IP Litigation Deposition Supplement
Provides IP-specific deposition examination frameworks for patent, trademark, copyright, and trade secret cases. Covers inventor, infringer, licensing, and expert witnesses with question maps for claim construction, prior art, willfulness, Georgia-Pacific factors, likelihood of confusion, and trade secret identification. Use when preparing IP litigation depositions alongside @deposition-preparation and @deposition-expert-witness.
IP Litigation Deposition Supplement
IP-specific examination strategies for patent, trademark, copyright, and trade secret depositions. Supplements @deposition-preparation as the primary framework.
Quick Start
- Activate
@deposition-preparation as primary framework
- Gather: IP registrations, prosecution history, claim construction order, licensing history, expert reports
- Identify case type below and select relevant witness frameworks
- For expert depositions, also apply
@deposition-expert-witness
Case Types
| Type |
Key Issues |
Key Witnesses |
| Patent |
Claim construction, infringement (literal/DOE), validity, willfulness, damages |
Inventors, R&D/engineering, licensing, technical/damages experts |
| Trademark |
Distinctiveness, priority, likelihood of confusion, willfulness, damages |
Mark owner, marketing, survey experts, damages expert |
| Copyright |
Ownership, originality, access, substantial similarity, fair use, damages |
Authors, access witnesses, similarity/damages experts |
| Trade Secret |
Existence, reasonable secrecy measures, misappropriation, damages |
Secret owners, accused misappropriators, security, damages expert |
Examination Frameworks
Patent — Inventor
| Topic |
Key Questions |
| Conception |
First conception date; problem solved; contemporaneous records; who was told |
| Reduction to practice |
Date; testing/prototyping; corroborating documentation |
| Prior art knowledge |
Known prior art; searches conducted; how invention differs from [specific ref] |
| Claims |
Understanding of claim scope; meaning of [disputed term]; relationship to accused product |
| Prosecution |
Involvement; review of office actions; reasons for amendments |
Patent — Accused Infringer Technical Witness
| Topic |
Key Questions |
| Product/process |
How [accused product] works; key components; development timeline |
| Design process |
Alternatives considered; why this approach; patent awareness; design-around efforts |
| Claim mapping |
Presence of [claim element]; how product performs [claim function] |
| Non-infringement |
Which limitation not met; how product differs from claims |
| Prior art |
Prior products/publications before patent priority date |
Patent — Licensing/Damages Witness
| Topic |
Key Questions |
| Licensing history |
Existing licenses; royalty rates; negotiation process; comparables |
| Commercial success |
Sales figures; success attributable to patented feature |
| Market |
Competitors; non-infringing alternatives; market share impact |
| Hypothetical negotiation |
Pre-infringement terms; Georgia-Pacific factors; royalty rate and base |
Patent — Technical Expert
Apply @deposition-expert-witness plus:
- Claim construction: Basis for construing [disputed term]; prosecution history; specification support
- Infringement: Element-by-element walkthrough; physical exam of accused product; source code review (software)
- Validity: Prior art considered; whether [reference] discloses [element]; PHOSITA motivation to combine
Patent — Damages Expert
| Topic |
Key Questions |
| Reasonable royalty |
Methodology; Georgia-Pacific factors applied; comparable licenses; royalty base |
| Lost profits |
"But for" world; manufacturing capacity; non-infringing alternatives; market share methodology |
| Apportionment |
Method for isolating patented feature value; consumer demand driver analysis |
Trademark — Mark Owner
| Topic |
Key Questions |
| Creation/adoption |
When/who created; why chosen; first use in commerce |
| Distinctiveness |
Inherent or acquired secondary meaning; consumer recognition; advertising investment |
| Confusion |
Awareness of defendant's mark; actual confusion incidents; similarity; relatedness of goods |
| Damages |
Lost sales; goodwill damage; costs addressing confusion |
Trademark — Accused Infringer
| Topic |
Key Questions |
| Adoption |
When/who decided to use mark; prior search; awareness of plaintiff's mark |
| Intent |
Intent to trade on goodwill; legal advice; good/bad faith indicators |
| Confusion |
Known confusion incidents; misdirected customers/orders |
| Market |
How customers find and distinguish products |
Trade Secret — Owner
| Topic |
Key Questions |
| Identification |
Specific description; what makes it secret; development date and team |
| Secrecy measures |
Physical/electronic security; NDAs; need-to-know restrictions; training |
| Value |
Development investment; competitive advantage; cost of independent development |
| Misappropriation |
How defendant acquired secret; evidence; timing |
Trade Secret — Accused Misappropriator
| Topic |
Key Questions |
| Relationship |
Nature of relationship; access; agreements signed; understood obligations |
| Accused information |
Awareness of trade secret; how obtained; independent development evidence |
| Use/disclosure |
Use of information; third-party disclosure; relation to accused product |
| Notice |
Knowledge of confidentiality; steps taken regarding obligations |
Document Focus Areas
| Document |
Topics |
| Prosecution file |
Amendments, arguments, prior art, rejections |
| Invention records |
Lab notebooks, conception/RTP dates, corroboration |
| Licensing agreements |
Terms, comparability, negotiation history |
| Design/technical docs |
Development process, alternatives, product operation |
| Marketing materials |
Features emphasized, performance claims |
| Confidentiality agreements |
Scope, obligations, signatories |
| Source code |
Software patents, trade secret cases |
| Financial records |
Damages calculation support |
Preparation Checklist
- [ ] Review patents/registrations/trade secret identification
- [ ] Review prosecution history and file wrapper (patent)
- [ ] Map disputed claim terms and proposed constructions (patent)
- [ ] Prepare claim element mapping chart (patent)
- [ ] Identify prior art references and gaps (patent/copyright)
- [ ] Understand accused product/process technical operation
- [ ] Review licensing agreements and comparables
- [ ] Prepare likelihood of confusion analysis (trademark — DuPont)
- [ ] Review confidentiality agreements and secrecy measures (trade secret)
- [ ] Understand damages theory and expert methodology
- [ ] Review expert reports — apply
@deposition-expert-witness
Pitfalls
- Pin claim constructions before deposing technical witnesses — questions must track operative constructions
- Lock inventors to specific conception/RTP dates with corroborating documents
- Force precise trade secret identification before substantive questions — vague descriptions create indefiniteness defenses
- Prosecution history estoppel: lock infringers into positions foreclosing DOE arguments
- Cover all 15 Georgia-Pacific factors with damages witnesses; gaps invite Daubert challenge
- Willfulness (§ 284): pre-suit patent knowledge required — establish/negate knowledge timeline
- DTSA vs. state UTSA: confirm governing law; definitions and preemption scope vary
- Copyright fair use: explore each of four factors independently with relevant witnesses
References
- 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)
- Markman v. Westview Instruments, 517 U.S. 370 (1996)
- Halo Electronics v. Pulse Electronics, 579 U.S. 93 (2016)
No additional documents ship with this skill.
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