What Happens in an IP Infringement Lawsuit, Step by Step

Most IP infringement lawsuits settle, and most of the ones that settle do so at one of three points: after the preliminary injunction ruling, after the close of discovery, or on the eve of trial. Knowing those pressure points in advance changes how a plaintiff pleads the case and how a defendant budgets for it. The stages below describe a typical federal case involving a trademark, copyright, or trade secret claim. Patent cases follow the same skeleton with additional claim construction steps and are handled with patent counsel. CLP’s IP litigation and dispute resolution practice represents plaintiffs and defendants through each of these stages, and the description that follows is the one we give clients at the first meeting.

Before filing an IP infringement lawsuit

The pre-suit work decides much of the case. For a copyright claim on a U.S. work, registration must have issued, and the timing of that registration determines whether statutory damages and attorney’s fees are on the table. For a trademark claim, the registration record and evidence of use are assembled. For a trade secret claim, the plaintiff must be able to identify the secret with reasonable particularity and show the measures taken to protect it, as discussed in our post on what to do when an employee takes confidential information.

Evidence is captured, a litigation hold issues internally, and a demand letter usually goes out, though where speed or surprise matters the complaint may be the first notice. Counsel also evaluates the defendant’s likely defenses and counterclaims, including challenges to the validity of the plaintiff’s registration, which can put the plaintiff’s own rights at risk.

Choosing the forum

Federal courts have exclusive jurisdiction over copyright and patent claims. Trademark claims under the Lanham Act may be brought in federal or state court, and nearly all are brought in federal court. Trade secret claims may be filed in federal court under the Defend Trade Secrets Act or in state court under state law, often with both pleaded together. Within the federal system, venue must be proper and the court must have personal jurisdiction over the defendant, which online defendants often contest. The district chosen affects the local rules, the time to trial, and the jury pool.

The complaint and the answer

The complaint identifies the parties, the IP at issue, the infringing conduct, and the relief sought. It is served on the defendant, who has a set period to respond with an answer or a motion to dismiss. The answer asserts defenses (non-infringement, invalidity, fair use, license, laches, unclean hands) and often counterclaims, such as a petition to cancel the plaintiff’s trademark registration or a declaration that the copyright is invalid. Counterclaims can become the more dangerous half of the case.

Temporary restraining orders and preliminary injunctions

A plaintiff who needs the infringement stopped before trial moves for a preliminary injunction, sometimes preceded by a temporary restraining order for emergencies. The court weighs the plaintiff’s likelihood of success on the merits, whether the plaintiff will suffer irreparable harm without the injunction, the balance of hardships between the parties, and the public interest. Irreparable harm is no longer presumed in copyright and patent cases; the plaintiff must show it. For trademark claims, Congress restored a rebuttable presumption of irreparable harm once a likelihood of success is shown. The plaintiff must usually post a bond to cover the defendant’s losses if the injunction turns out to be wrongly granted.

The preliminary injunction ruling is the first major pressure point. It requires both sides to put their evidence before the judge early, and the judge’s view of the merits, even though preliminary, shapes settlement value for the rest of the case.

Discovery

Discovery is the longest and most expensive phase. Each side serves written questions and document requests, takes depositions, and exchanges electronically stored information under agreed search protocols. Confidential business information is exchanged under a protective order that limits who may see it, often with an “attorneys’ eyes only” tier for the most sensitive material, which matters in trade secret cases where the secret itself is the evidence.

Expert discovery follows. Damages experts calculate lost profits, royalties, or the defendant’s profits; survey experts measure confusion in trademark cases; technical experts compare code or products. Each expert produces a report and is deposed, and each side may move to exclude the other’s.

Summary judgment and pretrial

After discovery closes, either side may move for summary judgment on claims or defenses where the material facts are undisputed. Whether a work is protectable, a mark is valid, or a defense applies is often decided here, narrowing or ending the case. Many districts require the parties to attend mediation before trial, and the close of discovery, when each side finally knows the other’s evidence, is the second pressure point for settlement. Our post on resolving an IP dispute without a trial covers how mediation and settlement work at this stage.

Trial and remedies

Cases that reach trial are tried to a jury when damages are claimed, or to the judge when only an injunction is sought. The remedies available depend on the claim. Copyright plaintiffs may recover actual damages plus the infringer’s attributable profits, or statutory damages per work if the registration was timely, with the court able to increase them for willful infringement; attorney’s fees are in the court’s discretion. Trademark plaintiffs may recover the defendant’s profits, their own damages, and costs, with enhanced damages and fees in exceptional cases and special remedies for counterfeit marks. Trade secret plaintiffs may recover actual loss and unjust enrichment or a reasonable royalty, with enhanced damages and fees for willful and malicious misappropriation. In all three, a permanent injunction and an order to destroy infringing goods are available where justified.

Appeal

The losing party may appeal to the court of appeals for the circuit where the case was tried, except in patent cases, which go to the Federal Circuit. Appeals review legal rulings closely and factual findings with deference, so the trial record is what matters. The time from complaint to final judgment depends on the district’s docket and on how hard each side fights. Our commercial litigation and dispute resolution page describes the related business disputes that often travel with an IP claim, such as breach of a license or a distribution agreement.

If you are weighing whether to file or have been served, a consultation with Capitol Law Partners can map the stages above against the facts and budget of your case. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our IP litigation page or schedule a consultation.