Infringement Disputes Are Risky and Costly And Must Be Handled Well
When an infringement dispute arises, we are there for our clients, always seeking a quick resolution given the risks and expense of litigation. While clients often think they have a “slam dunk,” i.e. there is certain infringement or not, and may be told that by other attorneys, we objectively advise our clients that there is seldom better than 70% chance of prevailing, or lesser than 30% chance of losing, since people are involved and there are other uncertainties, e.g. the possibility invalidating prior art may be found, or the district judge may err in interpreting the patent. In patent cases, the reversal rate at the Federal Circuit appeals court in past years was nearly 50% so many cases are appealed. We have had good luck mediating and settling cases in recent years. While we are zealous advocates for our clients, we also make every effort to work with opposing attorneys in a cordial and cooperative fashion, so as to facilitate resolution and avoid incurring large attorneys’ fees on discovery disputes.
“Discourage litigation. Persuade your neighbors to compromise whenever you can. Point out to them how the nominal winner is often the loser – in fees, expenses and waste of time. As a peacemaker the lawyer has superior opportunity of being a good man. There will still be business enough.”
— Abraham Lincoln, 1850.
Trademark Infringement Actions Are Generally About Right To Use
Except in cases of counterfeiting or willfulness and diverted sales can be proven, trademark cases are generally not about money and instead focus on being able to continue using a mark. Additionally, in bringing a complaint for infringement it is often undesirable to seek money damages at all, and instead request only injunctive relief, in an attempt to avoid triggering the accused infringer’s general business insurance advertising injury coverage and providing the insured with a free defense. Since trademark infringement requires proof of likelihood-of-confusion, the multi-factor test outlined, summary judgment is typically unavailable because there are factual issues, and thus if a preliminary injunction is not obtained these cases can potentially drag on for a while. But like all litigation, trademark cases can be expensive, and thus the party that has less invested in their mark may have less incentive to continue fighting as compared to the other more-established party.
Send Cease and Desist Letters Cautiously
Recent changes in Federal Circuit law create declaratory judgment standing without the threat of litigation. A declaratory judgment action is a defensive lawsuit asking the court for a declaration of rights. Under threat of patent litigation, a party may file for declaratory relief seeking patent invalidation or a preemptive finding of non-infringement.
Until recently, an actual case and controversy was required for standing to file such an action, minimizing the risk of having to defend the action in an inconvenient or disfavored forum. The case and controversy rule required a patentee’s explicit threat of suit and purportedly infringing acts by a defendant. The Federal Circuit’s recent SanDisk v. STMicroelectronics decision changed the rules, that merely asserting patent rights with no intent to sue may satisfisfy the case and controversy standard. Patent holders need to be careful or may risk defending against a complaint for declaratory relief in a geographically inconvenient forum.
Patent Enforcement Insurance May Help Small Business
It has been said getting a patent is issue is like carrying an unloaded gun, in that it still takes ammunition (much money) to go after infringers. One tool available for small business is patent enforcement insurance, in that a patent is insured against being infringed, and if so there is money to pay attorneys to enforce the patent. Several of our clients carried such insurance and it helped greatly in resolving infringement cases.
Experienced Trial Counsel Is Necessary For Matters Which Go to Trial
Approximately 95% of civil cases settle, the vast majority well before trial. Accordingly, few civil litigators have much trial experience. Therefore, we have relationships with several highly-experienced trial lawyers, who specialize in conducting trials, and thoroughly know the rules of evidence and how to best present a case to a jury. U.S. jury trials are like a Broadway play. Trying cases well requires much preparation and a skill set at doing so.