Proceedings Representation

Increasing reliance on overseas manufacturers has decreased development and manufacturing costs, but has simultaneously increased the availability of copycat and counterfeit products returning to the US. Furthermore, with the expansion of online retailers it is becoming increasingly easy to pass-off infringing goods.  Intellectual property infringement damages market share, threatens innovation, and provides an unfair competitive advantage.  Wagenknecht Patent Attorneys focus on patent enforcement beyond litigation. Wagenknecht patent attorneys assist with:

• Cease & Desist Letters

• Amazon & Ebay Takedowns

• Patent Reexamination

• Patent Litigation

• Post Grant Review (PGR)

• Inter Partes Review (IPR)

Amazon and Ebay Takedown of Infringing Products

Rather than risk infringement allegations, many internet retailers (e.g. Amazon and Ebay) have adopted policies to quickly take down infringing products.  Takedown requests can be a cost-effective strategy to enforce patents.  However, abuse of this policy can have you banned from the retailer.   Wagenknecht patent attorneys can initiate takedown requests and respond to takedowns by others.

Patent Litigation

Patent infringement is a federal issue and is therefore pursued in federal court.  San Diego, California provides a convenient forum for intellectual property litigation due to the expertise of San Diego's judges and the speed at which patent infringement cases are scheduled. Procedurally, patent infringement lawsuits are broken into two or three phases:

• Claim Construction Hearing Phase - the scope of the patent is defined
• Infringement Trial Phase - a determination of whether or not the patent is infringed and whether there are any defenses to infringement (e.g. patent invalidity, patent exhaustion)
• Damages Phase - Money damages and injunctions can be obtained if infringement is determined

Wagenknecht's expertise in both patent and trademark law intersect in our patent litigation practice.  Wagenknecht patent attorneys can represent both utility patent litigation matters and design patent litigation matters.  Wagenknecht attorneys are admitted to the following courts:

• State Courts of California
• US District Court, Southern District of California
• US District Court, Central District of California
• US District Court, Northern District of California
• US Court of Appeals for the Federal Circuit

Post Grant Review (PGR)

Post Grant Review is a trial proceeding at the US Patent Trial and Appeal Board to review the patentability of a patent on a wide range of issues, including non-statutory subject matter, novelty, obviousness, enablement/written description and double patenting.

Post Grant Review is instituted by filing a petition within 9 months after a patent grants or reissues. The petition must identify each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.  Such evidence may include patents, printed publications, affidavits, and declarations.  However, evidence for PGR is not limited to these examples.

After filing the petition, the patent holder may file a preliminary response objecting to the proceeding.  The USPTO then determines whether “more likely than not” at least one challenged claim is unpatentable and if so, the Post Grant Review Proceeding is instituted.

Inter Partes Review (IPR)

Inter Parties Review (IPR) is a trial proceeding before the US Patent Trial and Appeal Board to review the patentability of a granted patent.  Unlike Post Grant Review PGR), Inter Parties Review is limited to invalidity arguments over patents and printed publications.

Inter Parties Review proceedings are filed 9 months after patent grant or reissue, or the date of termination of any post grant review of the patent. The petition must, like PGR, identify each claim challenged, the grounds on which the challenge to each claim is based, and the evidence that supports the grounds for the challenge to each claim.  Such evidence may include patents, printed publications, affidavits, and declarations.

The standard for instituting an Inter Parties Review is whether there is a “substantial likelihood” that at least one challenged claim is unpatentable, and if so the Inter Parties Review proceeding is instituted.

Reexamination

At any time during the pendency of a patent, the public can request a patent be re-examined by raising a “substantial new question of patentability.”  Reexaminations are typically the least expensive option for challenging the validity of a patent because the requestor is only active in instituting the proceeding and not the proceeding itself.