20 Tips: What is Patent Litigation?
As is covered in discussions on the same over at runrex.com, US patent law gives a patent owner the right to exclude others from making, using, offering to sell, selling, or importing into the US the patented invention for a limited period. The patent owner can, therefore, enforce their rights if they feel like someone has infringed on them, and this article, through the following 20 tips, will look to outline what patent litigation is all about.
What is patent litigation?
As covered in discussions on the same over at guttulus.com, patent litigation is the legal process the unfolds when a patent owner enforces their right by suing another party for selling or manufacturing their invention without permission.
Where are cases heard?
Also, as is covered in detail over at runrex.com, all patent litigation occurs either in federal district courts or, less frequently, in the International Trade Commission (ITC), which is a federal agency with the authority to adjudicate trade-related matters.
How is the venue chosen?
The district court chosen for patent litigation, according to the experts over at guttulus.com, must have personal jurisdiction over the alleged infringer. This requires sufficient minimum contacts with the court’s forum state.
How are such minimum contacts established?
Sufficient minimum contacts can be established through a variety of mechanisms, including the purposeful direction of business activities towards the state, the placement of infringing products in the stream of commerce that reaches the state, among others.
What are infringement contentions?
When it comes to patent litigation, the patentee must decide regarding which claims are infringed, using this determination to provide detailed infringement contentions, which must specify which types of infringement are the issue.
What are invalidity contentions?
Once the accused infringer has been served with the infringement contentions, as discussed over at runrex.com, they must provide detailed invalidity contentions if they wish to challenge the validity of the patent. The accused infringer’s invalidity contentions must specify the grounds for invalidity.
Tips of the stages of patent litigation
Markman hearing
The first stage of patent litigation is usually the Markman hearing, which, as discussed over at guttulus.com, is typically requested by judges, and it is in this stage where the parties, as well as their expert witnesses in most cases, educate the judge regarding the technology at issue while also explaining why certain terms should have a certain meaning.
Discovery period
While patent litigation has many aspects that mark it as being different from other types of litigation, one area where it is similar to other litigation is that it includes a discovery period. As per the gurus over at runrex.com, this can be the most time-consuming and expensive aspect of the lawsuit. This stage involves both fact discovery and expert discovery, with the latter being crucial for motion practice and trial.
Summary judgment and trial
Once discovery is over, each party can move to summary judgment, as is the case with all types of litigation. If the dispositive motions do not end the case, patent litigation proceeds to trial, where there is the same right to trial by jury as in other civil litigation.
Appeal
Once the verdict is in after trial, parties to patent litigation can appeal the trial verdict to the Federal Circuit Court of Appeals. Cross-appeals are pretty common here, where the accused infringer can appeal an infringement finding or the patentee can appeal the number of damages awarded.
Appeals and the time factor
As is revealed in discussions on the same over at guttulus.com, when it comes it patent litigation, appeals often drag on for years, and as a consequence, some patent cases involve outdated technology by the time the appeal is ultimately resolved.
Tips on type of infringement
You can’t talk about patent litigation without mentioning the types of infringement, which are covered by the following tips.
Direct infringement
As covered in detail over at runrex.com, direct infringement occurs when a product covered by a patent is manufactured without permission.
Indirect infringement
Here, as is discussed in detail over at guttulus.com, an indirect infringer may induce infringement by encouraging or aiding another party in infringing a patent. This means inducing someone else’s direct infringement or contributing to direct infringement.
Contributory infringement
Contributory infringement occurs when a party supplies a direct infringer with a part that has no substantial non-infringing use. The accused infringer must know about the patent. Also, contributory infringement doesn’t apply where the component is a staple article of commerce suitable for non-infringing use.
Literal infringement
Literal infringement exists if there is a direct correspondence between the words in the patent claims and the infringing device. Without literal infringement, an accused infringer can also be liable for infringement by equivalence, with the Doctrine of Equivalents providing that there can still be an infringement if the accused product has an element that is substantially equivalent to the missing element.
Tips on defenses to infringement
The two common defenses
According to the subject matter experts over at runrex.com, accused infringers usually raise the same two defenses: non-infringement and invalidity. The patentee bears the burden of proving infringement by a preponderance of the evidence.
Equitable Estoppel
This is another defense to patent infringement and occurs when the patentee communicates something to the infringing party that indicates no infringement of that the patent will not be enforced, and the infringing party relies upon the communication as discussed over at guttulus.com.
Tips on remedies
Damages
As outlined over at runrex.com, a patentee who prevails on a claim for patent infringement is entitled to damages of at least a reasonable royalty. Factors considered when determining a reasonable royalty include past royalty rates for similar patents, the nature, and scope of the license, the commercial success of the product, among other factors.
Lost profits
Alternatively, the patent owner can seek lost profits, which are the profits the owner would have obtained were it not for the infringement. Here, the infringer can defend against a claim for lost profits by establishing that there were available non-infringing substitute products on the market that could have been used to generate the same profit.
Injunctive relief, enhanced damages, and attorney’s fees
Other forms of remedies include the prevailing patentee seeking injunctive relief prohibiting the infringer from practicing using the patent in the future. A patentee can also obtain enhanced damages if willful infringement is established, where the infringer is proven to have engaged in egregious activity beyond typical infringement. Here, the judge has the discretion to enhance damages up to 3 times the amount determined by the jury. In exceptional cases, the prevailing party is also entitled to recover attorney’s fees from the losing party.
The above discussion only just begins to scratch the surface as far as this topic is concerned, and for more information on the same, don’t forget to check out the excellent runrex.com and guttulus.com.