Patents R Us: Information and Services for Inventors and Patent Owners

Patent Infringement Litigation Terminology

Filing a patent infringement lawsuit will expose a patent owner to many new legal terms, so here is a rundown of the legal terminology a patent owner is likely to come across.

Patent Attorney: A patent attorney is generally NOT involved in patent infringement litigation. While patent attorneys are attorneys, they assist applicants for patents to secure patents for their inventions. They must meet qualifications and pass an exam, so they are licensed by the US Patent and Trademark Office, but they generally do not try cases in court.

Patent Agent: A patent agent is NOT an attorney. Like a patent attorney, a patent agent helps inventors secure patents for their inventions, and they are licensed by the US Patent and Trademark Office, but since they are NOT attorneys, they do not get involved in patent litigation, except possibly as an expert witness.

Patent Litigator: This is an attorney who tries patent-related cases such as patent infringement claims. Some are civil litigators who try all kinds of commercial litigation, but there are a few attorneys who specialize in patent litigation.

Patent Enforcement Firm: This is a company (NOT a law firm) that represents patent owners on a contingency basis. The patent enforcement firm hires a patent litigator, pays all disbursements, and manages the entire process in exchange for a share of any award or settlement the firm produces for their client, the patent owner.

Plaintiff: The party that launches a civil lawsuit is the plaintiff. A lawsuit is initiated when the plaintiff’s attorney files a “complaint,” and “plaintiff” and “complaint” share the same “plaint” root from Old English. The plaintiff can be a man or woman, or a business or institution such as a university or hospital, or a government agency. A lawsuit can have multiple plaintiffs if more than one entity shares a common issue for which they are seeking justice or compensation. Plaintiffs only exist in civil proceedings. There are no plaintiffs in criminal trials.

Defendant: The person, business or other entity or entities that is being sued is the defendant. The term defendant is used in both civil and criminal proceedings as a person accused of a crime is also a defendant.

Prosecutor: The person bringing criminal charges on behalf of the state is the prosecutor, and there are only prosecutors in criminal trials. However, the term “prosecute” is sometimes used in civil cases in the context that the plaintiff’s attorney will “actively prosecute the case on behalf of his client.” Also, prosecute is used to describe what patent attorneys and patent agents do for their clients. Helping an inventor get his patent application approved is also known as “prosecuting the patent.”

Guilt and Innocence: These terms apply to criminal trials, not civil proceedings such as patent infringement trials. In a civil trial, the jury finds in favor of the plaintiff or in favor of the defendant. Civil cases are about liability, negligence and other factors, not guilt or innocence.

Verdict: Also known as a “jury verdict", this is the decision reached by a jury in both criminal and civil trials. Juries decide issues of fact, not legal issues.

Ruling: This is a decision made during a criminal or civil trial by the judge, and it is a matter of law, not fact.

Award: This is the compensation paid to the plaintiff who wins his (or her or its) lawsuit. In civil trials, the jury usually decides both negligence and liability, and if they decide in favor of the plaintiff, the jury also decides the award.

Settlement: Also called an “out-of-court settlement,” this is a common outcome in civil litigation. Rather than risk a trial – at which either side could win big or lose big – the plaintiff and defendant and their attorneys meet and try to work out a settlement between them. This sometimes occurs just before the trial, and can even occur at any point during the trial up until both sides rest and the case is given to the jury. Some out-of-court settlements have been reached while the jury was meeting to decide the case! While neither side gets exactly what it wants in an out-of-court settlement, such an arrangement eliminates the uncertainty of a jury verdict and award. Also, a jury verdict and award are a matter of public record, while a settlement is a private agreement between the parties.

Appeal: If the losing side believes there was an error during the trial, it can file with an appellate court to have the jury verdict overturned and have the case re-tried. The losing side cannot appeal a verdict or an award simply because it is unhappy with the outcome of the trial. It must convince the appellate court that a serious error occurred – for example, the judge made an improper ruling – that affected the outcome of the trial. One advantage of an out-of-court settlement is that it cannot be appealed.

License: When the defendant in a patent infringement lawsuit agrees to an out-of-court settlement, that agreement usually includes the defendant agreeing to license the plaintiff’s patent and pay the patent owner a royalty for past, present and future use of the product.

Disbursements: These are the expenses incurred by an attorney or law firm. Disbursements include filing fees, court reporters to produce transcripts, producing video depositions, hiring researchers and expert witnesses, creating exhibits to use during the trial, and travel expenses.