IP Topics
IP Litigation.
How patent, trademark, copyright, trade-secret and related contract disputes are heard in Texas state and federal courts, before the USPTO and in other applicable forums.
In Short
Federal courts have exclusive jurisdiction over patent and copyright cases (28 U.S.C. ยง 1338), and most trademark cases are also brought in federal court. Trade secret claims can be brought under the federal Defend Trade Secrets Act, the Texas Uniform Trade Secrets Act, or both. Available remedies include injunctions, damages, and, in exceptional cases, attorney's fees.
Common situations.
- Someone may be infringing the business's patent, trademark, copyright, or trade secret.
- The business has been accused of infringement or has received a demand letter.
- A former employee has taken confidential information to a competitor.
- A competitor has filed an inter partes review or an opposition.
- Settlement talks have stalled and a deadline is approaching.
- Only emergency relief, such as a temporary restraining order or preliminary injunction, will stop the harm in time.
Key concepts.
Federal and state court
Federal courts have exclusive jurisdiction over claims arising under federal patent and copyright law. A contract or ownership dispute involving an IP asset does not necessarily fall within that exclusive jurisdiction. Trademark and trade-secret disputes may involve federal claims, Texas claims or both. Qualifying commercial IP and TUTSA disputes may also fall within the Texas Business Court's jurisdiction. The claims, jurisdictional facts, venue rules and applicable agreements determine where a dispute can proceed.
The four Texas federal districts
Texas has four federal districts: the Eastern, Western, Northern, and Southern Districts. Venue rules limit where a patent defendant can be sued, so the choice among them is often constrained.
PTAB and TTAB
The Patent Trial and Appeal Board can cancel issued patent claims through inter partes and post-grant review; the Trademark Trial and Appeal Board decides oppositions and cancellations. Neither awards damages, but their rulings can affect later court cases.
Appeals
Patent appeals go to the Court of Appeals for the Federal Circuit. Trademark, copyright, and trade secret appeals from Texas federal courts go to the Fifth Circuit.
Emergency relief
Temporary restraining orders and preliminary injunctions can stop ongoing harm before trial, but they require showing likelihood of success, irreparable harm, balance of hardships, and the public interest, on an evidentiary record assembled quickly.
Remedies
Injunctions, lost profits, reasonable royalties, and disgorgement of profits, plus enhanced damages for willful patent infringement, statutory damages for timely registered copyrights, and exemplary damages under Texas trade secret law. Attorney's fees are available under different standards for each type of claim.
Responding to a demand letter
Many disputes begin with a demand letter rather than a lawsuit. The early response (investigating the claim, assessing defenses, preserving evidence, and meeting any deadline) shapes what follows. The guide below covers those first decisions.
The Process
The life of an IP case.
Most IP lawsuits move through the same stages. Knowing the stage a case is in, and what the next stage involves, helps a business plan.
-
Before filing
Investigation, any required pre-suit notice, and assessment of claims, defenses, and forum.
-
Pleadings and early motions
The complaint and answer, and early motions on venue, jurisdiction, and whether the claims are legally sufficient.
-
Discovery and claim construction
Document production, depositions, and expert reports. In patent cases, the court's claim construction (Markman) ruling defines what the patent covers and can significantly affect the case.
-
Resolution
Cases end by settlement, by a ruling on dispositive motions, or by trial.
How a patent is drafted, how a trade secret program is documented, and how a license is worded all affect what happens if the right is later challenged in court. The guides below cover the first stage of most disputes.