Litigation & Counseling

Litigation

Intellectual property litigation is almost exclusively conducted in Federal court, and many cases are tried to a jury after it has been instructed by the judge.  Patents and copyrights are exclusively controlled by federal law as are federally registered trademarks.  While unregistered trademarks may be litigated in federal court, the law of the local jurisdiction will apply.

Intellectual property litigation, particularly patent litigation, can be some of the most expensive litigation in which a business or person may become involved.  Not only is the litigation expensive, but it is time consuming and can distract management from its other responsibilities.  It is not unusual for the litigation to take from one to three years for decision, depending upon the jurisdiction, but many cases are subsequently appealed.  Patent cases are appealed to the Federal Circuit Court of Appeals, which sits in Washington, DC.  Trademark and copyright cases are appealed to the regional circuit having responsibility for the district court.  Ultimately the United States Supreme Court may rule upon the outcome. 

In patent infringement, the patent owner typically seeks as its remedy an injunction preventing future infringement and compensatory damages for the infringement occurring prior to decision.  Whether the patent owner can obtained an injunction will be controlled by the Supreme Court’s decision in eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006).  The damages award is to be no less than a reasonable royalty per 35 U.S.C. § 284 and may be the patent owner’s “lost profits” in appropriate cases.  The damages may be trebled at the discretion of the district court, who also may award the patent owner it attorney fees per 35 U.S.C. § 285 in “exceptional cases.”

The important remedy in trademark infringement litigation typically is the injunction against infringement and the harm being done to the goodwill of that mark.  Frequently the trademark owner will seek a preliminary injunction, granted before a trial, on the grounds that the harm is creating “irreparable injury” and thus must be stopped immediately.  The trademark owner typically will also seek a permanent injunction, compensatory damages and its attorney fees.  The available remedies are frequently a function of the regional circuit.

The owner of a registered copyright often will choose statutory damages under 17 U.S.C. §504 due to the difficulty in proving actual damages.  The copyright owner will also typically seek a permanent injunction per 17 U.S.C. §502 and its attorney fees per 17 U.S.C. §505.  While preinfringement registration is a prerequisite under 17 U.S.C. §412 for recovery of attorney fees by the copyright owner, a prevailing defendant may seek recovery of its attorney fees under the Supreme Court’s decision in Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994).

Click below for more detailed information about specific litigation:

Patent Litigation
Copyright Litigation
Trademark Litigation
 

Counseling

You have the idea for your new product, and a name for the product.  What do you do next?  The attorneys at Berenato & White can guide you through the processes of evaluating the protection that you might be able to obtain for your idea and for its name.  Our attorneys can assist you in evaluating whether commercilization of the product might infringe prior existing patent rights.  We can also provide advice on protection of the product and its name outside of the United States.

Taking an idea from concept to commercial reality is a difficult task, with many decisions that need to be made.  Our team of attorneys have decades of experience in assisting inventors and business people in asking the questions that need to be considered when startying out, assisting in  evaluating the various options that are available, and in implementing intellectual property strategies to secure protection while taking into account the need to control costs and work within budgets.