Patent Litigation Prior Artist Toolkit | Practical Law

Patent Litigation Prior Artist Toolkit | Practical Law

A collection of links to resources concerning prior artists in patent infringement litigation, including sample deposition and document subpoenas and deposition and trial examination outlines, and guidance on contacting, retaining, representing, deposing, defending, and offering trial testimony from prior artists.

Patent Litigation Prior Artist Toolkit

Practical Law Toolkit w-021-1648 (Approx. 5 pages)

Patent Litigation Prior Artist Toolkit

by Practical Law Intellectual Property & Technology
Maintained • USA (National/Federal)
A collection of links to resources concerning prior artists in patent infringement litigation, including sample deposition and document subpoenas and deposition and trial examination outlines, and guidance on contacting, retaining, representing, deposing, defending, and offering trial testimony from prior artists.
Prior art frequently plays an important role in a patent litigation. Prior art may include:
  • Patents and printed publications, such as scholarly articles.
  • Activities, such as use or sale of a product.
  • Published patent applications falling within certain categories.
(See Practice Note, Prior Art: Determining the Status of a Reference.)
A prior artist is an individual, corporation, or other legal entity that developed, published, patented, made, used, sold, or otherwise communicated information relating to a particular prior art activity or disclosure.
Evidence from a prior artist individual or corporate representative may help:
  • Demonstrate that a prior art activity or disclosure anticipates or renders obvious the claimed invention by establishing facts and corroborating documents about the prior art, such as its prior use or commercialization.
  • Illustrate that the claimed invention was a straightforward extension of the relevant prior technology.
  • Counter the patent owner's invention story by demonstrating the hard work and innovation that involved in went into the prior art activity or disclosure.
This Toolkit provides links to several continuously maintained resources designed to help both patent owner's counsel and accused infringer's counsel work with and seek testimony and other discovery from prior artists in a patent infringement litigation, including how to:
  • Contact, retain, and represent a prior artist.
  • Serve a subpoena on a prior artist seeking:
    • documents; or
    • testimony and documents.
  • Prepare for deposition, including how to:
    • interrogate a prior artist; and
    • prepare and defend a prior artist.
  • Offer trial testimony from a prior artist.
  • Consider privilege and confidentiality issues.

Working with Prior Artists

Prior Artist Subpoenas

Prior Artist Depositions

Prior Artist Summary Judgment and Trial Resources

Privilege and Confidentiality Considerations