Intellectual Property Litigation
Although I handle a wide variety of commercial disputes in my practice, one type of dispute that I do not work on is disputes over patents and trademarks. Specialized IP litigators handle those disputes.
To learn more about that work, and how it differs from my own, I spoke with Alexandra Scoville, an attorney at Schmeiser, Olsen & Watts LLP in Albany, New York, about her practice as an intellectual property litigator.
Why should you continue to read this post about IP Litigation?
You’re interested in the questions IP litigators ask before determining whether to pursue a case.
It will take your mind off of things for a few minutes.
You want to know how much of this interview you can copy without attribution.
Background
What motivated you to pursue intellectual property law?
Alexandra Scoville, practices intellectual property law at Schmeiser, Olsen & Watts LLP in Albany, New York. This interview has been lightly edited.
When I learned about intellectual property in undergrad, I was intrigued by the idea of protecting ideas and creativity. As I took more intellectual property courses in law school and clerked for my current firm working on intellectual property matters, I was immediately drawn to the creativity and problem solving involved in helping clients best protect their intellectual property.
It’s an incredibly rewarding feeling when a client’s patent, trademark, or copyright application is granted. Each type of intellectual property involves different considerations as well, and whether I am working with an inventor, an artist, or an entrepreneur or business with a new product or brand, I am always learning something new.
Did you study science or engineering in college or have a background working in the field? Do you believe such a background is necessary or very helpful when working with patents?
I studied biology and chemistry as part of my environmental studies major in college, and my senior independent research was in microbiology.
For patent prosecution at the United States Patent and Trademark Office, there is the patent bar exam (which is separate from the bar exam to become an attorney). The patent bar exam requires a technical undergraduate degree or certain number of credits in technical fields like biology, chemistry, physics, or engineering. I am currently working on getting the last few credits I need to supplement my technical study in undergrad to take the patent bar exam.
Having a technical background can prepare you to draft and prosecute patent applications in that technical background, and also helps with respect to the ability to think technically, understand details and nuances, and draft claims.
On the litigation side, a technical background is not required, but helps in the same respect, particularly when understanding patent claims, learning the technology at issue, and making detailed distinctions or comparisons in the prior art.
Do you advise clients on filing copyrights, trademarks, and patents, or just on disputes concerning them?
Both. For copyrights, trademarks, and patent procurement, for example, I advise clients about short term and long term strategy. These strategies will be different for an individual inventor or entrepreneur, a small start up business, and a larger business. Protecting intellectual property is a long-term investment, and there are key time periods and deadlines, as well as cost considerations that come into play when deciding the best strategy. For some clients, the focus is on brand protection. For others, patent protection and obtaining patent pending status is the focus. Depending on the client, a plan that includes copyright, trademark, and patent protection might be best. Being cost conscious and determining how to best invest in IP protection, especially for a startup venture, are key considerations.
Disputes regarding intellectual property can range from interpreting a license agreement or non-disclosure agreement, to stopping infringement, to seeking damages for infringement, to exploring potential business opportunities with an infringer, or a combination thereof.
Do you mostly represent plaintiffs or defendants in disputes?
I have represented clients as both defendants and plaintiffs in disputes; depending on the case, both parties may have related disputes with each other.
Are your clients largely in upstate New York or are they spread out geographically?
One of the things I enjoy about working at a firm with a national practice is the opportunity to work with clients right in the Capital Region, throughout New York State, and across the country as well. During upstate New York winter in particular, I love hearing from clients in warm weather locales about how there isn’t over 2 feet of snow somewhere!
How can you assess whether one piece of intellectual property really infringes on the rights of another? When do you feel something is “too close” to something else and when it is “different enough” that a lawsuit is unlikely to succeed?
There are different legal standards for infringement depending on the type of intellectual property at issue.
In copyright law for example, which protects creative expression fixed in a tangible medium, infringement depends on whether the allegedly infringing work is substantially similar. This analysis can be simpler when for example, a party has used a copy of an image found on Google images on its website without permission of the image’s copyright owner, and more complex when for example, an author alleges copyright infringement of a plot or character in a book. The analysis can also differ depending on the type of work, whether that be for example a painting, a song, or a computer program.
With respect to trademark infringement, the standard is whether the allegedly infringing mark creates a likelihood of confusion in consumer’s minds as to the source of the goods and/or services at issue. In other words, are consumers likely to mistake one source of goods for another? There are several factors that guide this determination: the similarity in appearance, sound, and commercial impression of the marks at issue, for example.
