Intellectual Property Litigation: Patent, Trade Secret, and Brand

A patent infringement claim may succeed even when the accused product does not literally satisfy each claim element, if each element is present in a substantially equivalent form in the accused product, and patent infringement litigation counsel must evaluate whether prosecution history estoppel limits the patent owner's ability to invoke the doctrine of equivalents based on claim amendments or arguments made during prosecution.

A defendant in patent infringement litigation can attack the validity of the asserted patent by presenting prior art that anticipates or renders obvious one or more of the asserted claims, and patent counseling and prosecution counsel conducting a prior art investigation must search not only issued patents but also non-patent literature, academic publications, and commercial uses that predate the patent's priority date.

A plaintiff asserting a trade secret claim under the Defend Trade Secrets Act must identify the trade secret with reasonable particularity, demonstrate that the information derives independent economic value from not being generally known to others who could profit from its disclosure, and prove that the information was subject to reasonable measures to maintain its secrecy. Trade secret misappropriation counsel must also evaluate whether the defendant obtained the information through improper means or in breach of a confidentiality obligation.

A non-compete agreement that is unenforceable because it is overbroad leaves the company without its most powerful tool for preventing a departing employee from using confidential information at a competitor. Trade secrets litigation counsel must assess whether the agreement satisfies the applicable state law's reasonableness standard, whether the employee had access to qualifying trade secrets, and whether the new employer's business creates an inevitable disclosure risk.

A trademark infringement claim requires the plaintiff to demonstrate that the defendant's use of a similar mark is likely to cause consumer confusion about the source or affiliation of the goods or services, and trademark litigation and counseling counsel must evaluate the similarity of the marks, the relatedness of the goods and services, the strength of the plaintiff's mark, and evidence of actual consumer confusion.

The fair use doctrine allows the use of copyrighted material without authorization when the use is transformative, takes no more of the original than necessary, and does not harm the market for the original, and copyright litigation counsel must evaluate all four statutory fair use factors, including the purpose of the use and its effect on the potential market for the original work.

A party seeking a preliminary injunction in an intellectual property case must demonstrate likelihood of success on the merits, irreparable harm, a balance of hardships favoring the moving party, and that the public interest would not be disserved by the injunction. Intellectual property litigation counsel must move quickly after discovering the infringement and prepare an expert declaration addressing the technical elements of the infringement claim in sufficient detail to satisfy the likelihood of success standard.

A patent plaintiff who proves infringement is entitled to recover at least a reasonable royalty, calculated as the royalty that would have resulted from a hypothetical negotiation between a willing licensor and licensee at the time the infringement began. Patent infringement litigation damages counsel must evaluate whether lost profits provides a higher recovery than the reasonable royalty and identify comparable licenses that support a favorable royalty rate.