Affirmative Defenses

Facts other than those pled by plaintiff, if proven by defendant, defeats or mitigates the legal consequences of the defendant's otherwise unlawful conduct. Certain waivable defenses must be pled at time of answering the complaint, e.g., non-infringement due to invalidity, unenforceability due to misuse or inequitable conduct during prosecution of patent application, etc. Non-waivable affirmative defenses include lack of subject matter jurisdiction.

Case Management Conference (CMC)

Brief proceedings with the court following filing of complaint to address various scheduling, discovery, or status issues; timing and scope of these conferences vary among the courts.

Claim Chart

Sets forth each limitation in a claim and charts the limitations against the components of the allegedly infringing product.

Claim Construction

A fundamental issue in patent cases, strictly in the province of the courts. Both infringement and validity are two-step processes, requiring construction of the patent claims first, and then application of the appropriately construed claims to the accused device or the prior art, respectively. Claim construction gives scope and meaning to the patent claims. The applicant may be its own lexicographer and assign a specific definition to the (terms) used in the patent specification; however, if no special meaning is explicitly assigned to a term, it will be given their ordinary meaning.

Contributory Infringement

35 U.S.C. §271(c): whoever sells a component of a patented machine for use in practicing the patented process that does not have a substantial non-infringing use shall be liable as a contributory infringer.

Declaratory Judgment Action

A pre-emptive action by an alleged infringer to bring suit to resolve a threat of litigation by a patent owner. Must show an actual controversy, i.e. the threat of being sued for patent infringement is imminent.

Defensive Action

Usually a defendant or in a position of defending against an assertion. In district court patent litigation, a defendant defends for example against assertions of patent infringement. In re-examination proceedings before the U.S. Patent Office (USPTO), the patent owner defends the validity of its issued patent.

Direct Infringement

Infringement is directly by the accused and not through third parties.

Enhanced Damages

Upon a finding of willful infringement, the court has the discretion to enhance patent damages up to three times. 35 U.S.C. §284 and attorneys' fees and costs under 35 U.S.C. §285.

Indirect Infringement

Infringement occurs through the inducement of another by the accused, e.g. defendant intentionally (knowingly) encouraged patent infringement by another. See "Induced Infringement"

Induced Infringement

35 U.S.C. §271(b): whoever actively induces infringement of a patent shall be liable as a direct infringer. Requires a finding that the defendant engaged in some affirmative act and not simply failed to take steps to prevent infringement.


Federal law also allows courts to grant injunctions if necessary to prevent a violation of patent rights. Requires a showing that monetary damages are insufficient for making the patent owner whole.

Ex Parte

In context of USPTO proceedings challenging the validity of an issued patent, ex parte means a legal proceeding brought by one person in the absence of and without representation of other parties.

FRE 408 Evidence Rules

Federal Rules of Evidence Rule 408 provides that certain evidence, e.g. of furnishing, promising, or offering (or accepting, promising to accept, or offering to accept) a valuable consideration in compromising or attempting to compromise a claim or statements made during compromise negotiations about a claim (with exceptions) are inadmissible at trial.

Inter Partes

"Between the parties": In the context of USPTO proceedings challenging the validity of an issued patent, inter partes means all interested parties (patent owner and patent challenger) are given reasonable opportunity to attend and be heard.

Markman Hearing (Markman) Or Claim Construction Hearing

Although the courts need not follow a particular formal process for claim construction, courts typically allow briefing, expert testimony, and oral argument in a Markman hearing before issuing a claim construction order. Often, once claims are construed, the parties will file a "Summary Judgment" motion of infringement or invalidity (depending on the party position), which may eliminate the need for a jury trial.


A form of Alternative Dispute Resolution that most district courts require litigation parties to participate in early in a case. Mediation is generally court mandated, is supervised by a certified mediator appointed by the court for the purpose of providing an early opportunity for the parties to meet and explore settlement of their dispute. The discussions, written submissions, and results of the mediation are not reported to the presiding judge. Rather, the mediator may only report the fact that mediation took place, whether the parties settled, or whether the parties wish to continue mediation or not continue.

Meet & Confer

A requirement of courts for counsel and their clients to "meet and confer" to try to resolve the matter or at least determine the points of conflict.


Usually a plaintiff or in a position of asserting a claim against another. In district court patent litigation, a plaintiff asserts for example assertions of patent infringement. In re-examination proceedings before the U.S. Patent Office (USPTO), the petitioner seeks reexamination of another's patent's validity.

Re-Examination (Re-Exam)

Reexamination is a specialized proceeding in which the USPTO reconsiders an issued patent. The process can result in invalidation of some, or all, of the patent claims. Reexamination may be initiated by the USPTO or by the patent owner, but increasingly third parties start the process as part of an overall strategy to challenge a patent.

Re-Exam Accepted

When the USPTO accepts a petition to re-examine the validity of an issued patent or rules in favor of the petitioner, i.e. invalidates all or some of the patent claims.

Re-Exam Denied

When the USPTO rejects a petition to re-examine the validity of an issued patent or rules against the petitioner, i.e. affirms the validity of the patent.


A court-ordered short-term delay in judicial proceedings.

Summary Judgment Motion (SJ)

SJ is a dispositive ruling appropriate in patent cases where the only real dispute is between the parties' concerns the proper meaning of the patent claims. Infringement is a question of law for the court and SJ is appropriate if there is no material fact sufficient to preclude the grant of summary judgment. The burden of proving infringement is on the patent owner which must be by a preponderance of the evidence. Invalidity may also be disposed of by a SJ motion if the party seeking to invalidate the patent can prove the patent is invalid in light of prior art or is unenforceable due to misconduct on the part of the patent owner, by clear and convincing evidence.

Technical Or Technology Tutorial

A quasi-formal court proceedings in a patent case to assist the court in understanding complex technical terms and overall state-of-the-art of the technology relevant to the patented subject-matter-in-suit. Depending on the judge, they may request primers from the parties' designated patent experts or counsel. Often takes place in connection with an impending claim construction "Markman" hearing.

Vegas Rules

Finjan's ground rules for proceeding with license negotiations with prospective licensees, such that the parties agree not to use the discussions or information shared in the negotiations as evidence in litigation, if commenced. Also provides for an agreement that the prospective licensee will not commence a declaratory judgment (DJ) action against Finjan during the period of the agreement.

Willful Infringement

Willful infringement is the "deliberate disregard" of another's patent rights.