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

| Case Type | Key Issues | Primary Witnesses | |-----------|-----------|-------------------| | Patent | Claim construction, infringement (literal/DOE), validity, reasonable royalty, lost profits, willfulness | Inventor, R&D/engineering, licensing/business, technical expert, damages expert | | Trademark | Distinctiveness, priority of use, likelihood of confusion, willfulness, damages | Mark owner, marketing, consumer survey expert, damages expert | | Copyright | Ownership, originality, access/copying, substantial similarity, fair use | Author/creator, access witnesses, similarity expert, damages expert | | Trade Secret | Existence, reasonable secrecy measures, misappropriation, damages | Developer, accused misappropriator, security witnesses, damages expert |

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

| Document | Focus Areas | |----------|------------| | Prosecution file | Amendments, arguments, prior art, rejections | | Invention records / lab notebooks | Conception date, reduction to practice | | Prior art references | Witness knowledge, differences from claims | | Licensing agreements | Terms, rates, comparability | | Design documents | Alternatives considered, patent awareness | | Technical specs | Element-by-element product function | | Confidentiality / NDA agreements | Obligation scope, acknowledgment | | Financial records | Sales, profits, damages support |

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