Wouldn't you like to practice an area of law where you regularly make healthy six figures, or even seven figures per year and you appear in court maybe 5 times a year and very few of your cases go to trial? What about if I said that you could work from anywhere as well?
When discussing patent litigation Forbes said, "Roughly 90 percent of suits filed each year are abandoned or settled. Of the three hundred that remain, two-thirds never go to trial, and are adjudicated on summary judgment (of non-infringement in most cases). The nation is thus left with, at most, between 90 and 112 patent infringement trials per year — exactly the same number that went to trial 10, 20, and even 30 years ago." See, https://www.forbes.com/sites/davidpridham/2017/04/13/the-patent-litigation-lie/#22491cc7ea99.
I took the liberty to calculate the percentage of patent cases that make it to trial each year based on the table data located at the Forbes link above and I came up with 3.3%. Roughly 5,819 cases were filed in 2015 with 90% of those settling or abandoned leaving 10% of those cases pending and of those 10%, 67% are dismissed on summary judgment prior to trial. Using the equation disclosed in the Forbes article cited above the resulting percentage of patent cases that make it to trial is always 3.3%. That means that if you filed 100 patent cases in a year, then only 3.3 of them would go to trial.
| Number of
Cases |
Multiplier |
Total |
2/3rds |
1/3rd |
Percentage |
| 5819 |
10% |
581.9 |
387.935 |
193.965 |
3.33% |
| 4000 |
10% |
400 |
266.668 |
133.332 |
3.33% |
| 3000 |
10% |
300 |
200.001 |
99.999 |
3.33% |
| 6000 |
10% |
600 |
400.002 |
199.998 |
3.33% |
| 2000 |
10% |
200 |
133.334 |
66.666 |
3.33% |
| 1000 |
10% |
100 |
66.667 |
33.333 |
3.33% |
| | | | | |
Additionally, in federal court, most judges will decide motions on the pleadings without requiring a hearing.
What this means is that patent litigation practice is primarily dedicated to due diligence, legal research and writing, negotiations, discovery, pleadings drafting, and infrequent claims construction hearings and summary judgment and motion to dismiss hearings.
With this in mind recently, I decided to write a patent litigation manual that would forever change the way new patent litigation associates learn how to practice in this field. After practicing patent litigation for almost 7 years, and ranking No. 1 in the United States for appearing in more patent cases than any other attorney in the United States, it was apparent to me that this was necessary. Other treatises and practice manuals for this practice area are very general teaching broad topics without teaching the reader how to navigate specific courts. I thought to myself, if I am going to do this, then I need to start with the most popular jurisdiction for patent litigation which historically was the Eastern District of Texas. So I gathered all of the necessary pleadings, letters, filings, and documents to practice in the Eastern District of Texas and formed an appendix, then I did extensive research for each issue that is typically presented in practice and included this research in the practice manual to allow the reader to get up to date information regarding these issues. I have a background in teaching, and know that the information that you don't know that you don't know is the most important information to teach. So I set out to write step by step instructions from sourcing your first patent case, to signing up your first client, due diligence in examining whether to take the case, describing the different parts of a patent, explanation of the file history, the initial filing documents, the USPTO pair database, how to draft a well pleaded complaint, how to answer counterclaims, docket control orders, discovery orders, protective orders, ESI orders, infringement contentions, invalidity contentions, discovery including interrogatories and requests for production and the newly amended Federal Rules of Civil Procedure pertaining to objecting to these discovery requests, claim construction disclosures, claim construction briefing, the Markman hearing, summary judgment, initial and additional disclosures, experts, motions in limine, witness and exhibit lists, technical tutorials, mediators, and trial. If you have no experience with patents or patent litigation this is a great resource to allow you to expand your current practice area into the field of patent litigation. I made healthy six figures my first year practicing in this practice area and I am confident that you can as well after digesting the material contained in "So You Want to Be a Patent Litigator" my new groundbreaking patent litigation practice manual in eBook format available for purchase at www.patent-litigator.com.
Remember this isn't just a practice manual with information, it also contains a very robust appendix that includes all of the forms you will need to practice in this practice area. The forms will need slight modification by you including modifications to the case style in pleadings and names and factual information in the pleading etc. Forms are presented such that you will be able to replace data seamlessly in the fields provided. If you would like to see a sample form please email me at ahansley@hansleyfirm.com and I will provide you with a sample pleading that is contained in the eBook available for download at www.patent-litigator.com.
