Patent Infringement- The Steps/Procedure

[beerclip]

New York

I have filed a Pro Se patent Infringement claim against a fairly large company and want to know what are the traditionals steps to an infringement case? My loss due to the infringement is not great enough to pay for an IP atty or get one to take it on contigency basis. (This is probably why the big companies infringe and worry about it later)

This is what has happened so far.

Prior to filing I attempted to settle but that did not happen.

I composed my claim, filed it and serve the defendant.

The defendant has now answer my claim and is of course stating a counter claim and declaratory judgment to invalidate my patent. What is the next step? Do I have to respond to the counter claim in writing? Do I request Declaratory relief?

I guess my base question is what is the procedural timeline in infringement cases?

1. I file
2. They answer and counterclaim, ask for declaratoy judgment.
3.?????
4?????
etc..

When would Marksman occur? Etc..

 

[divgradcurl]

There isn't any way we can really walk you through a patent case on this site -- it's just too complicated and fact-specific, plus the procedural stuff is different from circuit-to-circuit and court-to-court.

Here's what you need to do -- get to a local library (a local law library if you have one), or a bookstore, and find a book on basic civil procedure for pro se plaintiffs -- try Nolo Press, they should have one. Then, get a book that provides an overview of the specifics of a patent trial -- see if your library has this book: http://www.amazon.com/gp/product/159622195X/sr=8-3/qid=1154106662/ref=sr_1_3/102-3715257-3101723?ie=UTF8 or this book: http://www.amazon.com/gp/product/1402400403/ref=pd_bxgy_text_b/102-3715257-3101723?ie=UTF8. You The first book has a more "high level" overview, the second has more nuts-and-bolts. will also want to get a hold of a book that has the federal rules of civil procedure, preferably with explanations. Then, you will need to go to the website for the district court where you filed you case and look up the local rules. Most districts will have general local rules that modify the federal rules of civil procedure, and you will need to follow the local rules (but many local rules refer back to the FRCP, so you will need a copy of that anyway). Then, look to see if you court or your district has adopted local rules for patent cases (some courts have, some courts have not). Finally, look to see if you particular judge has modified any of the local rules, or has put up any standing orders.

You will need to respond to their answer if it raises any counterclaims or claims for declaratory relief -- you will need to answer their claims by providing the appropriate defenses. If you didn't file for declaratory relief in your original complaint, you will need to amend your complaint to include the declaratory relief claims, if you want them -- you will likely need to ask the court for leave to amend your complaint, check the local rules.

Usually Markman is a long way off, but it depends on the court -- some courts don't hold Markman hearings at all, and instead deal with claim construction in another way (such as summary judgment). Typically, once the complaint and answers have been filed, that is the time for motions to dismiss, then discovery commences, usually after a case management conference to set up timelines and the like -- but it will depend on your particular court. Markman may occur before the close of lay and expert discover (this is how NDCA and EDTX do it), may occur after the close of lay discovery but before the close of expert discovery, or may occur after the close of all discovery (like the CDCA). You will need to find out how your court does it before you can figure out the timelines. Typically you will set initial dates during your first case management conference.

Again, pick up some books, and educate yourself on the process. This is complicated, there is no one way of doing things, and you will need to be very aware of how your particular court does things in order to get it right.

EDIT: The second book I linked to above, "Patent Litigation," will be a life-saver if you go this alone -- it would be worth buying a copy if your local library or law library doesn't have it, or can't get it for you. You should get a copy ASAP, as it has information on answering counterclaims that is valuable. Those of us in the profession rely on this book, you should too. It doesn't have every answer, but it is one of the best first places to start.

Also, you will want to find a law library that has either a paper copy or online access to "Chisum on Patents," the standard teatise on patent law -- it's a good resource for caselaw and explanations of caselaw when you are drafting briefs or motions for the court.

 

[beerclip]

Pro Se and needs the procedure

Thanks for the information. I already ordered both books and will be working on a rough draft this week as I have 20 days to respond if needed.

The company has contacted me again and was concerned that their response may have upset me. They wanted to continue to talk settlement, but had to get an answer in or be in default.

As I guess typical the counterclaims are really just a boiler plate of arguements they may raise later.

As I gave them an extension to initially respond, they already offered an extension for my response to counterclaims in hope that we will have a setlement to submit. But I ordered the books anyway because if I must anwer I do not want to be caught with no options at the last minute.

Thanks again.

 

[divgradcurl]

Thanks for the information. I already ordered both books and will be working on a rough draft this week as I have 20 days to respond if needed.

The company has contacted me again and was concerned that their response may have upset me. They wanted to continue to talk settlement, but had to get an answer in or be in default.

As I guess typical the counterclaims are really just a boiler plate of arguements they may raise later.

As I gave them an extension to initially respond, they already offered an extension for my response to counterclaims in hope that we will have a setlement to submit. But I ordered the books anyway because if I must anwer I do not want to be caught with no options at the last minute.

Thanks again.

Good luck!