Patent Litigation

At Goldstein & Lipski, patent litigation is not part of our business, it IS our business. We specialize in taking patent infringement matters all the way through trial and appeal, if necessary, though a large percentage of patent infringement cases are resolved prior to trial.

When a new matter comes to us, we do a thorough review of the patent, the file history and any other documentation related to the matter. We educate ourselves on the technology described in the patent, the prior art and those practicing the art. We learn as much as is available about any potential infringer(s), including any defenses they may assert in litigation.

After we have completed our pre-suit review and agree that the client's patent is infringed, we can begin a lawsuit. A patent infringement lawsuit generally has four stages - the pre-suit review, the discovery phase, the pre-trial (or motion) phase and the trial. Due to the fact that patent litigation trials can run in the millions of dollars in expenses and a defendant can potentially be found liable for millions of dollars in damages, as well as the complexities of patent law, many cases resolve prior to trial.

The discovery phase of the trial is the most labor-intensive for the client. Because U.S. courts give both parties a wide latitude in the types of paper and electronic discovery that can be requested, clients are generally required to provide all documents, whether paper or electronic (including emails) that relate in any way to the patent, the technology described in the patent, the defendant(s) and the lawsuit. And while the more sensitive information can be labeled as "attorney's eyes only" in order to keep it away from a competitor, Courts generally require both parties to provide all such documentation for use in the lawsuit. Clients can expect to be required to do a thorough search of their company offices, their computers, storage facilities or any other place where such documents may be found.

In addition, the discovery phase includes depositions. Clients can expect that the key people in their company, including the CEO and/or president, the inventor, the CFO, those involved in research and development and those involved in marketing will be deposed by the other party. Goldstein & Lipski attorneys work side-by-side with our clients to prepare them for deposition. This includes familiarizing them with the deposition process, reviewing and discussing the documents produced and the relevant facts and helping them to understand the types of questions they are likely to face.

One of the most significant aspects of the discovery phase is the Markman briefing and hearing. A Markman hearing, which is preceded by position briefs from both parties, is to determine as a matter of law the interpretation of the claims. Prior to the hearing, both sides determine which terms are at issue and fully brief the Court with their proposed definitions of any disputed terms. At some point after the hearing, the Court issues a written order with definitions for the disputed terms (the Court can choose the proposed definitions of either side, or write its own definitions) and both parties are held to those definitions as the case proceeds.

The third phase is the pre-trial, or motion phase. Prior to the trial, the Goldstein & Lipski team of lawyers will draft all necessary motions, including summary judgment motions, as well as respond to motions from the other side. Because our clients are often experts in the technology and/or the field, their insight is invaluable as we craft both the motions and responses.