deposition-ip-supplement

name

deposition-ip-supplement

description

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

1. Activate @deposition-preparation as primary framework
2. Gather: IP registrations, prosecution history, claim construction order, licensing history, expert reports
3. Identify case type below and select relevant witness frameworks
4. 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)