Navigating the Process of IP Litigation: A Step-by-Step Guide

Litigation is an essential tool for protecting intellectual property (IP) owners’ exclusive rights. While IP owners should take proactive steps to protect their IP and avoid the need for litigation whenever possible, they must also be prepared to enforce their exclusive rights when necessary.

For both IP owners and alleged infringers, it is important to know what to expect during the IP litigation process. An informed and strategic approach is key—not only for securing a favorable resolution, but also for resolving IP-related litigation as efficiently as possible. While litigants will need to rely on an experienced Florida IP litigation lawyer to guide their strategy and represent them throughout the litigation process, understanding what to expect is essential for informed decision-making.

10 Steps in the IP Litigation Process

So, what can you expect during the IP litigation process? Here is a quick step-by-step guide:

1. Seeking Immediate Injunctive Relief if Necessary

For many IP owners, the first step in the IP litigation process will be to seek immediate injunctive relief. Infringement can cause immediate and irreparable harm, and if not addressed promptly, it can lead to loss of IP owners’ exclusive rights in some cases. If sending a cease-and-desist letter is not enough to stop an infringing use, then seeking injunctive relief in court may be the next step.

While many commercial contracts include provisions for mandatory mediation or arbitration (as discussed below), carefully drafted contracts frequently also include carveouts that allow IP owners to seek injunctive relief in appropriate circumstances. Courts will award temporary injunctive relief when warranted, immediately preserving IP owners’ ability to protect their intangible rights while still affording both parties the opportunity to present their full arguments at trial (or in mediation or arbitration).

2. Pursuing Mediation or Arbitration if Necessary

In many cases, pursuing mediation or arbitration will be a necessary precursor or substitute to pursuing litigation in court. This could be the case, for example, if:

• The dispute arises under a contract that includes a mandatory mediation or arbitration provision;
• The dispute involves the Uniform Domain Name Dispute Resolution Policy (UDRP) or another governing authority that requires alternative dispute resolution (ADR); or,
• The court orders the parties to participate in mediation in an effort to resolve their dispute without going to trial.

While mediation and arbitration are both forms of ADR, they are very different forms of ADR. A mediator’s role is to help facilitate good-faith settlement negotiations, while arbitration involves a hearing and results in a binding resolution. Both offer benefits in varying circumstances; and, when parties have the option, they should make an informed and strategic decision based on the advice of their Florida IP litigation lawyer.

3. Evaluating Potential Claims, Counterclaims and Defenses

When facing potential IP litigation, parties on both sides should work with their counsel to evaluate all potential claims, counterclaims, and defenses. Is there a legitimate dispute as to whether the use in question is infringing? Is there a legitimate dispute as to which party has prior rights? Can the defendant (or potential defendant) claim an affirmative defense, such as fair use?

Answering these types of questions is essential for formulating a cohesive, effective, and efficient litigation strategy. It is also essential for determining whether litigation is warranted at all. If the issues involved are such that neither party’s likelihood of success is clear, then focusing on negotiating an amicable resolution from the outset may be the better approach. On the other hand, if clear guidance on a novel legal issue is needed, then litigating through trial could establish valuable precedent for the future.

4. Pleadings and Pre-Trial Motions Practice

Litigating an IP dispute in court begins with pleadings and pre-trial motions practice. The plaintiff will initiate the litigation by filing a complaint, and this will start the clock ticking for the defendant to file an answer. The defendant may choose to file counterclaims (or various other types of claims) as well, and these pleadings will outline the scope of the litigation.

During IP litigation, both parties can use pre-trial motions for various strategic purposes. These include seeking to exclude evidence, seeking changes in venue, and seeking dismissal of claims among others. This step in the process will run concurrently with discovery (discussed below), and both parties may file various discovery-related pre-trial motions as well.

5. Discovery in IP Litigation

Discovery in IP litigation can range from relatively straightforward to exceptionally complex. In litigation, the parties have the right to request relevant records and information from one another. These requests take four primary forms:

• Interrogatories
• Deposition notices
• Requests for production of documents
• Requests for admission

While parties to IP litigation must comply with discovery requests in accordance with the relevant Rules of Civil Procedure, these rules also restrict the scope of discovery, and judges may issue various discovery-related orders as well. As a result, parties must carefully craft their requests and responses, and they must work closely with their litigation counsel to ensure that they are not disclosing privileged communications or other records that are not subject to disclosure.

6. Settlement Negotiations

Parties to IP litigation can settle their dispute at any time—before, during or in some cases even after trial. While parties may choose to pursue settlement prior to discovery in some cases, it is often after discovery that settlement negotiations begin in earnest. At this stage, each party should have a clear understanding of the relevant issues and the evidence that is available (assuming they have conducted their discovery effectively), and they should be able to formulate an informed opinion about their likelihood of success at trial.

7. IP Trial Preparation

Trial preparations may also begin before or during discovery (and while settlement negotiations are ongoing), but it is after discovery that the focus really shifts to getting ready for trial. Along with preparing witness questions and evidence, this may also involve continuing to file motions or working with opposing counsel to stipulate to certain matters that do not require judicial resolution. Preparation is an essential step in the IP litigation process, as thorough preparation (or lack thereof) can make (or break) a party’s case at trial.

8. Trial

If the parties have not settled their dispute before their scheduled trial date arrives, trial will begin with the plaintiff presenting its case-in-chief. At the end of the plaintiff’s case-in-chief, the defense may file a motion for directed verdict, or it may simply proceed with presenting its side of the story. Oftentimes, judges will opt to bifurcate trial in IP litigation—with the parties first presenting their evidence regarding liability, and then only presenting their evidence regarding damages if necessary.  

9. Judgment as to Liability and Damages

At the end of trial (or at the end of each stage of trial in a bifurcated proceeding), the court will render a judgment—either as to liability, damages or both. If the court finds the defendant not liable, then a judgment on damages is unnecessary. In IP litigation involving multiple claims and counterclaims, this can become significantly more complex, and the court may find for each party on one or more of the various issues involved.

10. Appeals

In many cases, IP litigation does not end with the culmination of trial. Instead, one or both parties will challenge the outcome of their trial on appeal. Appellate litigation involves an entirely different set of issues, rules and procedures; and, when contemplating an appeal, litigants must work closely with their counsel to assess the potential benefits and risks involved. If both parties have issues with the final outcome at trial, settling may be a viable solution at this step in the process as well.

Schedule a Consultation with a Florida IP Litigation Lawyer at Lott & Fischer

At Lott & Fischer, we rely on decades of experience to provide effective and efficient representation in high-stakes IP litigation. To schedule a consultation with a Florida IP litigation lawyer at our offices in Coral Gables, please call 305-448-7089 or inquire online today.