Table of Contents
I. Introduction. 11
II. History Lesson. 11
PRELIMINARY AND PERMANENT INJUNCTIONS ON THE SALE OF PATENTED PRODUCTS BY
THE DEFENDANT.. 12
35 U.S.C. §112(6) MEANS PLUS FUNCTION CLAIM AND THE WRITTEN DESCRIPTION
REQUIREMENT.. 12
DIRECT/INDIRECT INFRINGEMENT.. 15
1. System Claims. 15
2. Method Claims. 15
3. Apparatus Claims. 16
4. Induced Infringement 17
5. Contributory Infringement 20
DOCTRINE OF EQUIVALENTS. 22
PATENT INVALIDITY.. 23
1. 35 U.S.C. § 103. 23
2. 35 U.S.C. § 101. 23
CLAIM CONSTRUCTION.. 24
1. Issue Preclusion for Markman Rulings. 25
VENUE.. 26
DAMAGES. 27
1. Reasonable Royalty. 27
2. Lost Profits. 27
PATENT DEFENSES. 28
1. Non-Infringement 29
2. Invalidity Based on Prior Art 29
3. Failure to Meet Statutory Limits (Laches) 31
4. Failure to Meet Statutory Requirements. 31
5. Inequitable Conduct 33
6. Disclaimer 33
7. First Sale. 34
8. Repair Doctrine. 34
9. Patent Misuse. 34
10. Licensing. 35
11. Patent Exhaustion. 36
12. Estoppel 36
13. Unclean Hands. 36
14. Waiver 38
15. Standards Estoppel 39
16. Acquiescence. 39
17. Implied License. 39
18. Prosecution Laches. 40
19. Failure to State a Claim.. 41
III. Lesson No. 1 “Patent Litigation for
Beginners”. 42
FIRST PAGE OF A PATENT.. 43
SPECIFICATION.. 45
THE PATENT CLAIMS. 47
THE PATENT FILE HISTORY.. 49
IV. Lesson No. 2, After This Lesson You
Should Be Ready To File Patent Cases. 51
How to get your first patent case. 51
Due diligence, determining whether to take the case. 51
Drafting the Rule 11 claim chart prior to filing the case. 52
Drafting the complaint. 55
Drafting the initial filing documents. 58
Filing the case. 62
Serving the case. 71
The waiting game and what to expect in the days and months after filing. 72
The infamous phone call or email from defense counsel. 72
The extension of time to answer the complaint. 73
The answer and counterclaim to the complaint. 73
The answer to the counterclaim to the complaint. 73
The notice of readiness for scheduling conference in the Eastern District of
Texas. 74
The scheduling conference. 75
The infringement contentions. 77
The initial and additional disclosures. 82
The scheduling order, protective order, discovery order, ESI Order and
Notice of Mediator. 84
The defendant’s invalidity contentions. 87
The Patent Rule 4-1 disclosure of claim terms. 87
The Patent Rule 4-2 preliminary claim construction. 89
The Patent Rule 4-3 joint claim construction statement. 92
The Patent Rule 4-5(a) opening claim construction brief and technical
tutorial. 95
The Patent Rule 4-5(b) defendant’s responsive claim construction brief. 96
The Patent Rule 4-5(c) reply claim construction brief. 96
The Patent Rule 4-5(d) joint claim construction chart. 97
The claim construction hearing otherwise known as Markman. 98
Mediation. 98
The plaintiff’s and defendant’s motion for summary judgment. 99
Pretrial disclosures i.e. witness list, deposition designations, and exhibit
list. 99
The motion in limine. 100
The joint pretrial order i.e. joint proposed jury instructions, joint
proposed jury verdict form, responses to motion in limine, updated exhibit
lists, updated witness lists, and updated deposition designations. 101
The pretrial conference. 101
Jury selection and trial. 101
V. Eastern District of Texas
Patent Litigation Documents (Appendix) 103
document examples
affirmative defenses
joint motion for entry of discovery order
joint motion for entry of discovery order
joint motion for entry of docket control order
answer and affirmative defenses
plaintiff’s opening brief on claim construction
patent contingency fee agreement
exhibit b
discovery order
docket control order
e-discovery order
patent exclusive license agreement
plaintiff’s initial & additional disclosures
inter partes review response
joint claim construction and prehearing statement
joint claim construction chart pursuant to patent rule 4-5(d).
joint claim construction and prehearing statement
joint notice of mediator
sample joint final pre-trial order
plaintiff [client’s name] jury demand
amended joint proposed final jury instructions
joint proposed jury instructions
joint motion to dismiss
plaintiff [client’s name] unopposed motion for extension of time to file the
parties’ joint proposed docket control order, discovery order and notice of
mediator
joint motion to stay all deadlines and notice of settlement
plaintiff’s motion to strike defendant’s affirmative defenses pursuant to
Fed. R. Civ. P. 12(f).
confidentiality agreement
plaintiff’s notice of compliance as to initial disclosures and additional
disclosures
plaintiff’s notice of compliance with PR 3-1, 3-2 disclosures
plaintiff’s notice of compliance with PR 4-1
plaintiff’s notice of compliance with PR 4-2
[client’s name]’s first notice of deposition of [defendant’s name] pursuant to
Fed. R. Civ. P. 30(b)(6)
notice of readiness for a scheduling conference
order granting joint motion to appoint mediator
plaintiff’s original complaint
patent assignment agreement
settlement and license agreement
joint motion to dismiss
order granting joint motion to dismiss
plaintiff [client’s name] disclosure of asserted claims and
infringement contentions
[client’s name] proposed terms and claim elements for construction pursuant
patent rule 4-1
[client’s name] preliminary claim constructions and preliminary
identification of extrinsic evidence pursuant to PR 4-2
protective order
document production requests
plaintiff’s memorandum of law in opposition to defendant’s motion to dismiss
plaintiff’s first set of interrogatories
plaintiff’s trial witness list
plaintiff’s answer to defendant’s counterclaims
plaintiff answer to defendant’s counterclaims
plaintiff answer to defendant’s counterclaims
plaintiff answer to defendant’s counterclaims
plaintiff’s answer to defendant’s counterclaims
joint claim construction and prehearing statement
summons in a civil action
exhibit and witness list
application for extension of time to answer complaint
standing orders
consent to proceed before united states magistrate judge
verdict form
verdict form
order granting plaintiff’s [unopposed/opposed] motion for extension
order of dismissal
order granting [client’s name]’s motion for extension of time to file
the parties’ joint proposed docket control order, discovery order and notice
of mediator
order granting joint motion to stay all deadlines and notice of settlement
order regarding motions to modify/amend docket control orders
standing order regarding participation of local counsel in mediation efforts
standing order regarding page and type-volume limitations
[model] order focusing patent claims and prior art to reduce costs
standing order regarding readiness for scheduling conference
order regarding motions for extensions of time to answer
standing order regarding "meet and confer" obligations relating to
discovery disputes
standing order regarding motions under 35 U.S.C. § 101 and accompanying
certifications
standing order regarding proper notification of settlement to the court