For patents, infringement exists when the claim(s) of a patent read on the infringing process or article. A patent claim is located at the end of a granted patent, and is the exact language that defines the scope of protection. If, as a hypothetical, I were granted a patent for a writing utensil and I claimed “a graphite rod disposed in a wooden casing” and a competitor of mine started selling a writing utensil that had a graphite rod disposed in a wooden casing and an eraser, the addition of the eraser does not avoid the infringement because all of the elements in my claim are met. However, if the competitor in this hypothetical is selling a graphite rod disposed in only a plastic casing, then my claim is not infringed because the required element of the casing being wooden is not met by the competitor’s utensil. In patent infringement cases, there can be dispute between the parties about what the language in a claim means. Determining the meaning or “scope” of the claims is a step of litigation in patent infringement cases, because the scope of the claims will be used to determine infringement.
How can you assess the potential damages in a matter to determine whether an infringement is worth the cost of litigation?
Depending on the type of IP infringement at issue, we might be looking at reasonable royalty, lost profits, profits of the infringer, and also any applicable statutory damages. Damages experts can be useful in analyzing discovery and putting together the best damages theory for a case.
Do prevailing parties get their attorneys’ fees reimbursed in IP disputes?
This can depend on the applicable law and the Court.
In copyright law for example, a Court has the discretion to award attorney’s fees to the prevailing party. This determination is based on factors such as the degree of success obtained, and the need for compensation and deterrence. Fee shifting can also take place in instances where the parties in the dispute were parties to a contract having an attorney’s fees provision.
What’s the hardest part about working on IP disputes? What is the most interesting?
IP disputes can involve very technical and complex issues that require time and precise attention to detail. For example, in cases with particularly voluminous discovery, document review can be a time consuming part of the dispute. Similarly, in patent litigation, sometimes the meaning of a particular claim term is informed by the arguments that were made during the prosecution of the patent at issue by the patent applicant at the time. Prosecution can take years and it’s key to review the prosecution history and the arguments and evidence presented to determine and argue the intended meaning of certain claim terms. The process of interpretation in IP disputes is interesting and involves strategic problem solving. For example, in trademark infringement cases, one of the factors relevant to determining whether there is a likelihood of confusion is whether the commercial impressions of two trademarks are confusingly similar. Evidence of similarity or dissimilarity can include dictionary definitions of words in the marks, internet and survey evidence of connotation of words and any imagery in the marks, and even details such as the effect of punctuation, word placement, and grammar in a mark on the commercial impression.
What are the aspects of an IP dispute that make it different from a standard commercial dispute, like a breach of contract?
A great example is in patent litigation. Again, the claims are the key aspect at issue in patent infringement litigation. Claim construction is an additional step that takes place in which the parties present their positions and supporting evidence of how the claim(s) at issue should be construed. This can involve discovery and expert witnesses specifically regarding claim construction. Claim construction is determined by the Court as a matter of law.
What books and websites do you use for legal research?
I use Westlaw and the United States Patent Quarterly Reporter often; the latter is a reporter that covers intellectual property law cases specifically.
To research administrative decisions of the United States Patent and Trademark Office, I use the USPTO’s databases of Patent Trial and Appeal Board and Trademark Trial and Appeal Board decisions. The USPTO’s database of trademarks called Trademark Electronic Search System (“TESS”) and of patents called the Patent Full-Text and Image Database are helpful as well. pat2pdf.com is helpful for quickly downloading patents.
Many countries have searchable patent and trademark databases as well that are fairly user friendly when searching for international documents and associated prosecution histories.
Who decides the facts in an IP disputes? Is it a judge or a jury?
As a general matter, a jury or judge can be the trier of fact in a patent, trademark, or copyright case. But there are some variations to this rule depending on the types of intellectual property at issue and which court is hearing the case. For example, in some Circuits, the right to a jury trial for trademark cases depends on the type of damages sought (e.g. actual damages versus disgorgment of profits).
In your experience, do trademark, copyright, and patent disputes involve a lot on document discovery and depositions?
Depending on the number and size of the parties in a dispute, there can be numerous depositions, and thousands or more documents produced by each party.
In patent litigation, for example, sometimes there is a massive quantity of documents regarding the technical development of a patented article that may be highly relevant in determining the meaning of language in the claims of the asserted patent.
How often did you go to court, back when courts were open?
In some instances it can be several times a month, other times once or twice a month depending on the status and number of active litigations. When litigations are in the beginning stages, typically not as frequently, though each can differ depending on the facts, type of IP law involved, and number of parties. In general, the lead up to trial is a time period of more frequent court appearances, as well as during motion practice.