Patent Infringement Litigation Attorney Guide for Case Preparation

Utility and design patents require different analysis. Utility cases turn on claim limitations, while design cases focus on overall visual appearance.

Literal utility-patent infringement requires each claim limitation to be present. The doctrine of equivalents may apply when literal infringement is absent.

For design-specific issues, see Design Patent.

Product resemblance alone is not enough. Connect the asserted patent to technical evidence before deciding whether to file, defend, or negotiate.

• Map the accused product or process to the asserted patent.
• Review the specification, prosecution history, and relevant prior art.
• Identify non-infringement and invalidity positions that may change the business decision.
• For a prospective plaintiff, complete the reasonable prefiling inquiry required by Rule 11.

See Patent Infringement Litigation for the broader litigation framework.

Under 28 U.S.C. § 1338(a), federal district courts have jurisdiction over civil actions arising under the patent laws, and state courts cannot hear those patent claims. Venue follows 28 U.S.C. § 1400(b).

• Domestic corporate residence: A corporation generally resides in its state of incorporation for patent venue.
• Alternative venue: Venue may exist where infringement occurred and the defendant has a regular and established place of business.
• Forum planning: A local office, sales activity, or business contact does not automatically satisfy the statutory test.

Venue can affect local rules, discovery logistics, and schedule. Verify the facts before treating a preferred forum as available.

• Confirm the defendant's state of incorporation.
• Identify alleged acts of infringement tied to the proposed district.
• Assess the defendant's regular and established place of business there.
• Plan for a venue challenge or transfer motion if supported.

Rule 16(b) generally requires the scheduling order within the earlier of 90 days after any defendant is served or 60 days after any defendant appears, unless the judge finds good cause for delay.

• Prepare for the Rule 26(f) discovery-planning conference.
• Identify proposed deadlines for discovery, experts, and motions.
• Check any applicable local rules and judge-specific claim-construction procedures.
• Treat claim construction as a major milestone, not a universal first-90-day event.

Discovery can reach source code, engineering files, testing data, licenses, and financial information. Rule 26(c) allows a court, for good cause, to limit how trade secrets and confidential commercial material are disclosed.

• Identify sensitive information before production.
• Negotiate access tiers that fit the information and the dispute.
• Address expert access rather than assuming every expert sees every document.
• Separate confidentiality protection from attorney-client privilege and work-product claims.

For broader IP disputes, see Intellectual Property Litigation.

Early technical review differs from full discovery, expert work, and trial preparation. Budget by the work the case actually reaches.

• Pre-suit claim, technical, and prior-art analysis.
• Pleadings, venue motions, and early case management.
• Electronic discovery, depositions, and expert analysis.
• Claim construction, dispositive motions, trial, and possible appeal.

Settlement has no single correct moment. Ask whether continuing justifies the next phase of legal spend and business disruption.

• Compare licensing proposals with the infringement and validity positions.
• Reassess after important discovery or claim-construction developments.
• Compare lump-sum, royalty, and other commercial terms on the same assumptions.
• Account for trial and appellate risk before rejecting a later-stage resolution.

If the case proceeds beyond final judgment, see Federal Appeals.