IP Litigation Deposition Supplement

IP Litigation Deposition Supplement

Adds IP-specific examination frameworks to @deposition-preparation. Covers four case types — patent, trademark, copyright, trade secret — with witness-specific question lines and damages theory.

Prerequisites

• Relevant patents, registrations, or trade secret identification statements
• Prosecution history and claim construction positions (patent)
• Prior art references at issue
• Accused product/process technical documentation
• Licensing history and comparable licenses
• Expert reports (if designated)
• Confidentiality agreements (trade secret)

Case Type Reference

Patent Examination Frameworks

Inventor

• Conception/reduction to practice: When conceived, what problem solved, corroborating records, who was told, prototyping/testing timeline
• Prior art knowledge: Awareness at time of invention, searches conducted, how invention differs from specific references — failure to disclose bears on inequitable conduct
• Claims/prosecution: Understanding of claim 1, meaning of disputed terms, involvement in prosecution, reasons for amendments

Accused Infringer Technical Witness

• Product/process: How accused product works step-by-step, development timeline and team
• Design choices: Alternatives considered, reasons for chosen approach, awareness of patent, design-around efforts
• Claim element mapping: Whether product has each claim element, how it performs each function
• Non-infringement: Which limitation is missing, how product differs from claims

Licensing / Damages Witness

• Licensing history: Prior licenses (parties, terms, royalty rates), negotiation process, comparable licenses
• Georgia-Pacific hypothetical negotiation: Most significant factors, proposed royalty rate and base, non-infringing alternatives and market availability
• Lost profits (Panduit): Manufacturing capacity, market share but-for infringement, patented feature as demand driver, apportionment methodology

Patent Expert Depositions

Apply @deposition-expert-witness framework, then add:

Technical expert: Claim term construction with prosecution history support; element-by-element infringement walkthrough; physical examination and source code review; prior art disclosure analysis; PHOSITA motivation to combine references

Damages expert: Royalty rate and methodology; which Georgia-Pacific factors applied and how; comparable license analysis; royalty base; "but for" world for lost profits; apportionment to patented feature

Trademark Examination Frameworks

Mark Owner

• Creation timeline, selection rationale, first use in commerce with documentation
• Inherent distinctiveness vs. acquired secondary meaning; supporting advertising
• Awareness of defendant's mark, confusion incidents, harm (lost sales, goodwill, costs)

Accused Infringer

• Adoption timeline, decision-maker, whether trademark search was conducted
• Awareness of plaintiff's mark, legal advice received
• Intent to trade on goodwill or cause confusion
• Knowledge of actual confusion incidents (misdirected orders, customer inquiries)

Trade Secret Examination Frameworks

Owner / Developer

• Specific description of trade secret and what makes it secret
• Security measures: physical (locks, access control), electronic (passwords, encryption), contractual (NDAs, employment agreements, need-to-know)
• Value: development investment, independent replication cost
• Misappropriation theory: how defendant acquired/used it, timeline

Accused Misappropriator

• Relationship with plaintiff, confidentiality agreements signed
• Access to claimed information, how obtained
• Independent development evidence
• Knowledge that information was confidential
• Disclosure to others, relationship between own product and alleged secret

Key Documents

Checklist

• [ ] Review all patents, registrations, or trade secret identification statements
• [ ] Review prosecution history and claim construction positions (patent)
• [ ] Build claim element mapping chart (patent)
• [ ] Analyze all prior art at issue (patent/copyright)
• [ ] Understand accused product/process technical operation
• [ ] Review licensing agreements and identify comparables
• [ ] Prepare likelihood of confusion factor analysis (trademark)
• [ ] Review confidentiality agreements and security measures (trade secret)
• [ ] Review expert reports if available
• [ ] Prepare damages theory framework for case type

Pitfalls

• Claim construction first (patent): Establish witness's understanding of disputed terms before infringement/validity questions — inconsistencies become impeachment material
• Pin inventors on prior art: Document what the inventor knew and when; undisclosed known prior art bears on inequitable conduct
• Prosecution history estoppel: Explore amendments limiting claim scope under DOE
• Trade secret specificity: Use deposition to test whether plaintiff identified trade secrets with reasonable particularity
• Willfulness: Establish knowledge of IP rights and steps taken (or not) after learning of them
• Apportionment: Required when patented feature is not entire basis for demand — press experts on methodology

Cross-References

• @deposition-preparation — Primary deposition framework
• @deposition-expert-witness — Expert deposition framework for IP technical and damages experts
• @deposition-30b6-corporate-rep — Corporate representative depositions in IP cases
• @deposition-questioning-techniques — Examination techniques

Key Authorities

• 35 U.S.C. §§ 101–287 (Patent Act)
• 15 U.S.C. §§ 1051–1141 (Lanham Act)
• 17 U.S.C. §§ 101–810 (Copyright Act)
• 18 U.S.C. §§ 1836–1839 (DTSA)
• Georgia-Pacific v. U.S. Plywood, 318 F. Supp. 1116 (S.D.N.Y. 1970) — royalty factors
• Markman v. Westview Instruments, 517 U.S. 370 (1996) — claim construction
• State UTSA adoptions vary — confirm applicable state law