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Patent Litigation Named Inventor Toolkit
Practical Law Toolkit w-019-5240 (Approx. 5 pages)
Patent Litigation Named Inventor Toolkit
by Practical Law Intellectual Property & Technology
| Maintained • USA (National/Federal) |
A collection of resources concerning named inventors in patent infringement litigation, including sample deposition and document subpoenas, deposition and trial examination outlines, and guidance on contacting, retaining, representing, deposing, defending, and offering trial testimony from named inventors.
Most patent infringement litigation involves discovery, including deposition and trial testimony, from each individual named as an inventor on an asserted patent.
A named inventor usually possesses relevant evidence concerning almost all aspects of patent infringement litigation, including:
- Key claims and defenses, including infringement, validity, and enforceability.
- The state of the art of the subject matter of the asserted patent when the application that issued as the patent was filed.
- How the named inventor and any co-inventors conceived of and reduced the claimed invention to practice, which may be especially significant in a jury trial.
- Any secondary considerations of non-obviousness, such as commercialization of the claimed invention.
This Toolkit provides 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 named inventors on asserted patents in a patent infringement litigation, including how to:
- Contact, retain, and represent a named inventor.
- Serve a subpoena on a named inventor seeking:
- documents; or
- testimony and documents.
- Prepare for deposition, including how to:
- interrogate a named inventor; and
- prepare and defend a named inventor.
- Offer trial testimony from a named inventor.
- Consider privilege and confidentiality issues.