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)