Patent Litigation

A patent gives the owner a right to exclude others from practicing the patent.  The right to exclude is not self-enforcing and a suit for infringement must be filed in Federal court in order to enforce the patent.  Many cases seek trial before a jury.  Any appeal from the decision of the district court can be appealed to the Court of Appeals for the Federal Circuit, which is located in Washington, DC.  That court also hears all appeals in patent matters from the Patent and Trademark Office.

A U.S. patent is enforceable in the United States.  In the event the patent has claims to a method, a suit may sometimes be brought to enjoin importation of products produced according to the patented method outside of the United States.  Further, where only a portion of a patented combination is manufactured in the United States but is then combined outside of the United States in a way that would infringe the patent, suit may be brought in the United States.

Before suit is filed the patent owner must obtain from counsel an opinion that at least one valid claim of the patent is infringed, either literally or by equivalence.  This normally entails a careful consideration of the prosecution history of the patent in order to determine the scope of the claims of the patent.  A careful comparison of the claims to the accused product is then conducted. 

Because the accused product or process must infringe at least one valid claim of the patent, the Supreme Court requires that the district court judge construe- that is decide- the scope of the claims.  Many courts have rules specific to patent cases that set procedures for construing the claims of the patent.  The focus is normally on the claim terms that are in dispute.  Depending upon the court, the claim may be construed based solely upon written submissions by the parties, after an evidentiary hearing or some combination of these.  Some courts require that the claim construction be early in the case, while others wait until shortly before the jury retires to deliberate.  The claim construction process seeks to determine the meaning of the claims as they would be understood by one skilled in the relevant art.  The judge decides the construction based upon the terms used in the claims, any description provided in the specification and any guidance provided by the prosecution history.  The claim construction is the same for infringement as for validity.  In other words, the patent owner cannot seek one construction when accusing someone of infringement and then seek a different construction should the accused infringer challenge the validity of the patent.

Many cases are won or lost as a result of the claim construction.  There generally is not much dispute over the accused product or process, so a court may decide the infringement issue based upon a motion for summary judgment.  The purpose of a trial is to decide disputed factual issues, so summary judgment may be appropriate where there are no genuine disputes as to the accused product or process.  Should there be a genuine dispute of a material fact, then summary judgment is not appropriate and the dispute must be resolved by the fact finder, whether the jury or the judge.

In the course of the trial the accused infringer may assert any number of defenses, and also raise counterclaims.  The accused infringer typically will argue that the patent is not infringed and/or that the patent is invalid.  Although patents are presumed to be valid, that presumption may be overcome by evidence that is both clear and convincing that the claims should not have been granted.  The accused infringer frequently will point to patents and printed publications that were not considered by the patent examiner when the patent was allowed, and will argue that those unconsidered items of prior art render the claims invalid.  The patent owner must take care in responding to the prior art arguments, because doing so could result in a narrow claim construction for infringement purposes.  The accused infringer can also assert invalidity for any other reason permitted by the patent statute, such as claim indefiniteness, lack of an enabling disclosure, etc.

The accused infringer may also assert various counterclaims, which creates essentially a separate suit against the patent owner.  The accused infringer may counterclaim for patent invalidity, patent non-infringement and patent unenforceability due to inequitable conduct.

The patent owner bears the burden by a preponderance of proving infringement.  The accused infringer, on the other hand, bears the burden by clear and convincing evidence of proving that the patent is invalid or is unenforceable.  The accused infringer’s burden is more difficult than that of the patent owner.

The patent owner will frequently argue that the infringement is willful.  A finding of willful infringement permits the court to award treble damages on account of the infringement.  The patent owner may also assert that the case is exceptional.  If found to be exceptional, the court may award the patent owner its attorney fees incurred in bringing the law suit.  The patent owner must establish by clear and convincing evidence willfulness and that the case is exceptional.

The patent owner will also normally request that the infringer be permanently enjoined from continuing to infringe.  While permanent injunctions were at one time almost automatic, the Supreme Court has recently imposed guidelines on the imposition of permanent injunctions.

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