Patent Litigation

At Agility IP Law, we are experts at patent litigation, from the perspective of both patent holders and accused infringers. We have litigated patent cases in district courts across the United States, as well as in the U.S. International Trade Commission (ITC), where the primary remedy is an exclusion order that bars the importation of infringing goods into the United States.

Representative Patent Litigation Matters:

• Foam Footwear
• Non-Shellfish Derived Glucosamine and Products Containing Same
• MediaTek, et al. adv. Sanyo (C.D. California, 2005-2007).
• SanDisk Corporation adv. Samsung Electronics Co., Ltd.
• Semiconductor Chips with Minimized Chip Package Size and Products Containing Same
• CD-ROM Controllers and Products Containing Same II, ITC Inv. No. 337-TA-409 (1998-2001).
• Just Toys, Inc. adv. OddzOn Products, Inc.
• Conner Peripherals, Inc. adv. International Business Machines Corp.
• TSMC North America v. Semiconductor Manufacturing International Corporation
• Actuate Corporation v. Oracle USA, Inc.
• Sanyo Corp. v. MediaTek Inc.
• SanDisk Corp. v. STMicroelectronics, Inc.
• Amkor Technology Cases
• Illumina, Inc. v. Affymetrix, Inc.

About Patents

Patents have become the dominant form of intellectual property protection for technology and emerging growth companies. In the United States, the first person to come up with an invention can get a patent – a document issued by the U.S. Patent and Trademark Office – for a "new and useful" invention that is not "obvious." See 35 U.S.C. §§ 101-103. In contrast to most countries, the U.S. awards a patent to the "first to invent" – not the first person to file a patent application. Besides novelty, utility (usefulness) and nonobviousness, another important requirement to obtain a patent is a timely application: one cannot get a patent unless the application is filed no more than one year after the invention is first publicized, sold or offered for sale. This last requirement is often called the "on-sale bar" rule. See 35 U.S.C. § 102(b).

Federal Patent Law

In the United States, federal law governs the issuance and enforcement of patents. See Title 35 of the U.S. Code. The right of inventors to receive patents for their inventions is rooted in the U.S. Constitution, which gives Congress the power "[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries." U.S. Const., Art. I, Section 8, Clause 8.

It is important to understand that a patent does not give its owner the right to practice his or her invention. Rather, a patent gives its owner the right to exclude others from making, using, selling or importing the patented invention. For example, if Bob has a patent on a new widget – but only in combination with Carol's patented product – he does not automatically have the right to make and sell his patented widget/product combination. So in order for Bob to make his own patented combination, he would need a license from Carol to make her patented product.

A patent is a powerful offensive tool that can be used to stop a competitor from selling infringing products. In certain circumstances, a patent holder can use the patent to obtain an injunction that prohibits the production, use and sale of infringing products in the United States. A patent holder also has the option to license its patent to obtain a lump sum payment and/or a running royalty. In addition, patents can often become strong defensive deterrent to others' assertion of IP rights against the patent holder.